On October 3, 2017, the Canadian Internet Registration Authority (CIRA) Dispute Resolution Panel (the Panel) affirmed that bad faith registrations will not be upheld against brand owners. In Virox Technologies Inc v Nameshield Inc (CDRP Dispute No: 344), the Panel ordered the transfer of the domain virox.ca to Virox Technologies Inc. (the Complainant) after concluding that (1) the domain held confusing similarities to the Complainant’s trademarks, (2) there was bad faith on the part of Nameshield Inc. (the Registrant), and (3) the Registant had no legitimate interest in the domain name.

Nameshield is in the business of owning and trading Canadian domain names. Nameshield registered virox.ca in October 2015. In August 2015, two months prior to the domain registration, Virox obtained trademark registration for the mark VIROX TECHNOLOGIES INC. and Design (TMA 911409). Virox supplied evidence that it has used its name continuously since 1998 in the manufacture and sale of disinfectants and cleaners.

Prior to the decision, virox.ca was used by Nameshield as a pay-per-click scheme.

In its decision, the Panel highlighted fifteen previous decisions in which Nameshield and/or its sole director, Mr. Daniel Mullen, were found to have registered domain names tied to third party marks in bad faith. A CDRP decision from 2014 observed that Nameshield and Mr. Mullen collectively hold 4,664 .ca domain names, of which, “a large number are identical to, or confusingly similar to, trademarks in use prior to the registration date of the domain.”

Summary By: Jennifer Davidson

E-TIPS® ISSUE

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