Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation Limited v. Mainstream Advertising

Case No. D2006-1159

 

1. The Parties

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

The Respondent is Mainstream Advertising, of Woodland Hills, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names are <canadiantirebargain.com>, <canadiantirecatalogues.com> and <canadiantirediscounters.com>.

The domain names at issue are registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2006. On September 8, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On October 4, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 10, 2006. The Center verified that the Complaint together with the Amendment to 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 October 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2006.

The Center appointed Ian Blackshaw as the Sole Panelist in this matter on December 1, 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 Complainant is the registered owner of numerous Canadian trademark registrations for the trademark CANADIAN TIRE in written and design form. The registrations owned by the Complainant include the following trademarks:

(a) 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.

The registrability of this trademark has been recognized under section 12(2) of the Trademarks Act on wares in all parts of Canada on the grounds that the trademark has been so used in Canada by the applicant as to have become distinctive of the applicant. A registration under this subsection is only allowed if the Registrar of Trademarks is satisfied on the basis of actual evidence of use submitted by the applicant to establish the extent to which and the time during which the trademark has been used in Canada.

(b) Trademark 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.

These trademarks of the Complainant mentioned above are collectively referred to as the “Canadian Tire Trademarks”. Copies of registration particulars downloaded from the Canadian Intellectual Property Office (CIPO) on-line database, the official version of the index of registered Canadian trademarks kept by the Registrar, have been provided to the Panel.

The Complainant has continuously and extensively used the Canadian Tire Trademarks and has established a very valuable reputation and goodwill in association with them.

The Complainant is the registrant of the domain name <canadiantire.ca>. The Complainant operates its principal website at “www.canadiantire.ca”. The site portrays products which are representative of the Complainant’s three core areas – Automotive Parts, Accessories & Service; Sports & Leisure Products; and Home Products. Currently, more than 21,000 products can be browsed. Consumers can purchase these products directly online for delivery to their homes or at Canadian Tire associate stores. On average, more than 90,000 individuals a day visit the website and it is consistently ranked among Canada’s top five busiest e-commerce sites.

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 has been distributed since 1928, and is currently distributed to more than eleven million households in English and French. The catalogue has become an institution for consumers in Canada.

Canadian Tire stores are independently owned and operated by Canadian Tire Associate Dealers. The Complainant sells wares, including tires, to Canadian Tire Associate dealers that subsequently sell them to the public. Canadian Tire Associate Dealers are licensed to use the Canadian Tire Trademarks owned by the Complainant pursuant to the provisions of a standard form of dealer agreement.

The Respondent has established a website at “www.canadiantirebargain.com”. The website located at “www.canadiantirebargain.com” displays advertising links sponsored by Ditto Domains, which link to a large variety of websites, some of which offer products or services offered by the Complainant. A copy of the pages contained at the website, including the metatags, as downloaded and printed on September 6, 2006, has been provided to the Panel.

The Respondent has also established a website at “wwww.canadiantirecatalogues.com”. The Domain servers for this website are the same servers as for “www.canadiantirebargain.com”. The “www.canadiantirecatalogues.com” Internet website displays advertising links sponsored by Ditto Domains, which link to a large variety of websites featuring catalogue sales, some of which offer products or services offered by the Complainant. A copy of the pages contained at the website, including the metatags, as downloaded and printed on September 6, 2006, has also been provided to the Panel.

The Respondent has also established a website at “www.canadiantirediscounters.com”. The Domain servers for this website are the same servers as for “www.canadiantirebargain.com”. The “www.canadiantirediscounters.com” Internet website displays advertising links sponsored by Ditto Domains, which link to a large variety of websites, many of which offer products or services offered by the Complainant. A copy of the pages contained at the website, including the metatags, as downloaded and printed on September 6, 2006, have also been provided to the Panel.

By a fax dated November 21, 2005, Cassels Brock & Blackwell LLP, on behalf of the Complainant, wrote to Moniker Privacy Services (“Moniker”) and indicated, amongst other things, that unless the registrations of the disputed domain names were transferred to the Complainant and all use of the disputed domain names discontinued, proceedings would be instituted. It was also indicated that Canadian Tire was prepared to attempt to resolve the matter if prompt cooperation was received relating to the transfer of the domain name registrations. By email dated December 4, 2005, Moniker advised that it was not the legal owner of the disputed domain names, and that the owners were using Moniker’s privacy services. Moniker indicated that it would forward the letter of November 21, 2005 to the Registrant. In the absence of any response, additional letters where sent to Moniker on December 14, 2005, January 19, 2006, and February 13, 2006. Moniker has not responded substantively to any of these communications, other than emails dated January 19, 2006, and February 14, 2006, advising that it had forwarded the letters to the legal owner. Copies of these letters and emails have been provided to the Panel.

