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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation v. Joey Man

Case No. D2006-0671

 

1. The Parties

The Complainant is Canadian Tire Corporation, Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.

The Respondent is Joey Man, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <canadian-tires.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2006. On May 31, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent Joey Man is listed as the registrant, and that the current contact information for the domain name can be found by doing a Whois lookup at “http://whois.enom.com”. The Center verified such contact details. The Center also verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2006.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 21, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The followings facts and circumstances are considered true, because they were contended and/or evidenced by the Complainant, without having been contested by Respondent:

- There are over 460 Canadian Tire stores in Canada. Nine out of ten adult Canadians shop at Canadian Tire at least twice a year, while 64% of Canadians shop at Canadian Tire each month. Over 80% of the Canadian population lives within a 15-minute drive of a Canadian Tire store, and these stores collectively employ over 50,000 Canadians. Canadian Tire’s annual catalogue is distributed to more than eleven million households in English and French. Canadian Tire stores are independently owned and operated by Canadian Tire Associate Dealers. The Complainant sells wares, including tires, to Canadian Tire associate stores, which sell them to the public.

- The Complainant owns trademark registration No. TMA279,853 CANADIAN TIRE, used in Canada since at least as early as 1927 in association with automotive parts including tires, tools, accessories and maintenance and service supplies; operation of a business dealing in the selling of vehicular parts, tools, and accessories of others; servicing and maintenance of vehicles; selling of hardware of others; selling of house wares of others; selling of household goods of others; selling of sporting goods of others. Complainant also owns trade mark registration No. TMA469998 CANADIAN TIRE Design, used in Canada in association with the operation of a business dealing in the selling of vehicular parts, tools and accessories of others; the selling of maintenance and service supplies of others; the selling of hardware of others; the selling of house wares of others; the selling of household goods of others; the selling of sporting goods of others; and the servicing and maintenance of vehicles.

- The Complainant has continuously and extensively used the CANADIAN TIRE trademarks and has established a valuable reputation and goodwill in association with them.

- The Complainant operates its principal website at “www.canadiantire.ca”.

- On November 22, 2004, the Respondent registered the disputed domain name.

- The Respondent has established a website at “www.canadian-tires.com” containing advertisements for tires in association with the words “Canadian tires”.

- On November 21, 2005, Complainant’s counsel wrote to the Respondent and indicated that unless the registration of the disputed domain name was transferred to the Complainant and all use of the domain name discontinued, proceedings would be instituted. Additional letters were sent to the Respondent dated December 28, 2005 and January 18, 2006. The Respondent has not responded to these communications.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

- The disputed domain name is confusingly similar to the CANADIAN TIRE trademarks.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The CANADIAN TIRE trademarks have been so pervasive in Canada since 1927, the year Canadian Tire was incorporated, that other persons or entities would not legitimately choose identical or confusingly similar names unless they were seeking to create an impression of an association with Canadian Tire. The Complainant has not licensed or otherwise permitted the Respondent to use the CANADIAN TIRE trademarks or any other marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. The use of a domain name, which is obviously confusingly similar with the CANADIAN TIRE trademarks, clearly does not constitute a bona fide offer of goods or services when the Respondent has no registered or common law rights in these marks.

- In light of the pervasive use of the CANADIAN TIRE trademarks it is difficult to conceive of a legitimate use by the Respondent of the disputed domain name. It is also difficult to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. Accordingly, the Complainant states that the Respondent registered the disputed domain name in bad faith. The disputed domain name has been registered and is being used by the Respondent with the intention of attracting, for commercial gain, internet users to the Respondent’s website, by creating confusion with the Complainant’s CANADIAN TIRE trademarks as to the source, sponsorship, affiliation or endorsement of the Complainant with the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to obtain the requested remedy a complainant must prove that each element of Policy paragraph 4(a) is present, i.e.:

(i) That the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name was registered and is being used by the respondent in bad faith.

A. Identical or Confusingly Similar

With printouts corresponding to data from the database of the Canadian Intellectual Property Office, the Complainant proved that it has rights in the CANADIAN TIRE trademarks, whose registrations predate the registration of the disputed domain name by the Respondent. See section 4 above.

The domain name <canadian-tires.com> fully incorporates the CANADIAN TIRE marks, adding a final “s” to “tire”, a hyphen and the gTLD “.com”. None of these minor additions is sufficient to distinguish the domain name from Complainant’s mark. See Edmunds.com, Inc. v. My Cars Space, WIPO Case No. D2006-0491 (“The addition of “s” merely denotes a plural or possessive form and is even a common misspelling. Many prior WIPO decisions have recognized ‘that minor alterations to a well-known mark are not sufficient to set aside a finding of identicality or confusing similarity’ ”.) See also Kate Spade LLC v. Karen Vog, WIPO Case No. D2005-0284, where the domain name <kate-spade-handbag.com> was found confusingly similar to the KATE SPADE trademark (citing Teleplace, Inc. v. Oliveira, NAF Claim No. FA0010000095835 (December 4, 2000 ) and InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks.

