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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation Limited v. CK Aspen

Case No. DTV2007-0015

1. The Parties

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

The Respondent is CK Aspen, of Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <canadiantire.tv> (the “Domain Name”) is registered with eNom, Inc (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007, against Whois Privacy Protection Service, Inc., the then named registrant for the Domain Name according to the details provided by the Registrar’s Whois database.

3.2 On December 17, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On December 17, 2007, the Registrar transmitted by email to the Center its verification response disclosing that the underlying registrant for the Domain Name was one “CK Aspen” and providing contact information for the registrant, which differed from the named Respondent and contact information in the Complaint.

3.3 The Center sent an email communication to the Complainant on December 18, 2007 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 19, 2007 by e-mail and on December 24, 2007 in hard copy. 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”).

3.4 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 December 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 17, 2008.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 23, 2008. 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

4.1 The Complainant is a company registered under the laws of Ontario, Canada. Its (or its predecessors in business’) history dates back to the 1920’s. It began as a dealer in automotive parts, but is now engaged in three core areas of activity; i.e. automotive related products and services, sports and leisure products, and home products.

4.2 There are 460 Canadian Tire dealer owned and operated stores in Canada. The Complainant sells its wares to these stores, which in turn sell them to the public. The Complainant also operates a website from the domain name <canadiantire.ca>, which is among Canada’s five busiest e-commerce sites.

4.3 It is said that nine out of ten adult Canadians shop at Canadian Tire at least twice a year and 64% of Canadians shop at Canadian Tire each month.

4.4 The Complainant is the owner of various registered trade marks that incorporate the words “Canadian Tire”. These include:

(a) Canadian registered trade mark no. TMA 279,853 for the words “Canadian Tire”, filed on June 22, 1982;

(b) Canadian registered trade mark no. TMA 469,998 filed on August 30, 1994 in respect of the following design:

; and

(c) Canadian registered trade mark no. TMA 291,786 for the words “Canadian Tire”, filed on 28 October 1982. The mark is subject to a disclaimer in respect of the exclusive use of the word “Canadian”.

4.5 The Respondent would appear to be an individual with an address in Beverly Hills, California. He registered the Domain Name on March 16, 2007.

4.6 At all relevant times the Domain Name has resolved (and at the date of this decision, continues to resolve) to a website operating from the domain name <carsondaly.tv>. This is a website that purports to be operated by Carson Daly, a US television presenter. That website predominantly comprises links to various video clips hosted on “YouTube” but also contains some advertisements.

4.7 On October 2, 2007, the Complainant’s Canadian solicitors sent a letter to the Respondent at the address given by a Whois search in relation to the Domain Name by the Registrar. In that letter the Complainant’s solicitors demanded that the Domain Name be transferred into the name of the Complainant. Follow up letters were sent on October 12 and 25, 2007. The Respondent did not respond to these letters.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

5.1 The Complainant contends that the Domain Name is identical to the Complainant’s trade marks.

Rights or legitimate interests

5.2 The Complainant contends that its trade marks have been “so pervasive in Canada for many years” that the Respondent must have chosen the Domain Name “to create an impression of association with [the Complainant]”.

5.3 It also asserts that is has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trade marks, not has it licensed or otherwise permitted the Respondent to register the Domain Name.

5.4 It is claimed that the use of the Domain Name does not constitute a “bona fide offer of goods or services”, since the Respondent does not have any registered or common law rights in the mark. It is further claimed that the “overwhelming probability” in this case is that the redirection of traffic to the “www.carsondaly.tv” website has been “for a fee” and that such activity does not constitute “a bona fide offering of such a service”.

Bad faith registration and use

5.5 The Complainant states that it is “inconceivable at the time of registration of the [Domain Name] that the Respondent was not aware of” the CANADIAN TIRE mark.

5.6 The Complainant contends that the Respondent is using the Domain Name to direct traffic to the “www.carsondaly.tv” website by creating confusion with the Complainant’s trade marks. It accepts that Internet users when they reach that website may “discover the unlikelihood of a business relationship between the Complainant and the Respondent”, but that nevertheless that Respondent will have “gained website traffic” as a result. It contends that paragraph 4(b)(iv) of the Policy (which is said to be relevant here) “does not require a demonstration that the Complainant has suffered or would be likely to suffer harm as a consequence”. It cites in this respect National Football League Properties, Inc and Chargers Football Company v. One Sex Entertainment Co, a/k/a chargergirls.net, WIPO Case No. D2000-0118.