On March 13, 2006, and March 29, 2006, Cassels Brock & Blackwell LLP wrote to Moniker indicating that, if they were unable to contact the legal owner, or if they did not receive a response to the previous letters, there would be no alternative but to institute proceedings under the Uniform Domain Name Dispute Resolution Policy showing Moniker as the Respondent. Copies of these letters have also been provided to the Panel.

By a letter dated July 27, 2006, Cassels Brock & Blackwell LLP wrote to Moniker again, indicating that, in the absence of any response they had been instructed to institute proceedings under the Uniform Domain Name Dispute Resolution Policy showing Moniker as the Respondent, and inviting Moniker to disclose the name of the owner before the complaint was issued. A copy of this letter has also been provided to the Panel.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

Pursuant to section 19 of the Canadian Trade-marks Act, R.S.C. 1985 c T-13, the registration of a trademark in respect to wares or services gives the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect to those wares or services.

A potential customer of the Complainant’s products or services would, on being presented with the disputed domain names, reasonably believe that the websites were operated by or on behalf of the Complainant in connection with the Complainant’s business. See, for example, Sociйtй des Produits Nestle SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954.

The disputed domain names are <canadiantirebargain.com>, <canadiantirecatalogues.com> and <canadiantire-discounters.com>. The disputed domain names consist of the words “Canadian” and “tire”. As such, the entirety of the mark CANADIAN TIRE is included in each of the Domain names. See, for example, Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyers, WIPO Case No. D2001-0032.

Moreover, the Complainant is the owner of the domain name <canadiantire.com>. The addition of the generic terms “bargain”, “catalogues” and “discounters” is not sufficient to render a domain name dissimilar. See, for example, Chanel, Inc. v. Cologne Zone., WIPO Case No. D2000-1809, Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.

A2. The Respondent has no rights or legitimate interests in respect of the domain names. (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant states that the use of the Canadian Tire Trademarks has 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. See, for example, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Victoria’s Secret, et al. v. Atchinson Investments Ltd., NAF Case No. 96496.

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 them to apply for or use the disputed domain names.

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. See, for example, Motorola Inc. v. Newgate Internet Inc., WIPO Case No. D2000-0079.

A3. The domain names were registered and are being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

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 names. 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 contends that the Respondent registered the disputed domain names in bad faith.

The disputed domain names have been registered and are being used with the intention of attracting, for commercial gain, internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s Canadian Tire Trademarks as to the source, sponsorship, affiliation or endorsement of the Complainant of the Respondent’s websites. (Paragraph 4(b)(iv) of the Policy and see Nokia Corporation v. Phonestop, WIPO Case D2001-1237; and Bayerische Motoren Werke AG v. DLR, WIPO Case D2001-1231). It is inconceivable that at the time of the registration of the disputed domain names that the Respondent was not aware of the widely known trademark CANADIAN TIRE linked to over 460 associate dealers across Canada.

The Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar, and its reluctance to provide any verification to the requests of the WIPO Arbitration and Mediation Center are additional examples of bad faith conduct. See, for example, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108; and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not file a Response.

 

6. Discussion and Findings

To qualify for cancellation or transfer of a domain name, a Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identity or Confusing Similarity

It has been held in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain names incorporate the Complainant’s CANADIAN TIRE Trademarks, which are owned and have been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its services and related products for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s CANADIAN TIRE Trademarks are widely known to and have a good reputation in the Complainant’s fields of business as described above. Thus, there is a clear misuse and infringement on the part of the Respondent of the Complainant’s widely known trademarks and such use is also in breach of the Policy.

The Panel agrees with the Complainant’s contention that the addition of the words “bargain”, “catalogues” and “discounters” are purely descriptive and, for this purpose, add no distinctiveness or source of origin elements whatsoever to the disputed domain names, which essentially incorporate the Complainant’s widely known CANADIAN TIRE Trademarks (see F. Hoffmann-La Roche AG v. Stoyan Stoyanov, WIPO Case No. D2006-0197 and also other WIPO Cases cited above by the Complainant). Additionally, as was held in Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, the use of these descriptors would appear to increase the likelihood of confusion in the present case because they may be considered references to Complainant’s business.

