WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canadian Tire Corporation, Limited v. domain administrator @ 1111111111
Case No. D2003-0232
1. The Parties
The Complainant is Canadian Tire Corporation, Limited, Toronto, Canada, represented by Cassels Brock & Blackwell, LLP of Canada.
The Respondent is domain administrator @ 1111111111, Montreal, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. dba China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2003. On March 25, 2003, the Center transmitted by email to OnlineNic, Inc. dba China-C a request for registrar verification in connection with the domain name at issue. On March 26, 2003, OnlineNic, Inc. dba China-C 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. The Center 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 March 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on April 24, 2003.
The Center appointed Leon Trakman as the sole panelist in this matter on May 19, 2003. 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 and Parties Contentions
A. Complainant
Complainant is the registered owner of various Canadian trade mark registrations for the trade mark CANADIAN TIRE in written and design form. The registrations owned by Canadian Tire are collectively referred to as the "Canadian Tire Trade Marks". (The Complaint includes copies of these registrations). Complainant has continuously and extensively used the Canadian Tire Trade Marks and has established a valuable reputation and goodwill in association with them.
Complainant is also the registrant of the domain name . Canadian Tire operates its principal web site at . The site portrays products that are representative of Canadian Tire�s three core areas � Home, Automotive and Leisure. Complainants allege that more than 10,000 products can be browsed on its web site. Consumers can purchase these products directly online for delivery to their homes or at Canadian Tire associate stores. On average, more than 30,000 individuals a day visit the web site and it is consistently ranked as one of the most popular Canadian retail web sites.
There are over 451 associate Canadian Tire stores in Canada. Complainant maintains that nine out of ten adult Canadians shop at Canadian Tire at least twice a year, while 40% of Canadians shop at Canadian Tire every week. 91% of Canadians live within the geographic area conveniently serviced by Canadian Tire stores. The stores collectively employ over 28,000 Canadians. Canadian Tire�s annual catalogue is distributed to more than ten and half million households in Canada.
Canadian Tire stores are independently owned and operated by Canadian Tire associate dealers. The Complainant sells various different types of wares to Canadian Tire associate stores that sell them to the public. Canadian Tire associate dealers are licensed to use the Canadian Tire Trade Marks owned by the Complainant pursuant to the provisions of a standard form of dealer agreement.
In a series of previous WIPO Arbitration and Mediation Center Administrative Panel decisions, the Panels found that the Canadian Tire Trade Marks 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. See Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. carrying on business as Par5Systems, WIPO Case No. D2000-0985 (October 19, 2000); Canadian Tire Corporation, Limited v. None and Steve Carriére, WIPO Case No. D2002-0461 (August 6, 2002); and Canadian Tire Corporation, Limited v. Mike Rollo, WIPO Case No. D2002-1069 (January 14, 2003).
In the instant case, Complainant sent an e-mail and letter dated March 15, 2002, to the Respondent and indicated that, unless the registration of the Impugned Domain Name was transferred to the Complainant and all use of the Impugned Domain Name, discontinued, proceedings would be instituted against Respondent. (The Complaint includes a copy of that letter). Respondent did not respond to the letter and failed to transfer the aforesaid domain name to the Complainant.
By e-mail and letter dated October 18, 2002, Complainant wrote to OnLineN, the registrar of the Impugned Domain Name advising that the registration data was incomplete and inaccurate when submitted and asked that the registrar insist on compliance. By e-mail dated October 22, 2002, the Registrar responded indicating that it had requested that the registrant update the information.
By letter dated November 1, 2002, Complainant wrote to OnLineN indicating that since the registration information had not been rectified the registration should be cancelled. By e-mail dated November 12, 2002, the Registrar responded indicating that the Impugned Domain Name had been placed on hold.
In late December of 2002, Complainant learned that the Impugned Domain Name had been renewed. By letter dated December 24, 2002, Complainant wrote to OnLineN inquiring why the registration of the Impugned Domain Name had been renewed. The registrar responded by e-mail on that date indicating that the registrant had renewed the domain name before it had been placed on hold. (Copies of the letters and e-mails were attached to the Complaint).
In January 2003, Complainant became aware that the Respondent�s web site was linked to its web site. It conducted additional investigations and obtained information suggesting that Impugned Domain Name was owned by a particular individual residing in Edmonton, Alberta, Canada. It found that this individual had applied under the Complainant�s affiliate program which allows web site owners to establish links to in exchange for specified commissions. (A copy of the form of application, the actual information submitted and the affiliate agreement was attached to the complaint). That individual�s application did not disclose the existence of the Impugned Domain Name. Complainant wrote to that individual on January 14, 2003, to which it received no response (A copy of that letter was attached to the Complaint). As soon as it became apparent that the Complainant had been misled, it terminated that individual�s affiliate status.
Complainant alleges that the Canadian Tire Trade Marks 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.
Complainants maintain further, that it has not licensed or otherwise permitted the Respondent to use any of its trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the Impugned Domain Name. It contends that, in light of the pervasive use of the Canadian Tire Trade Marks, "it not possible to conceive of a legitimate use by the Respondent of the Impugned Domain Name or believe that the Respondent was unaware of this fact at the time of registration." Accordingly, the Complainant states that the Respondent registered the Impugned Domain Name in bad faith.
