For Sale Bad News for .CA domainers

[domainatrix]

:?:Two recent domain dispute decisions involving .CA domains spell what I consider bad news for Canadian Domainers. Personally, I believe the dispute resolution panels are overstepping their mandate here, and finding in favour of complainants when the evidence is quite poor.

In the first case, both eCar.ca and eCars.ca have been ordered to be handed over to Enterprise Rent a Car. The panel concluded that "e"anything.ca does not constitute a generic term. So anyone holding eTravel, eHouse, eTruck, etc, is now in jeopardy of losing their domains, as this case will be used as precedent. If eCars.ca is not generic, what is??? To read the decision, visit
http://www.acei.ca/en/dpr-decisions/00086-ecar.ca.pdf

The other decision involves an acronyn and a complainant that admitted to dropping the domain, and then wanting it back; specifically mpshu.on.ca. For those of you who pick up dropped domains, such as the recent chia.on.ca, this is bad news. Former registrants who allow their domains to drop, can now come forward and reclaim them. Read this decision at http://www.acei.ca/en/dpr-decisions/00087-mpshu_on.ca.pdf

I'd love hear hear your thoughts on this!

Jen

 

[revolution1]

I don't think it will take to long to see this go the way of the dodo bird. Recently emall won a decision for cheaptickets.ca so this is not really to disconcerting just a temp. bad decision. Get a judge in their who knows his ass from a hole in the ground and this shall be rectified.

 

[TheLegendaryJP]

Thank you for providing a link to the case or I may have believed you. This decision could be seen from a mile away and imo a fair one.

1. ECAR(S) was and is a registered TM in Canada owned by Enterprise.
2. They have operated under it ( ECARS ) since 93(?) and the use is for the purpose of leasing and renting cars.
3. The registrant was parking the domain with keywords relating to leasing and renting cars.

Tm...Bad Faith...Obviously no legit use...Good Bye Domain !

It was a fair and correct decision and your misrepresentation is baffling. Perhaps be sure to hide the truth next time before you twist it and warn us all

Its not bad news its bad domaining that lost this name.


As for the other case the registrant did not even reply ! What more can I say.

 

[nametrader]

If there is a TM it's damn! right to take away

 

[domainatrix]

As I mentioned in my first post, it is my "personal" opinion that the dispute panels are overstepping, and I asked for opinions from others. It is my understanding that TM is only 1/3 of the resolution criteria, but the trend seems to indicate that a TM owner is 95% likely to win. I recently did a search and found dozens of generic terms that have been TM'd over the years. Canadians are more vulnerable to the dispute system.

Why didn't enterprise go after eCar.com?

Cheaptickets.ca also lost their case at the dispute resolution level. Only after spending $10's of thousands and going to court, did they win the case. "Cheaptickets" should not be a trademark, as anyone can offer cheap tickets. TM attempts at for the likes eBook, eSchool, eTravel and eHelp have been thwarted. Should eCar not be treated the same way?

Should Microsoft have been issued a TM for eShop?
Should a TM have been issued for eMusic? is the owner of eMusic.ca now bound to lose that domain???

Just looking for some insight...

Thanks,
Jen

 

[TheLegendaryJP]

You can answer all these questions quite easily. The outcome may differ as nothing is a sure thing but if the complaintant has a TM, the registrant is using the name in bad faith ( like ecars.ca ) and has no legit use then YES of course those are names that could be lost.

I had no idea .ca is more vunerable, based on what ? We see clear injustices all the time, no more .ca then .com . Each case has its own elements and must be considered.

Long story short YES anything is possible and YES getting served doesnt mean you deserve to be served nor does it stop anyone from trying or the outcome. But in the two cases you used to make your arguement you were flat wrong. Ecars was a fir decision and the othwer case did not even reply !

 

[hugegrowth]

with 'cheap tickets', you see lots of ticket companies advertising cheap tickets, and people look for cheap tickets, so it's a natural generic term.

with 'ecars', you don't see a lot of companies advertising ecars, and people don't search for ecars. Even though putting an 'e' in front of a generic word is pretty common in online lingo, there is more of a case for a TM. If the owner of ecars.ca was using it for a toy car site, or a car club site, etc. maybe he would have had a case.

 

[DropWizard.com]

As I mentioned in my first post, it is my "personal" opinion that the dispute panels are overstepping, and I asked for opinions from others. It is my understanding that TM is only 1/3 of the resolution criteria, but the trend seems to indicate that a TM owner is 95% likely to win. I recently did a search and found dozens of generic terms that have been TM'd over the years. Canadians are more vulnerable to the dispute system.

