D. & A.'s Pet Food'n More Ltd. v. Seiveright, 2006 FC 175

Date: 20060209

Docket: T-1162-04

Citation: 2006 FC 175

Vancouver, British Columbia, Thursday, the 9^th day of February, 2006

Present:           THE HONOURABLE MR. JUSTICE LEMIEUX

BETWEEN:

                                              D. & A.'S PET FOOD 'N MORE LTD.

                                                                                                                                               Plaintiff

                                                                         - and -

                                                        BEVERLY SEIVERIGHT,

                                            carrying on business as PETS 'N' MORE

                                                                                                                                           Defendant

                                            REASONS FOR ORDER AND ORDER

[1]                The Defendant, a self-represented litigant, who since June 2004 no longer operates a retail store under the name "PETS 'N' MORE" in Winfield, B.C. and who appears since December 2005 not to be using its website with the domain name petsnmore.ca, did not appear before this Court in Vancouver on Monday, February 6, 2006, on the return of the Plaintiff's motion for summary judgment.

[2]                On June 18, 2004, the Plaintiff issued a statement of claim alleging trademark infringement by the Defendant of the Plaintiff's registered trademark Pet Food 'N' More. The Defendant started using hre trade name sometime in March 2003.

[3]                These reasons explain three items of the order herein made.

[4]                I was apprised by counsel for the Plaintiff of the numerous (and commendable, I might add) attempts to settle the lawsuit on a without damages and without costs basis (see offers of July 26, 2004, August 17, 2004, November 10, 2004 seemly accepted by the Defendant on November 15, 2004). The last offer on the table by the Plaintiff required the payment by the Defendant of costs of $1,500 provided a settlement agreement presented to the Defendant by the Plaintiff was entered into.

[5]                One of the conditions in the Plaintiff's offer to settle was that the Defendant transfer the domain name petsnmore.ca to the Plaintiff, which she resisted, although she had apparently established a new website under the name www.petsngifts.com and directed her internet service provider to automatically direct traffic from www.petsnmore.ca to the new website. She said she needed to maintain the old domain name to provide a bridge to the new domain name for so long as it took to establish the new domain name in all links, advertising, and with all contacts.

[6]                The Defendant indicated to the Plaintiff on April 27, 2005, that she was going, at the behest of counsel for the Plaintiff, to seek legal advice on the point. I was advised by counsel for the Plaintiff that he subsequently received no communication from any counsel to the Defendant.

[7]                In my view, there is no basis to the Defendant's reluctance to cease using an infringing domain name or transferring it to a lawful trademark owner where confusion has been made out. Justice O'Keefe made such an order in Rolls-Royce pcl et al. v. Fitzwilliam et al. (2002), 19 C.P.R. (4^th) 1 (see page 24).

[8]                On the issue of damages, the Plaintiff suggested a lump-sum award rather than engaging in more legal expenses proving the Plaintiff's damages or loss of profit. I agree that closure should be brought to this file without more time and expense being incurred on both sides.

[9]                Although the analogy is not perfect, I am persuaded by the reasoning of Justice Pelletier, then a member of the Federal Court, in Ragdoll Productions (U.K.) Limited et al. v. Jane Doe et al. (2002), 21 C.P.R. (4^th) 213. I fix damages at $6,000 as appropriate in the category of a fix retail store. I note the Defendant's efforts as far as the retail store is concerned to quickly change its signage so that approximately one year later it was not infringing.

[10]            Finally, on the issue of costs based on a draft bill of costs using the upper level of Column III, taking into account all of the factors in section 400 of the Federal Courts Rules, 1998, I make an award of $6,000 on account of total fees and disbursements including GST.

