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In Re Penske Truck Leasing Co., LP. and Giurgia, a January 25, 2019, decision of the Canadian Internet Registration Authority (“CIRA”), an arbitrator found that a trucking partnership which is a trademark licensee had no standing to file a complaint about an infringing domain name registration.

Key facts

The complainant, Penske Truck Leasing Co., L.P. (“Penske”), is a partnership of truck rental and leasing companies headquartered in Reading, Pennsylvania, United States.

Penske did not own the ‘Penske’ trademarks – it was only a licensee of the trademarks.  Another entity, the licensor, Penske System Inc., owned the trademarks.

The registrant, Catalin Giurgia, is an individual residing in Kitchener, Ontario.

On August 18, 2018, Ms. Giurgia registered the disputed domain name, “pensketruck.ca”, with Go Daddy Domains Canada Inc.

On November 30, 2018, Penske filed a complaint with the British Columbia International Arbitration Centre (the “Centre”) under the CIRA Domain Name Dispute Resolution Policy (the “Policy”) and the CIRA Domain Name Dispute Resolution Rules (the “Rules”).  Penske alleged that Ms. Giurgia’s domain name infringed its registered trademarks.

Ms. Guirgia did not file any responding materials.  Penske moved under the Rules to have a single arbitrator decide its complaint.  The Centre appointed an arbitrator.

Penske was not an eligible complainant

It is a requirement that a complainant must satisfy the CPR unless the complaint relates to a trademark registered in Canada and the complainant owns the mark.  Here, the trademarks that Penske relied on to satisfy the CPR were owned by Penske System Inc.  Although Penske was a licencee and user of the trademarks, it did not own them.

Based on Penske’s lack of standing alone, the arbitrator dismissed the complaint.

The arbitrator found that Penske did not satisfy the Canadian Presence Requirements for Registrants (the “CPR”) under the Policy.  The CPR apply to entities wishing to register a “.ca” domain name.

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Highlights:

  • JD, LLM (Osgoode '96, '15), C.S. in Civ Lit (LSO), Fellow of CIArb, member of the Bars of Ontario ('98) and BC ('17)
  • Principal of Law Works PC (Ontario)/LC (British Columbia)
  • Acted as counsel in many leading franchise court decisions in Ontario over the past twenty-five years, including appellate decisions.
  • Provided expert opinions in and outside Ontario
  • Presented at and chaired numerous franchise and civil litigation CPD programs for over 20 years
  • Chair of OBA Professional Development (2005-2006) - overseeing all PD programs
  • Chair of Civil Litigation Section, OBA (2004-2005)

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