NAPA.ca CDRP Decision

[TheLegendaryJP]

Thought this was a very interesting case and could set some great examples of how to defend such a case. The .ca community can learn a few things here.

http://www.cira.ca/assets/Uploads/00154-napa.ca.pdf

[TheLegendaryJP]

Thought this was a very interesting case and could set some great examples of how to defend such a case. The .ca community can learn a few things here.

http://www.cira.ca/assets/Uploads/00154-napa.ca.pdf

[msn]

Thought this was a very interesting case and could set some great examples of how to defend such a case. The .ca community can learn a few things here.

http://www.cira.ca/assets/Uploads/00154-napa.ca.pdf

Lesson Number One: Pick your fights.

If you notice, this was handled by a law firm on each side.

Could you afford $5000 - perhaps $10,000 - to protect your domain registration?

[Banned: Wzhxvy]

A few points:

1. Whoever wrote that obviously gets paid by the hour
2. Its interesting how they spent the first half of this justifying the complaint...brilliant response that put the aggressor on the defensive
3. Sounds like a half ass effort or an incompetent effort by NAPA...they couldnt produce proof of a trademark ? did the dog eat it ? geesh
3. The rest of it is not exactly text book in terms of how to protect yourself but it worked out OK at the end...bad faith wasnt there or at least very evident

[Banned: theinvestor]

A shame QM couldn't get compensation for the time/money wasted.

[msn]

A few points:

1. Whoever wrote that obviously gets paid by the hour

Actually, they get a set amount regardless of the time spent.

2. Its interesting how they spent the first half of this justifying the complaint...brilliant response that put the aggressor on the defensive

If you just spent over $3K in fees to file and then another $5K perhaps for your lawyer you would want to at least have someone say you were not a total idiot. For the $3K portion you get that.

3. Sounds like a half ass effort or an incompetent effort by NAPA...they couldnt produce proof of a trademark ? did the dog eat it ? geesh

The law firm either assigned this to a junior associate or simply assumed the act of going at it with the registrant was just a formality to get what they want.

3. The rest of it is not exactly text book in terms of how to protect yourself but it worked out OK at the end...bad faith wasnt there or at least very evident

Um, 4 maybe?

If you read it carefully, there are very clear extenuating circumstances which led to the finding. Other prior cases have gone the other way with far weaker allegations.

[jaydub]

Interesting reading

[hugegrowth]

A close call for the domain owner if the ppc site was first showing auto ads and photos. Seems a lot harder to win a complaint for a .ca name than for a .com

I wonder if they will now try to buy the domain?

[TheLegendaryJP]

Personally I found the response brilliant, the legalities are easy to argue, who had a mark, when, where is it etc but the art here was the response.

[msn]

If they will, they have now increased the price by a good $20K: likely $5K to $10K to defend the file and $3K+ for filing and then their costs for their talented lawyers.

[msn]

Do not underestimate the importance of things like the panels: some are more neutral, like this one, while others amount to kangaroo courts on behalf of their corporate clients.

[fwdtech]

If they will, they have now increased the price by a good $20K: likely $5K to $10K to defend the file and $3K+ for filing and then their costs for their talented lawyers.

As is often stated, "The only winners are the lawyers."
Another stupid example of trademark lawyers, or in-house counsel, who are supposed to be acting in the best interest of their client.
It's no wonder that trademark lawyers keep wanting to become directors of CIRA, and that CIRA is asking for a review of the CDRP process (i.e. how can more disputes be generated?).

[msn]

Obiter dictum.

[TheLegendaryJP]

That is the lawyer I want though lol

[msn]

That is the lawyer I want though lol

¹

[TheLegendaryJP]

Do you want that telephone number? 613 .

Ill PM you when needed

[Ilze]

Marcel Naud, Lawyer | ROBIC, LLP | LAWYERS, PATENT AND TRADEMARK AGENTS | SINCE 1892
1001 Square-Victoria - Bloc E - 8th Floor, Montreal, Quebec, Canada H2Z 2B7 | Direct line 514 987-8039 | Fax 514 845-7874 | E-mail naud@robic.com | Web www.robic.ca

[TheLegendaryJP]

Thanks Il.

[msn]

Thanks Il.

¹

[Zak Muscovitch]

Talk about a shot int he dark. The Complainant saw an opening when the apparent registrant changed, and took a wild, blind shot. There is a Latin term that I learned in law school for when someone thinks that "Napa" means the "National Automobile Parts Association"; chutzpah.

Way to go to the registrant for defending this valuable domain name and for showing complainants that when they take a shot, it better be a good one. I hope the price has gone up by a million. That would be justice.