Thursday, January 21, 2021 - 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 as not to appear overly rude or dismissive”

Monday, January 4, 2021 - 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 - 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 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  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 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