Complainant contends that the Impugned 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 web site, by creating confusion with the Complainant�s Canadian Tire Trade Marks as to the source, sponsorship, affiliation or endorsement of the Complainant with the Respondent�s web site. It refers the Panel to Policy, paragraph 4(b); Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237 (December 6, 2001) and Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231 (December 14, 2001).
Complainant maintain that, Pursuant to section 19 of the Trade-marks Act, R.S.C. 1985 c T-13, the registration of a trade mark in respect to wares or services gives the owner of the trade mark the exclusive right to the use throughout Canada of the trade mark in respect to those wares or services.
Complainant adds that the Impugned Domain Name consists of the Complainant�s primary domain name and trade mark with the addition of the letters "www" and is confusingly similar to the Canadian Tire Trade Marks.
Complainant contends further that the addition of the letters "www" which most users associate with the three letters usually followed by a dot at the beginning of a domain name does not reduce or limit the likelihood of confusion and focuses the attention on the words succeeding them. It cites in support, Southwestern Bell Yellow Pages, Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0850 (October 30, 2002); Nike, Inc. v. Alex Nike, WIPO Case No. D2001-1115 (November 7, 2001); Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000).
Complainant maintains that the Respondent has provided no explanation why it has chosen the Impugned Domain Name other than to "typosquat". It argues that a number of WIPO Administrative Panel decisions have concluded that "typosquatting" results in an identical or confusingly similar domain name and is also evidence of bad faith. It cites Guiness Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055 (December 12, 2001), and VoiceStream Wireless Corporation v. Click Five et al., WIPO Case No. D2002-0190 (May 7, 2002).
Complainant concludes that, in addition "the Respondent�s typosquatting is evidence of bad faith in itself."
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel holds that the domain name in issue is confusingly similar to Complainant�s trade marks and domain name. Internet users are likely to associate the use of "canadiantire" in the disputed domain name with the Complainants established and well-known business across Canada. The use of the letters "www" in the domain name in dispute does not sufficiently distinguish it from Complainant�s marks and name. The absence of a dot between "www" and "" are likely to confuse Internet users, encourage them to access Respondent�s site and give rise to "typosquatting". The difference between the use of "com" following "canadiantire" in the disputed domain name and "ca" following "canadiantire" in the Complainant�s domain name is insufficient to materially differentiate between these domain names.
B. Rights or Legitimate Interests
Complainant had established, to the Panel�s satisfaction, a prima facie case that the Respondent had no rights to and no legitimate interest in the disputed domain name.
Complainant has not established that Respondent has actually used the disputed domain name on an ongoing basis for the purpose of promoting an illegitimate activity, such as to trade in goods or services. However, Respondent�s registration of a confusingly similar domain name to the Complainant�s well known mark and name, Respondent�s failure respond to Complainant�s letters and email in the circumstances, and Respondent�s renewal of the domain name, all constitute prima facie evidence that Respondent acquired, retained and renewed the domain name in the absence of a legitimate interest, contrary to paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Respondent�s registration of the domain name constitutes evidence of "typo-squatting." It is evident, given the extensive presence of Canadian Tire across Canada, that Respondent reasonably was aware of Canadian Tire�s brand name and in particular reputation. Using full name "canadiantire" in the disputed domain name clearly was intended to replicate the Canadian tire brand.
The Panel is also persuaded by evidence adduced by the Complainant, that the disputed domain name was owned or operated by an individual who had applied under the Complainant�s affiliate program which allows web site owners to establish links to Complainant�s web site "www." in exchange for specified commissions, that this individual�s application had not disclosed the existence of the disputed domain name and that this individual was self-evidently aware of the Canadian Tire brand name and intended to use that name in bad faith.
This is a clear case of bad faith registration, but not a clear case of bad faith use. In particular, Complainant has not adduced that the disputed domain name was used by the Respondent contrary to letter of paragraph 4(b)(i)(ii) or (iii) of the Policy, "for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant� or a competitor of the complainant," or to prevent the Complainant "from reflecting the mark in a corresponding domain name", "for the purpose of disrupting the business of a competitor," or by "intentionally attempt[ing] to attract, for commercial gain, Internet users to the Respondent�s web site or other on-line location.
The Respondent, nevertheless, has created "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 �" [paragraph 4(b)(iv) of the Policy] through Respondent�s persistent practice of "typosquatting". Such bad faith is also evident in Respondent positioning itself as an affiliate of Canadian Tire for the purpose of securing commissions and in registering and renewing the disputed domain name in disregard of Complainants� written protestations.
"Typosquatting" constitutes evidence of bad faith, but it falls short of bad faith in itself. As a result, the Panel is reluctant to endorse Complainant�s statement that "Respondent�s typosquatting is evidence of bad faith in itself" [emphasis added]. See further e.g. Southwestern Bell Yellow Pages Inc. v. Joshuathan Investments Inc., WIPO Case No. D2002-0850; Nike, Inc. v. Alex Nike WIPO Case No. D2001-1115 and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
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 be transferred to the Complainant.
Leon Trakman
Sole Panelist
Dated: May 22, 2003
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