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