Volume VI

Issue : 18: November 13, 2008

• Judge Grants Preliminary Injunction Against Former IBM Employee Joining Apple
• Domain Name Dispute over Endermowear.ca
• U.S. Appellate Court Deals Blow to Business Method Patents
• Internet Defamation Is a Hyperlink Publication
• Google Officials Charged for Posting of Inappropriate Video
• 21 Month Jail Sentence for Illegal Movie Piracy
• Ontario Court Finds Internet Posting not Broadcast for Libel Purposes

Home > Volume VI > Issue 18: November 13, 2008 > Domain Name Dispute over Endermowear.ca

Domain Name Dispute over Endermowear.ca

Recently the Canadian Internet Registration Authority (“CIRA”) released its decision in a domain name dispute between LPG Systems S.A. and Distribution4web over the domain name “ENDERMOWEAR.CA”.

The Complainant LPG Systems (“LPG”) is a company based in France and deals in products and services relating to beauty, fitness and health care. It also carries on business in Canada and has registered in Canada the trademarks ENDERMO, ENDERMOLOGIE and ENDERMOTHERAPIE prior to the commencement of this action. The Registrant Distribution4web is a company based in Montreal, Canada, and deals in products and services that are similar to those of LPG.

Distribution4web registered the disputed domain name in February, 2007 after its application to become a Canadian distributor for LPG was denied. In addition to registering the disputed domain name in February, 2007, Distribution4web had also filed for the trade-mark ENDERMOWEAR, but was unable to overcome Office Actions from the Canadian Trade-mark Office, and had to abandon the mark in April 2008.

Panellist Tawfik found the disputed domain name to be confusingly similar to LPG’s mark as the domain name incorporates in whole LPG’s mark ENDERMO and adds the descriptor ‘wear’ at the end. In ruling that confusing similarity had been made out, she also accepted as persuasive (though not binding) the fact that Distribution4web’s Trade-mark application for “ENDERMOWEAR” had been refused by the Canadian and US Trade-mark Offices because of likelihood of confusion with LPG’s mark ENDERMO.

Panellist Tawfik found that Distribution4web registered the domain name in bad faith, and held that the purpose for this was to disrupt LPG’s business. On the issue of whether Distribution4web had a legitimate interest in the domain name, Panellist Tawfik found that Distribution4web had no right in the Marks at the time of the domain name registration. ENDERMOWEAR.CA was therefore ordered transferred to LPG.

For more information, visit:

http://www.cira.ca/en/dpr-decisions/00109-endermowear.ca.pdf