5.7 The Complainant also repeats its contention that the Respondent is likely being paid a fee to redirect Internet traffic in the manner described.

5.8 Lastly, the Complainant contends that “the Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is another example of bad faith”. It cites in this respect 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

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

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.2 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out their case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (para. 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (para. 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (para. 4(a)(iii)).

6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 It is clear that the Domain Name is essentially identical to at least two of the trade marks in which the Complainant has rights. The Domain Name comprises nothing more than the two words “Canadian” and “tire” in combination together with the “.tv” TLD. The Complainant is the owner of Canadian registered trade mark TMA 279,853 which comprises these two words and nothing more. It is also the owner of Canadian registered trade mark TMA 291,786, which also comprises the words “Canadian” and “tire”. This second trade mark is subject to a disclaimer in relation to the exclusive use of the word “Canadian” but this makes no difference since the Domain Name does not use the word “Canadian” exclusively.

6.6 The Domain Name is also confusingly similar to Canadian registered trade mark TMA 469,998, which comprises the words “Canadian” and “tire” in a stylised design.

6.7 Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.8 The Panel accepts the Complainant’s contentions that the Respondent has not been authorised by the Complainant to use the term “Canadian Tire” in any domain name, and it seems clear that the Respondent has no independent trade mark rights in the term.

6.9 The Panel also accepts the Complainant’s contention that the Respondent chose the Domain Name with knowledge of the Complainant’s use of the “Canadian Tire” name. This is the only credible explanation of events given the reputation of the “Canadian Tire” name and the fact that there is no other obvious reason for the Respondent to have chosen these words. The words “Canadian” and “tire” are by themselves ordinary English words, but their combination is suggestive of a company that sells tires in Canada or which sells tires manufactured in Canada. There is no suggestion that the Respondent is engaged in or has some interest in or connection with such business activities. Further, even if he did have such an interest, connection or involvement, given the Complainant’s long standing involvement with the sale of automotive parts, this would of itself suggest that he knew about the Complainant.

6.10 The Panel also accepts that the Respondent’s intention in such circumstances was to divert Internet users looking for information about the Complainant or its business to a website other than the Complainant’s, or in some other manner to take advantage of the reputation that the Complainant has built up in the “Canadian Tire” name.

6.11 The Complainant contends that given the actual use made by the Respondent of the Domain Name the Respondent registered the Domain Name to divert Internet users to the “www.carsondaly.tv” website and that this must have been for a fee. For the reasons that the Panel sets out in greater detail under the heading of “Registered and Used in Bad Faith”, the Panel is unconvinced on the basis of the evidence put before it that the diversion in this case was for a fee. However, so far as the issue of rights or legitimate interests is concerned, this Panel does not think that it matters.

6.12 Paragraph 4(c)(iii) of the Policy gives as an example of rights or legitimate interests, a “legitimate non-commercial 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”. Regardless of whether in this case the Respondent’s motives were commercial, it is difficult to see how the diversion of Internet users that the Respondent is engaged in could be characterised as “legitimate” or “fair”.

6.13 Further there is the fact that in this case the Respondent has chosen to register a domain name that is essentially identical to the trade mark in which the Complainant claims rights. This fact does little to support any claim that the Respondent may have advanced (had it elected to submit a Response) in relation to claiming rights or legitimate interests in this particular Domain Name. In a recent decision (1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461) this Panel held that the use of a domain name that is identical to a mark is unlikely to provide rights or legitimate interests even if the registrant is using the domain name for a genuine non-commercial criticism site. The reasoning in that case is detailed, but at its heart, it contends that the use of a domain name that is identical to a trade mark will usually involve impersonation of the trademark owner, and such impersonation does not provide a legitimate interest even if the domain name is being used to exercise a right of free speech. In the case currently before the Panel, no such free speech arguments arise and consequently there can be even less of a claim to a right or legitimate interest.