Why didn't enterprise go after eCar.com?

Cheaptickets.ca also lost their case at the dispute resolution level. Only after spending $10's of thousands and going to court, did they win the case. "Cheaptickets" should not be a trademark, as anyone can offer cheap tickets. TM attempts at for the likes eBook, eSchool, eTravel and eHelp have been thwarted. Should eCar not be treated the same way?

Should Microsoft have been issued a TM for eShop?
Should a TM have been issued for eMusic? is the owner of eMusic.ca now bound to lose that domain???

Just looking for some insight...

Thanks,
Jen

This is a fair decision. The TM's were in place years before the domains were registered. Had he sent the traffic to some other product line than car rentals (sales) he might have kept them. But to send it to budget or other such companies was just asking for it.

There is nothing extrodinary in this decision other than some discussion as to the distinctiveness of adding the "e" label to a domain name.

That will be settled very quickly. If the Tm office considers adding e to a generic term makes it distinctive enough to grant a TM then the panels will have to follow that line of thought. Any lawyer making that argument would probably prevail.

Now that I've read the second decision you refer to I would wonder why you consider either of them bad decisions.

#2 the registrant apparently:

has bad whois info (address & phone & email)
never responded
doesn't appear to live in canada (non-eligible registrant)
copied the previous owner's webpage and passed themselves off as the previous registrant (fraud)

Frankly the setup seems like little more than a fraud on the previous registrant. I agree totally with the decision made.

Apparently you appear to think that registrants rights of conduct are "unlimited" or without responsibility.

The kind of registrant behaviour shown in this case reflects on all of us.

I'm baffled by your position:?::?:

 

[Namefox]

I don't think ecars is generic at all. I believe it was a good decision. Electroniccars is generic but not ecars. My 2cents...

 

[DropWizard.com]

I don't think ecars is generic at all. I believe it was a good decision. Electroniccars is generic but not ecars. My 2cents...

I think you have too look at the "E" trademark based on the time it was issued. 1995 was pre internet and the addition of an "E" to a word would give some distinctiveness. Now of course we add it to anything internet related and I suspect an application for a TM now would be met with a "no".

Just the difference in time and technology at work here.

JMO

 

[domainatrix]

Thanks DropWizard, that's the most insightful thing I've read so far! I actually posted my original comments more to see if I could stir up some debate and gauge the opinion of the crowd reading this thread. I wanted to see how strongly people felt about trademarks and how they could/should restrict domainers from registering a domain.

In truth, we are currently advising a client who has made an offer for a domain; "gelato.ca". As it turns out, we have discovered that the extact term "gelato" is actually trademarked by the Nvidia Corporation. Our client is now worried that is they follow through with their offer and purchase, that Nvidia and their deep pockets can come after the domain. Based on what I have read above, many of you seem to think that if you register a TM'd domain, you deserve to lose it; which kind of baffles me given that many generic words are trademarked.

Trademarks: GELATO, Registered, 1209306, TMA684798

http://strategis.ic.gc.ca/app/cipo/...06&extension=0&startingDocumentIndexOnPage=11

So, now that I have been a bit more "honest"... what would you all advise?

Jen

 

[ShaunP]

APPLICATION NUMBER:
1209306 REGISTRATION NUMBER:
TMA684798
STATUS: REGISTERED
FILED: 2004-03-11
FORMALIZED: 2004-03-12
ADVERTISED: 2004-09-15
REGISTERED: 2007-03-28
REGISTRANT:
NVIDIA Corporation,
a Delaware corporation
2701 San Tomas Expressway
Santa Clara, California 95050
UNITED STATES OF AMERICA

REPRESENTATIVE FOR SERVICE:
PERLEY-ROBERTSON, HILL & MCDOUGALL LLP
1400 - 340 ALBERT STREET
OTTAWA
ONTARIO K1R 0A5

TRADE-MARK:
GELATO
INDEX HEADINGS:
GELATO

WARES:
(1) Computer hardware and software for image processing, computer graphics, and video production

Simple... make sure your client is not using it in anyway that infringes on the wares stated above. They could sell "GELATO" ice cream or a million other things than the above.

 

[onlinestoreca]

I was disappointed with some of the comments to this thread. Why people want to knock down a discussion is beyond me. I thought the court cases were very relevant. Kudos to Jen for bringing this up and supplying the links.

If "Ed's Hockey Cards" registers eCards as a TM, he has a pretty good case to get eCards.ca, according to the decision. The decision says "e" carries no significance with a noun as a generic term.

If I owned eName.ca I would be very concerned. I also would be weary of people named Ed.