                                                                       ORDER

UPON the Plaintiff being the owner of the trademark PET FOOD 'N MORE, which is registered under Canadian trademark registration No. TMA390,7­93 in association with pet food and pet supplies retail sale services;

AND UPON the Defendant having used the trademarks/trade names PETS 'N' MORE, BEV'S PETS 'N' MORE, and BEV'S PETS & MORE and the Internet domain name petsnmore.ca in association with her business of providing pet food and pet supplies retail sale services, the Defendant's use of the aforesaid trademarks/trade names and Internet domain name being without the Plaintiff's authorization;

AND UPON motion by the Plaintiff for summary judgment in this action, the Plaintiff's motion being initiated by its Notice of Motion dated December 20, 2005;

AND UPON the Plaintiff's aforesaid motion coming on for hearing in Vancouver, British Columbia on February 6, 2006;

AND UPON the Defendant having received notice of the Plaintiff's aforesaid motion but not appearing at the hearing;

AND UPON being satisfied that this is an appropriate case for summary judgment and that summary judgment should be granted in this action in favour of the Plaintiff on the terms of this Order to dispose of all of the claims in this action;

IT IS HEREBY ORDERED that:

1.          Summary judgment is hereby granted in this action in favour of the Plaintiff.

2.          This Order shall dispose of all of the claims in this action.

3.          It is hereby declared that the Defendant:

(a)         is deemed to have infringed the right of the Plaintiff to the exclusive use of the trademark PET FOOD 'N MORE which is the subject of Canadian trademark registration No. TMA390,7­93, contrary to Section 20 of the Trade-marks Act; and

(b)         has directed public attention to her services and business in such a way as to cause or be likely to cause confusion in Canada, at the time she commenced so to direct attention to them, between her services and business and the wares, services and business of the Plaintiff, contrary to Section 7(b) of the Trade-marks Act.

4.          A permanent injunction is hereby granted restraining the Defendant, and the Defendant's employees, agents or otherwise, from:

(a)         infringing Canadian trademark registration No. TMA390,793 for PET FOOD 'N MORE;

(b)         using, as or as part of a name, trademark, trade name, Internet domain name or otherwise in association with the Defendant's wares, services and/or business, any of the trademarks PET FOOD 'N MORE, PETS 'N' MORE, BEV'S PETS 'N' MORE, PET FOOD & MORE, BEV'S PETS & MORE, or any other trademark or trade name which is confusing with, or likely to be confused with, the Plaintiff's trademark PET FOOD 'N MORE;

(c)         without limiting the generality of paragraph 4(b), using the Internet domain name petsnmore.ca;

(d)         directing public attention to the Defendant's wares, services and/or business in such a way as to cause or be likely to cause confusion in Canada between such wares, services and/or business and the wares, services and/or business of the Plaintiff;

(e)         passing off the Defendant's wares, services and/or business as and for those of the Plaintiff;

(f)          falsely suggesting any association between the Defendant's wares, services and/or business and those of the Plaintiff; and

(g)         registering any Internet domain name which contains any portion which is confusing with, or likely to be confused with, the Plaintiff's trademark PET FOOD 'N MORE.

5.          The Defendant shall deliver up to the Plaintiff or destroy under oath, within 30 days of the date of this Order, all signage, wares, advertising materials, literature, brochures, labels, packaging, or other material in the possession, custody, power or control of the Defendant that may offend the injunction herein.

6.          The Defendant shall, forthwith upon demand by the Plaintiff, execute any and all necessary documents, and take whatever other steps are necessary, to transfer the registration of the Internet domain name petsnmore.ca to the Plaintiff.

7.          The Defendant shall forthwith pay to the Plaintiff damages in the amount of $6,000.

8.          The Defendant shall forthwith pay costs for this action to the Plaintiff in the amount of

$6,000.

(Sgd.) "F. Lemieux"

Judge

                                                             FEDERAL COURT

                            NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                          T-1162-04

STYLE OF CAUSE:                          D. & A.'S PET FOOD 'N' MORE LTD.

- and -

BEVERLY SEIVERIGHT, carrying on business

as PETS 'N' MORE

PLACE OF HEARING:                    Vancouver, BC

DATE OF HEARING:                      February 6, 2006

REASONS FOR ORDER AND ORDER:                           LEMIEUX J.

DATED:                                                                                  February 9, 2006

APPEARANCES:

Mr. Craig A. Ash                                                                      FOR PLAINTIFF

no one appearing                                                                       FOR DEFENDANT

SOLICITORS OF RECORD:

Oyen Wiggs Green & Mutala LLP                                             FOR PLAINTIFF

Vancouver, BC

n/a                                                                                             FOR DEFENDANT