Monday, August 23, 2021

#463 - investment-finder.ca - COMPLAINT DISMISSED

 The Complainant is the owner of the highly popular FIDELITY INVESTMENTS trademarks in Canada.  The Complainant alleges that the Registrant is using the Domain Name in a malicious scam phishing campaign.  

Unfortunately, and despite the Registrant's failure to respond, the Panel found that the word INVESTMENTS (a common English word) is disclaimed apart from the trademark and therefore the Domain Name is not likely to be mistaken for the FIDELITY INVESTMENTS trademark. 

You can read the decision here

Wednesday, August 4, 2021

#462 - enterpriserent.ca - TRANSFER GRANTED

The Complainant owns the highly-popular ENTERPRISE trademark, used in connection with car rental and leasing services.  The Registrant did not respond.  Interestingly, an affidavit was filed by the 'contact person' listed as the Registrant, who confirmed that it did not register the Domain Name and is not affiliated with it, nor the listed email address.  This adds to the growing list of 'Registrants' that are using names, business names, and/or addresses of Canadians in an effort to satisfy presence requirements - an obvious issue that CIRA must address as the problem continues to grow.

The Panel found that the Domain Name was registered in bad faith especially in light of the Registrant's failure to provide accurate registration information with respect to the Domain Name.  

You can read the decision here.

Wednesday, July 28, 2021

#461 - SKECHERSSHOESCANADAOUTLET.CA - TRANSFER GRANTED

The Complainant owns the SKECHERS trademark, registered in Canada for use in association with footwear, well in advance of the date of registration of the Domain Name. The Domain Name contained numerous false assertions, typos and other misstatements leading a consumer to believe that the web site is associated with Skechers.  We note that the Skechers goods on the website indicate discounts between 44% - 67%, and are likely counterfeit. 

The Panel found that the Domain Name was registered in bad faith because the content on the web site indicates it is "powered by Skechers Canada" and that the copyright belongs to "Skechers Canada".  

You can read the decision here

Friday, July 16, 2021

#459 - fpl.ca - REFUSED

 The Complainant protects forests with services such as fire management, pest management and aerial surveys.  It owns the FPL trademark in Canada. The Registrant purchased the three-letter domain name as an investment to re-sell, or use and develop the website.  The Registrant filed a declaration that it had never heard of the Registrant or the FPL trademark until it received the CDRP Complaint. 


However, the Complainant's trademark was registered three years after the Domain Name, and the Panel found that the Complainant failed to establish use of the Mark predating the Registration of the Domain Name. Further, the Panel found that there was no evidence of bad faith provided. 

You can read the decision here

#460 - fidelityglobal.ca - TRANSFER GRANTED

The Complainant is one of the largest and best know investment fund managers. The Domain Name is being used in a malicious phishing campaign - by sending emails to unsuspecting consumers attempting to obtain banking details and other personal information. Not surprisingly, the Panel found that the Domain Name was registered in bad faith.


You can read the decision here

Monday, July 5, 2021

#451 - termodeck.ca - TRANSFER GRANTED

The Complainant owns the TERMODECK trademark.  The Registrant was the Complainant's former licensee, but the agreement terminated after approximately 4 years.  The Registrant failed to respond to the CDRP - but its domain name transferred to its competing site - termobuild.com. 

The Panel found that the Domain Name was registered in bad faith because it is commercially impractical and misaligned with fundamental trademark principles to require parties entering license agreements to expressly address the disposition of a Domain Name following termination.  If a licensee's rights to use a trademark are terminated, it reasonably flows that the use of the domain name must cease and be transferred to the brand owner. 

You can read the decision here

Tuesday, June 22, 2021

#457 - pyramydair.ca - TRANSFER GRANTED

The Complainant owns the PYRAMYD AIR trademark, registered for use in association with retail online services featuring air guns among other goods.  The Domain Name resolved to the canadashootingsupply.ca website, operated by a competitor. The parties exchanged correspondence in 2017, and the Registrant stated that the Domain Name "was purchased intentionally and is not for sale to help protect our business from future competition threat from large company like Pyramydair".

The Panel found that the Domain Name was registered in bad faith, in part because the parties are competitors and consumers seeking the Complainant's products may do their online shopping on the website, which would have the effect of disrupting the Complainant's business. 

You can read the decision here

Tuesday, June 8, 2021

#456 - esmod.ca - transfer granted

The Complainant owns the ESMOD trademark, and operates an international fashion school in France.  The Registrant did not respond to the Complaint.  

The Panel found that the Domain Name was registered in bad faith, and notes as follows: 1) there were three failed attempts to sell the Domain Name to the Complainant for amounts in excess of reasonable out-of-pocket expenses, and 2) The Registrant also registered the esmodcanada.com domain name that was the subject matter of a previous UDRP decision/bad faith finding.  In that decision, Brian Winterfeldt, as panelist, found that the Registrant was likely aware of the ESMOD mark, or knew or should have known the Domain was infringing. 

