Big online companies always face the brunt of domain impersonation scams. However, sometimes even partners dupe an entity’s brand names. As evident in this case involving Shopify.
Shopify had to enter the doors of Canadian International Internet Dispute Resolution Centre. The domain name at the center of the dispute was ShopifyDevelopment.com.
Shopify presented in the court is that it is a popular online company, among the top 10 publicly traded companies in Canada. However, the concerned domain name was using Shopify’s marks and trying to lure visitors under the disguise of the complainant.
The respondent presented that it was the member of the complainant’s Partnership Program and was using the marks in that relation. He also stated that its website clearly states that this is not the original Shopify platform.
The complainant argued that the Partnership Program was a free to join program, where participants were allowed to experiment with the complainant’s brand. However, after the termination of that program, the continuance of usage of complainant’s mark was unethical. The respondent presented that after the expiry of the program all related marks were removed from the platform.
The panel found that the respondent had itself admitted to many of the respondent’s claims. Moreover, respondents’ claims even underlined those claims. The respondent’s argument that the domain name only enhances the complainant’s brand doesn’t appear to have much credit.
Registering the domain name itself was a violation of trademarks. On top of that whether the domain name enhances or degrades the brand, depends upon the choice of the brand’s owner only.
The complaint was denied.
You can read the case in full detail here.