6.14. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.15 As the Panel has already explained under the heading “Rights or Legitimate Interests” above, it has formed the view that the Respondent’s intention in this case in registering and using the Domain Name has been to divert Internet users looking for information about the Complainant or its business activities to a website other than the Complainant’s, or in some other manner to take advantage of the reputation that the Complainant has built up in the “Canadian Tire” name.

6.16 The actual use that has been made of the Domain Name by the Respondent to date is to divert Internet users. In the circumstances, the Complainant unsurprisingly claims that the example of bad faith that is given in paragraph 4(b)(iv) of the Policy is most relevant here. This states that the following shall be evidence of bad faith registration and use:

“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location or of a product or service on [the Respondent’s] web site or location.”

6.17 The Complainant contends that even though a diverted Internet user when he reaches the “www.carsondaly.tv” website may quickly conclude that this website has no connection with the Complainant, the conditions of paragraph 4(b)(iv) are still satisfied. For the reasons given by this Panel in ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346, the Panel agrees. The intentional attempt to take advantage of such initial interest confusion will (subject to the commercial gain requirement) usually be sufficient to satisfy the requirements of paragraph 4(b)(iv).

6.18 However, the Complainant’s contention that the requirement of commercial gain is made out here because the Complainant must be receiving a fee, is one with which the Panel has more difficultly in the present circumstances. The fact that a domain name diverts the user to a commercial website operating under a different domain name may often lead to an inference that a respondent is receiving or hopes to receive some form of payment from that diversion. Similar inferences can usually be drawn when the domain name resolves to a “domain name parking page” that contains links to numerous commercial websites.

6.19 Even where the reason for the linkage to a commercial website is less clear, as is the case here, lack of evidence that the respondent is being paid may not matter. As has been held in a number of UDRP cases, the wording of paragraph 4(b)(iv) does not require that the respondent commercially gains, merely that the respondent intends that someone will commercially gain (see, for example, the decisions to this effect in V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301; PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292 and V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992). However, the requirement that the respondent “intends” such advantage is important. Most websites contain hyperlinks to other web sites and the chances are that if one follows their trail they will sooner or later lead to a commercial website. It does not necessarily follow that diversion to that commercial enterprise was intended.

6.20 The difficulty in the current case is that the “www.carsondaly.tv” website is not obviously commercial. It is a website that prima facie appears to have been created using the tools and services of “ChannelME.TV”, which claims to allow people to create their “own .TV channel in minutes”. The “www.carsondaly.tv” “channel” contains very little that suggests that it is a commercial enterprise. It primarily contains links to “YouTube” hosted videos and contains elements that one would expect to see in social networking sites. It does contain some advertisements but no evidence has been put before the Panel to the effect that the person operating the website receives a share of the revenues generated by these advertisements. Even if the “ChannelME.TV” service does share advertising revenue with its users, this still begs the question as to why the Panel should conclude that the generation of revenue either for the Respondent or the operator of the “www.carsondaly.tv” website was the Respondent’s intention in this case.

6.21 Nevertheless, it is difficult to think of a use of the Domain Name by the Respondent that did not in some way take intentional advantage of the reputation that the Complainant has built up in the “Canadian Tire” name. Even if the current use of the Domain Name does not involve commercial advantage for the Respondent, it seems improbable (in the absence of any explanation to the contrary) that the Domain Name was registered without some commercial advantage ultimately in mind. In the circumstances the Panel concludes that the registration and subsequent holding of the Domain Name is in bad faith.

6.22 Comparison with the position in the case of criticism sites may also be instructive here. As the Panel has already explained, it recently held that the registration of a domain name identical to a trade mark in which a complainant had rights for the purposes of a criticism site did not provide a registrant with a “right or legitimate interest”. In the same case (i.e. 1066 Housing Association Ltd. v. Mr. D. Morgan WIPO Case No. D2007-1461) the Panel held that registration of such a domain name was also in bad faith. If one accepts (as this Panel does) that registration of an identical domain name for the purpose of genuine criticism can be in bad faith, it is difficult to see how an identical domain name (such as the one in the present case) that merely resolves to a third-party website could not also be in bad faith.

6.23 The Panel also accepts that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a Domain Name privacy service to hide his identity.

6.24 It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.

6.25 The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the 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, cases cited on this issue by the Complainant.

6.26 Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <canadiantire.tv> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist

Dated: February 5, 2008