If you visit the esmodcanada.com site, it forwards visitors to the WIPO decision.  Nice touch by the Complainant. 

Note: this case summary was based on a rough translation of the decision (in French)

You can read the decision here.

Wednesday, May 26, 2021

#455 - vanguardfinancial.com - TRANSFER GRANTED

The Complainant owns the family of VANGUARD trademarks, and is one of the world's largest investment companies. The Registrant provides tax and accounting services to individuals and businesses, starting in 2012 (admittedly without the need of a website at the time). 

The Panel found that the Domain Name was registered in bad faith and the Registrant had no legitimate interest, because the Complainant is very well known, and the disclaimer on the website does not necessarily prevent or cure confusion.  There was also overlap in the services provided by the parties.  

You can read the decision here

Tuesday, April 6, 2021

#454 - cheesecakefactory.ca - TRANSFER GRANTED

The Complainant owns THE CHEESECAKE FACTORY trademark, registered in Canada since 1998.  The Registrant did not register his Domain Name until 2019.  The Domain was forwarding to thecheesecakeguy.ca.  The Registrant alleges that he makes cheesecakes through his small business which he intended to call THE CHEESECAKE GUY, but never advertised or built the Domain Name. 

The Panel agreed with the Complainant that the Domain Name was registered in bad faith, because a Registrant cannot use a registered trademark as an engine for attracting internet users to its website with the result of creating a likelihood of confusion.  

You can read the decision here

Monday, March 15, 2021

#453 - gowalkboots.ca - TRANSFER GRANTED

The Complainants own the SKECHERS GO WALK trademark in Canada. The Registrant is using the Domain Name to sell counterfeit merchandise using numerous trademarks used/owned by the Complainants in Canada.  

The Panel found that the Domain Name was registered in bad faith, and explicitly noted that the sale of counterfeit merchandise, or the processing of orders but not shipping the footwear/stealing money, is evidence of bad faith. 

You can read the decision here

Tuesday, February 23, 2021

#452 - premium2000.ca and ctpwarranty.ca - TRANSFER GRANTED

 The Complainant is a leading issuer of extended warranty service contracts on used trucks, in Canada. It has unregistered trademark rights. The Registrant was formerly employed by the Complainant as a regional sales directory and registered the Domain Names prior to his departure from the company. The Registrant demanded $5,500.00 per domain, and a $15,500.00 payment for his business. The Registrant’s response focussed on the Complainant’s lack of rights in and to its unregistered trademark rights. 

The Panel found that the Registrant registered the Domain Name in bad faith for several reasons, including: following his employment, he is in direct competition with the Complainant, no evidence was provided establishing any justification for the registrations, and the Registrant admitted that the Complainant’s US subsidiary owns rights in the Premium2000+ mark. 

Thursday, January 21, 2021

nalgene.ca - TRANSFER GRANTED

The Complainant owns the NALGENE trademark, registered for use in association with bottles, among other goods. The Registrant purchases products with the NALGENE mark through an authorized Canadian distributor, and resells the goods on his website (including through use of the Domain Name). The Registrant responded and took the position that his website was driving sales of authentic products and as a dealer of these products there is an implied license to use the NALGENE mark. 


The Panel found that the Registrant did not have a legitimate interest in the Domain Name because, “as a general proposition, Registrants cannot simply shoehorn themselves into legitimacy by exploiting the power of an owner’s mark for the sole purpose of attracting Internet users to their websites.”


The Panel also found that the Domain Name was registered in bad faith because he made an offer to sell the Domain Name for $25,000.00, admitting it was a “tongue-cheek request ...so as not to appear overly rude or dismissive”



Monday, January 4, 2021

FANDUEL.ca - TRANSFER GRANTED

 The Complainant owns the highly popular fantasy sports and sports betting site using the FANDUEL trademark. The Registrant registered the web site in 2017, and includes pornographic content. 

The Panel held that the Domain Name was registered in bad faith because it was registered for the purpose of confusing internet users for the Registrant’s commercial benefit. 

You can read the decision here.

Friday, January 1, 2021

skechers.ca - TRANSFER GRANTED

The Complainant owns the SKECHERS trademark, and has become recognized in the Canadian fashion and activewear industries as being associated with trendy shoes, apparel and accessories.  The Complainant previously owned the skechers.ca domain name, but it lapsed due to non-renewal on January 29, 2019.  Without authority from the Complainant, the Registrant registered the Domain Name in April, 2019. 

The Panel found that the Domain name was registered in bad faith, because it offered the Domain for sale on its website, and also registered ZIEBART.ca  and offered to sell that Domain for $10,000.00 with no apparent right to use the third-party trademark. 

Interestingly, the Panel did not transfer the skeTchers.ca Domain Name because the Panel required further submissions by the Complainant to satisfy the Canadian Presence Requirements, since Skechers USA, Inc. II's trademark registered in Canada is "SKECHERS", not SKETCHERS. 

You can read the decision here