B. Rights or Legitimate Interests

While the burden of proof generally rests with the complainant, proving that a respondent lacks rights or legitimate interests in a domain name may result in proving a negative, requiring information that is usually known by the respondent. It is a consensus view that a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, section 2.1., at “http://arbiter.wipo.int/domains/search/overview/index.html”.

The Complainant states that it has not licensed or otherwise permitted the Respondent to use the Canadian Tire trademarks or any other marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. Complainant also contends that the use of the domain name by Respondent does not constitute a bona fide offer of goods or services. See section 5 (A) above. In the circumstances of this case, this imports to Complainant having made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Considering that Respondent is using the website under the disputed domain name to divert Internet users to the websites of Complainant’s competitors (see subsection “C” below), it is clear that Respondent is not making “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, pursuant to Policy paragraph 4(c)(iii).

Without any allegation or evidence in Respondent’s favor on the record, the Panel cannot but conclude that the Respondent lacks rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Although the expression “Canadian Tires” might eventually be a generic reference for, inter alia, car tires made in Canada, or car tires adapted for use in Canada, the fact is that Respondent has not made any such allegation in these proceedings. The Respondent, having an address in the United States, has not alleged in any material before the Panel that he was not aware of Complainant’s Canadian Tire marks at the time of registration. As the Respondent is apparently using the disputed domain name to sell and/or advertise car tires and automotive parts, the Panel believes that his being unaware of Complainant’s marks would be extremely unlikely. Even if any such allegation were made (without further evidence), it would be unlikely to assist the Respondent because -as found by WIPO panels- the Canadian Tire mark is pervasive or very well known in Canada. See Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. carrying on business as Par5Systems, WIPO Case No. D2000-0985 (“Canadian Tire trademarks are pervasive in Canada and that other persons or entities would not choose identical or confusingly similar domain names unless they were seeking to create an impression of an association with Canadian Tire”); Canadian Tire Corporation, Limited v. None and Steve Carriйre, WIPO Case No. D2002-0461 (“CANADIAN TIRE is a very well known trade-mark throughout Canada”); Canadian Tire Corporation, Limited v. Mike Rollo, WIPO Case No. D2002-1069 (“Complainant has continuously and extensively used the CANADIAN TIRE Mark and has established a very valuable reputation and goodwill in association with its trademarks”), and Canadian Tire Corporation, Limited v. Juancho Feliciano, WIPO Case No. D2005-0375 (“the CANADIAN TIRE trademark is extremely well known in Canada”).

The Panel believes that Respondent would not have chosen a domain name confusingly similar to the well known CANADIAN TIRE marks unless he were seeking to create the impression that his website is associated with the Complainant, or to obtain profit from the confusion created among Internet users looking for Complainant’s website. This strongly suggests registration of the domain name in bad faith.

According with printouts provided with the Complaint by Complainant, Respondent is posting advertising from third parties –mostly tire manufacturers– on the website under the disputed domain name.

It is a consensus view of WIPO panels that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. A panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at 4.1, available at “http://arbiter.wipo.int/domains/search/overview/index.html”.

On July 27, 2006 the Panel connected its browser to the website at the disputed domain name. On its first page there was an alphabetical list of expressions made of car brands and the expression “Canadian tires”, such as “Acura Canadian tires”, “Alfa Canadian tires”, “Audi Canadian tires”, etc. On the same web page several texts described tires from Continental, Bridgestone, Pirelli, Michelin, Dunlop, Yokohama, BF Goodrich, Sumitomo, Goodyear, Winterforce, Firestone, etc. Various models were described as apt for use under winter conditions. On the same page there was a frame where the user can look for a specific carmaker and year to shape her “Canadian winter tire combo”. It was stated that the search system had been provided by The Tire Rack, a company with a website at “www.tirerack.com”. Thus, an Internet user connected to the “www.canadian-tires.com” website and willing to find whether tires or other automotive parts and accessories are available for a particular car make and model, is re-directed to the website of The Tire Rack, a competitor to the Complainant.

Whether or not The Tire Rack is associated with the Respondent, the Panel infers from the use of Respondent’s website that he registered and is using the disputed domain name with the intention of attracting, for commercial gain, Internet users to his website, by creating confusion with the Complainant’s CANADIAN TIRE trademarks as to the source, sponsorship, affiliation or endorsement of the Complainant with the Respondent’s website, pursuant to Policy paragraph 4(b)(iv). As this is a circumstance of registration and use of the domain name in bad faith, the Panel finds that the third requirement of the Policy is met.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <canadian-tires.com> be transferred to the Complainant.

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Roberto A. Bianchi
Sole Panelist

Date: August 3, 2006