CDRP Unibet.ca - Decision = Transfer (1.Viewing)

There are some lessons from the unibet.ca CDRP decision:
https://ciidrc.org/wp-content/uploads/2021/11/2021-11-30-unibet.ca_.pdf


1. Don't use parking crew or other automatic PPC landers if there are any matching trademarks
2. Don't post any PPC links if the domain name gets almost no traffic.
3. File a section 45 request with CIPO if you think that the matching trademark is not being used.
4. Register a trade name/sole proprietorship that matches the domain name, for something not infringing, if you think that there are any risks of a CDRP.
5. Don't setup SMTP servers for domains unless you are running a transparent business.
6. If there are matching trademarks, the Registrant should use the domain name in a non-infringing way in connection with a registered business or use

the domain name in Canada in good faith in association with a noncommercial activity including, without limitation, criticism, review or news reporting;

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Is it possible to do all of the above, all the time? It can get expensive if you have too many domains that match registered trademarks.

And there are blatantly stupid beliefs stated in the opinion:

1. "It is reasonable to infer, based on the above, that the Registrant was aware of the Complainant’s UNIBET Mark and anticipated the Complainant would be interested in reflecting said Mark under the .ca extension for Canada. Thus, the Registrant deliberately registered the Domain Name to deny the Complainant the opportunity to register the Domain Name, disrupting the Complainant’s business."

The trademark owner had the opportunity to register the domain name 14 years before the registrant did! The registrant probably assumed that the trademark was not in use because private gambling has been illegal in Canada.

Note: This is changing - provinces are issuing online gambling licenses to private businesses now.

2. The “contact us” form of the Domain Name creates a plausible inference that the Registrant registered the domain name, or acquired the Registration, primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant, or the Complainant’s licensor or licensee.

Most normal websites have a contact us form or link.

Very interesting read David, thank you so much for posting it.

Absolutely invaluable information


PS. I'm glad to see you here, I think I sent you an invite quite a while ago. *THUMBSUP*

davidm said:

And there are blatantly stupid beliefs stated in the opinion:

Click to expand...

There always is, as the CDRP is a corporate whore mechanism, where the complainant is ALWAYS given the benefit of the doubt and their words are treated as pure 24K gold.

There is no requirement for panelists to take every statement from the complainant as the gospel truth, but CDRP panelists always do, as opposed to the UDRP, where panelists openly challenge lies and falsehoods put forward by swarmy complainants.

A CDRP complainant could state that he believed the respondent used a time machine to register said domain in bad faith, and if there was no response from the respondent, the CRP panelists would all heartily agree that this is obviously what happened.

Other points, not good to have just one panelist.

Unibet is also a tough one, because it isn't a generic word. Without knowing anything, it would have the obvious use for betting or gambling.

As the owner of the domain, you definitely wouldn't put gambling links on it, but what else could a domain owner have done with it?

The domain registrant probably assumed that the trademark was not in use because the gambling business has been illegal in Canada.

The .ca domain name owner should have filed a section 45 request to expunge the trademark.

It costs $450 in Canada
https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04950.html

Anyone can file a section 45 request after any trademark is older than 3 years old.

If the domain was worth much, I would recommend filing one now.

Interesting it was only registered October 2021. seems like a difficult one to defend the registrant, no wonder they didn't respond.