WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Canadian Tire Corporation, Limited v. Mario Koch Case No. D2008-1788 1. The Parties
The Complainant is Canadian Tire Corporation, Limited, Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is Mario Koch, Ingolstadt, Bayern, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2008. On November 21, 2008, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On November 26, 2008, UK2 Group Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 2, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. On December 11, 2008, the Respondent sent an email communication to the Center replying to the Complaint.
On December 17, 2008, the Complainant filed a Supplemental filing replying to the Respondent's email of December 11, 2008.
While the Respondent's email of December 11, 2008, could be considered deficient since it was not followed by a signed response in writing, with its corresponding copies, in view of the circumstances of the case, a broad interpretation of the Respondent's right to be heard is appropriate, and without diminishing the terms of the Policy and the Rules, the Panel will consider the Respondent's communication.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 30, 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
The Complainant owns Canadian trademark registrations for CANADIAN TIRE, No. TMA279,853, registered on May 27, 1983, and No. TMA469,998, registered on January 29, 1997.
The Complainant uses the trademark CANADIAN TIRE since at least 1927 in connection with the selling of vehicular spare parts including tires, tools, and accessories, among others.
The website “www.” to which the disputed domain name resolves has pay-per-click links that redirect Internet users to other online locations offering competing services to the ones rendered by the Complainant.
The Respondent registered the disputed domain name on January 23, 2007. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
The Complainant owns Canadian trademark registrations for CANADIAN TIRE, No. TMA279,853, and No. TMA469,998, which has been used and is being used in Canada since at least 1927 in connection with the selling of vehicular spare parts including tires, tools, accessories and maintenance and service supplies; the selling of hardware, house wares, household goods, and sporting goods.
The Complainant has established a very valuable reputation and goodwill in association with the CANADIAN TIRE trademark.
The Complainant operates its principal website through the domain name . The Complainant also contends that currently, more than 21,000 products can be browsed in its website and that consumers can purchase these products directly online for delivery to their homes or to a Canadian Tire associate store.
The Complainant also owns the domain names and .
There are over 473 Canadian Tire stores in Canada, which employ over 50,000 Canadians.
In addition, the Complainant contends that in previous UDRP proceedings which it has listed in the Complaint the panels have found that the CANADIAN TIRE trademarks are pervasive in Canada and that other persons or entities would not choose identical or confusingly similar domain names unless they are seeking to create the impression that they are associated with the Complainant.
Further, the Complainant explains that in August 2006, it initiated proceedings under the UDRP with respect to the same disputed domain name and that on October 24, 2006, the panel appointed in such case issued a decision ordering that the disputed domain name be transferred to Canadian Tire Corporation Limited.
In the absence of the registrar's compliance with the panel's order of transferal, on October 9, 2006, the Center wrote to the registrar of the domain name at that time regarding the matter.
It appears that the registrar allowed the disputed domain name to expire and deleted it from its system on October 26, 2006. The matter was investigated by the Center and subsequently by ICANN, but the disputed domain name was not transferred by the concerned registrar to the Complainant.
Further, the Respondent registered the disputed domain name on January 23, 2007, using the services of T.
After being contacted by T's Compliance Officer and being informed of the above-mentioned situation, the Respondent in this case refused to transfer the disputed domain name to the Complainant and rather informed the counsel representing the Complainant that would be prepared to transfer the disputed domain name for the amount of USD 2,000.
The website “www.” to which the disputed domain name resolves has advertisements primarily for tires and is directed to Canadian consumers given the nature of the website and the fact that it refers to Toronto Tire Dealers and Tires in the Greater Toronto Area (“GTA”).
The majority of the links incorporated in the website “www.” point, directly or indirectly, to other websites that sell tires.
The disputed domain name is for sale through the well-known domain name action website S.
Consumers may reasonably believe that the Respondent's website is operated by or on behalf of the Complainant in connection with the Complainant's business.
The disputed domain name is confusingly similar to the CANADIAN TIRE trademark. The fact that the disputed domain name incorporates the term “Canadian” instead of “Canada” has no weight, particularly when it is not unusual for people to mistakenly refer to Canadian Tire as Canada Tire.
The Complainant has not licensed or otherwise permitted the Respondent to use the CANADIAN TIRE trademark or any other marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain name .
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, the Complainant contends that it is difficult to conceive a plausible situation in which the Respondent would have been unaware of the Complainant's trademark CANADIAN TIRE at the time of registration of the disputed domain name. Therefore, the Complainant contends that the Respondent has registered the disputed domain name in bad faith.