In view of this, the Panel finds that the domain names registered by the Respondent are confusingly similar to the CANADIAN TIRE Trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration, substantial financial investment in and promotion of these trademarks, as well as exclusive commercial use of the same for many years, for the purposes of its business.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. Indeed, in view of the Complainant’s widely known and long-established CANADIAN TIRE trademarks and its services and related products widely sold under that brand, the Respondent must have known, when registering the disputed domain names, that the Respondent could not have claimed any such rights or interests. This is re-enforced by the addition by the Respondent of the ‘descriptors’ “bargain”, “catalogues” and “discounters” to the Complainant’s CANADIAN TIRE trademarks as part of the disputed domain names, in an attempt, which, as mentioned above, fails, to make these domain names distinctive and different from such mark.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain names for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known business carried on by the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain names or that it is making a legitimate non-commercial or fair use of the domain names. In fact, as regards the latter point, the Respondent is offering for sale on its website services and products which are in competition with those of the Complainant.

Thus, the Respondent’s competitive use of the infringing domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as held in Yahoo! Inc. v. Dkal (NAF FA0402000238650).

Neither is there any evidence that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely known CANADIAN TIRE Trademarks as part of the disputed domain names. Indeed, the Respondent is not one of the Complainant’s Canadian Tire Associate Dealers who are licensed to use the CANADIAN TIRE Trademarks owned by the Complainant pursuant to the provisions of a standard form of dealer agreement.

Also, the adoption by the Respondent of domain names confusingly similar to the Complainant’s CANADIAN TIRE Trademarks inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademarks. Furthermore, in previous WIPO UDRP decisions involving the Complainant in Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. carrying on business as Par5Systems, WIPO Case No. D2000-0985; Canadian Tire Corporation, Limited v. None and Steve Carriйre, WIPO Case No. D2002-0461; Canadian Tire Corporation, Limited v. Mike Rollo, WIPO Case No. D2002-1069; Canadian Tire Corporation, Limited v. Juancho Feliciano, WIPO Case No. D2005-0375; and Canadian Tire Corporation, Limited v. Joey Man, WIPO Case No. D2006-0671, it was found that the Complainant’s 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 the impression they were associated with the Complainant. In other words, in the present case it may be inferred that the Respondent is seeking to trade for commercial gain on the good name and reputation of the Complainant’s business and its trademarks and unfairly attracting to its own business the substantial goodwill that the Complainant has established over many years in its trademarks, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain names, is unfairly trading on the Complainant’s valuable goodwill established in its CANADIAN TIRE Trademarks over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain names would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s fame and notoriety in its business fields. In fact, as was pointed out in paragraph 6.8 of the Decision in Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288, no claim for bona fide use of a domain name can be made “…when a respondent uses a disputed domain name confusingly similar to an invented mark in which a complainant has rights and [the respondent] uses that disputed domain name to redirect internet users to a commercial website selling the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity”.

Again, by registering and using the domain name incorporating the Complainant’s CANADIAN TIRE Trademarks, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which appears to be the case.

Indeed, using someone else’s widely known trademark to divert Internet users and consumers to websites offering some of the same products and services of the Complainant and others that compete with those of the Complainant and benefiting directly and indirectly from so doing can hardly be described as acting in good faith.

Furthermore, the Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar and the Respondent’s lack of openness with the Center, as described above, constitute, in the view of the Panel, further evidence of bad faith on the part of the Respondent. See the WIPO UDRP cases cited above by the Complainant in support of this contention and also the case of Marian Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002-0687, in which it was noted that the use of an account masking function to hide the respondent’s identity is evidence of bad faith. Certainly this is so in the present case in the absence of any explanation or justification whatsoever by the Respondent, of which none has been forthcoming, for keeping its identity and personal details confidential (see the pertinent comments made by the sole panelist on this point in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108).

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate or provide any justification for its actions in these proceedings, in the view of the Panel, is also an indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.

 

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 names <canadiantirebargain.com>, <canadiantirecatalogues.com> and <canadiantirediscounters.com> be transferred to the Complainant.

---

Ian Blackshaw
Sole Panelist

Dated: December 12, 2006