The only thing that might save people is the development of appropriate material on a website. If it's parked or redirecting, they seem to not be looking in domain holders favour. It is as if they are considering the parking to be "bad faith". If that is true, then in Canada, domain speculation could become a pretty ugly business.

I think your Gelato guy/girl would be okay, IF they have the site developed and are actually selling Gelato or Gelato related items. Until that actual moment, I would be very concerned.

 

[DropWizard.com]

Re: Gelato

What Shaun said. :lol: He's absolutely right. As long as the use is non conflicting you could use gelato for a car name and TM it if you like. Most words including generics have TM's against them but not for the original meaning.

I was disappointed with some of the comments to this thread. Why people want to knock down a discussion is beyond me. I thought the court cases were very relevant. Kudos to Jen for bringing this up and supplying the links.

I don't think anyone including myself wants to knock the discussion.

The decisions were originally brought up in a context that raised some questions as to why they were described as "bad for domainers" and I questioned that.

The cases are interesting and relevant. But contradict the title that accompanied them.

My part of the discussion you know! Now why you'd want to knock down that part is beyond me......:smilewinkgrin:

If "Ed's Hockey Cards" registers eCards as a TM, he has a pretty good case to get eCards.ca, according to the decision.

He would have a great case if he registered the TM to cover sports cards before the domain was registered and the domain owner was stupid enough to send the traffic to sportscard companies. The domain owner would probably be fine with greeting cards companies or maybe loyalty card companies or even credit card companies.

 

[TheLegendaryJP]

I can only assuming I may be the one the knocking it comment is ment for and down playing the very valid very real discussion :lol:

I stand by my statements, all were spot on, valid and disproved that these judgements mean anything to .ca holders or holders at large besides the fact if you infringe on a mark YES you will lose the name or at least deserve to.

Picking these two cases to warn .ca domainers about shows the knowledge the original poster has concerning such matters. The bottom line has been stated by me, dropwizard and Shaun...DONT F****** infringe on someones use/TM and you should be just fine caring on business in other manners ( should ). E no E a Q doesnt matter, dont infringe. Ill be damned if I am going to tip toe around the bush for anyone or lick ass especially the ass of people who dont know wtf they are talking about. Shut up and learn instead of crying or at least read the WHY as to decisions.

 

[revolution1]

JP drink a cup of chamomille tea and relax.

 

[TheLegendaryJP]

JP drink a cup of chamomille tea and relax.

I am relaxed and when someone fights the first valid reply then second and furthermore has a cheerleader looking for people to validate the stupidity I lose it. The facts and his question have been answered many times over now. Perhaps the tone could have been nicer but its christmas.

This one took the cake...

I was disappointed with some of the comments to this thread.

obviously this guy doesnt realize he is reading the facts as given by experienced and knowledgeable members. Perhaps he doesnt like the tone to which I say tfb you arnt the original poster any ways. He then goes on to spew absolutely meaningless BS about being a canadian domainer and being affriad . Affraid of wht you think you can infringe here in Canada and it is ok or do you think not infringing and getting the name taken is JUST a Canadian problem, either way its a stupid arguement and more talking out of ones ass. I am amazed at the posts here sometimes, meaningless nonsense and no one steps up to say stfu and read more, it benefits us all.

 

[onlinestoreca]

Apparently you don't have any issues... :upset: -lol.

I'll give you a tip. Skip paintball next weekend, meet a girl (or guy if you prefer) at a bar (you'll have to try not to swear) and let them show you how to release that tension.

Best of luck!

 

[TheLegendaryJP]

Apparently you don't have any issues... :upset: -lol.

I'll give you a tip. Skip paintball next weekend, meet a girl (or guy if you prefer) at a bar (you'll have to try not to swear) and let them show you how to release that tension.

Best of luck!

I am sorry that I come across strong but it is apparent when someone is clueless or half read on matters. I can only say to you, fear not .ca domainer keep your nose out of TM names and you'll be ok. Still may lose one or two in cases where you shouldnt have and yes its discouraging but a global issue not or never will be a canadian one.

 

[onlinestoreca]

That's cool. I like to be aware of all angles, I have a lot of money invested in my names. I've learned in life that there are a lot of court decisions that aren't logical, right or fair.

I like to stay heads up with decisions like this one, so I appreciated Jen's post. I wasn't trying to argue with your logic, I actually agreed with it. I was just throwing stuff out there to think about.

If this discussion raises awareness of "good faith" domain name development, it probably helps us all.

Have a good one!

And... I apologize for the paintball remark, just having some fun!