Moreover, the Respondent is using the disputed domain name with the intention of attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement.
In that connection, the Complainant contends that the Respondent is receiving click-through fees each time an Internet user clicks in the different links incorporated in the website “www.”.
The Respondent has registered the disputed domain name for the purpose of selling it for valuable consideration in excess out-of-pocket costs.
Engaging in this type of behavior is not unknown to the Respondent, as successful UDRP proceedings have been instituted against him concerning different domain names. B. Respondent
The Respondent contends the following:
The Complainant's trademark CANADIAN TIRE is only registered in Canada and it is unknown in Germany, where the Respondent has stated to be domiciled.
The Respondent also contends that according to German Trademark Law, the Complainant's CANADIAN TIRE trademark has no lawful legitimation in Germany where it has not been registered.
Moreover, the Respondent contends that he has registered the disputed domain name on January 23, 2007, after he found it on a list of deleted domain names.
Further, the Respondent contends that it seems that the Complainant is willing to prevent third parties from registering any domain name containing the terms “cantire”, “canadiantire” or “canadatire”, adding that after such domain names are transferred to it through decision of the Center, the Complainant does not use them what in his opinion would constitute a reverse hijacking.
The Respondent's main website “www.” only targets Canadian customers and is currently offering Christmas gifts and toys but no tires on first impression. 6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed 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. A. Complainant's Supplemental Filing
The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The Panel will not consider the Complainant's Supplement filing as it does not provide new evidence or arguments that may be determinant to render a decision in the case. B. Identical or Confusingly Similar
The Complainant has filed relevant evidence showing that it owns Canadian registrations for CANADIAN TIRE, No. TMA279,853 and No. TMA469,998.
The disputed domain name is composed by the combination of the terms “canada” and “tire”.
The terms “canada” and “canadian” are very close both graphically and in meaning and the small differences between them are not sufficient to avoid the likelihood of confusion between the disputed domain name and the Complainant's trademark CANADIAN TIRE.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. C. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent.
Although the Respondent has responded to the Complainant's contentions, the Panel finds that it has not made such a showing.
Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.
The Complainant has presented evidence that the disputed domain name has pay-per-click links that redirect Internet users to other online locations offering competing services to the ones rendered by the Complainant.
Therefore, the Panel finds that the Respondent is attracting for commercial gain, Internet users to its website and to the Complainants' competitors' websites. In the circumstances, such use cannot be considered a bona fide use, or fair or noncommercial use.
Moreover, the Panel notes that as per the printouts of the website “www.” that were filed by the Complainant and which authenticity has not been denied by the Respondent, the disputed domain name is for sale through the well-known domain name auction site S, what reinforces the idea that the Respondent has neither rights nor legitimate interests in the disputed domain name.
In addition, there is no evidence showing that before any notice of the dispute, 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; or that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.
For these reasons and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third and last element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has filed relevant evidence showing that it owns Canadian registrations for CANADIAN TIRE, No. TMA279,853 and No. TMA469,998, which has been used in Canada since 1927, none of what has been denied by the Respondent.
The Complainant has also filed relevant evidence showing that the website “www.” is directed, among others, to Canadian consumers given the nature of the website and the fact that it refers to Toronto Tire Dealers and Tires in the Greater Toronto Area (“GTA”).
Therefore, the Panel finds that the Respondent in all likelihood must have been aware of the trademark CANADIAN TIRE before registering the disputed domain name , which evidences his bad faith registration.
Moreover, the Complainant has shown to the Panel's satisfaction that the Respondent offered the Complainant to transfer the disputed domain name for the amount of USD 2,000, and that the disputed domain name is for sale through the well-known domain name auction site S.
The Respondent could have denied such offers for sale but has failed to do so.
In absence of a rebuttal by the Respondent and in accordance with the uncontested documents filed by the Complainant, the Panel finds that, by offering to sell the disputed domain name to the Complainant for valuable consideration in excess of documented out-of-pocket costs, the Respondent is using the disputed domain name in bad faith.
Furthermore, as stated by the Complainant and apparent by the printouts of the website to which the disputed domain name resolves, the Panel finds that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement.
For these reasons, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith, and that the Complainant has therefore made out the third element of the case. 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.
Miguel B. O'Farrell
Sole Panelist
Dated: January 8, 2009
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