WIPO Domain Name Decision D2009-0828 for canadianttire.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd. Case No. D2009-0828 1. The Parties

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

The Respondent is Swallowlane Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar

The disputed domain name is registered with R Corp. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2009. On June 23, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On June 25, 2009, R Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 July 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 24, 2009.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 29, 2009. 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

Canadian Tire Corporation Limited is one of Canada's largest publicly traded companies and operates an inter-related network of businesses engaged in automotive parts, accessories, services, sports, leisure products and home products.

According to the documents submitted with the Complaint, the Complainant states that it is the owner of the following trademarks, for which it has provided copies:

- Canadian Trademark CANADIAN TIRE, No. TMA279,853 registered on May 27, 1983;

- Canadian Trademark CANADIAN TIRE + logo, No. TMA469,998 registered on January 29, 1997.

These trademarks have been used by the Complainant since at least 1927.

The disputed domain name was registered on August 31, 2008, with R Corp. and is currently being held by the Respondent.

The Respondent has used the domain name at issue to resolve to a parking page mostly displaying commercial links in the field of tires. 5. Parties' Contentions A. Complainant

The Complainant has put forth the following legal and factual contentions.

At the time when the Complainant discovered the registration of the disputed domain name, it was registered by another registrant. Complainant sent a cease-and-desist to the former registrant which offered to sell the domain name for USD 500.00. Later, the Complainant noticed that the domain name was now registered by the Respondent and sent to him a cease-and-desist letter to which the latter never answered despite several reminders.

The disputed domain name incorporates the Complainant's trademark in its entirety with the addition of the letter “t” between the words “canadian” and “tire”. This addition should not be taken into account as it is a common mistake that Internet users might do.

The Complainant points out that it has established valuable reputation and goodwill in association with the CANADIAN TIRE trademark. It mainly communicates with its customers 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.

There are over 473 Canadian Tire stores in Canada, which employ over 50,000 Canadians.

The Complainant asserts that the Respondent is neither a licensee of the Complainant, nor is it otherwise authorized to use any of the Complainant's trademarks.

The disputed domain name directs to a parking page displaying commercial links pointing towards the Complainant's products as well as competitive products. Therefore the Complainant argues that the Respondent registered the disputed domain name in order to take advantage of the Complainant's trademark reputation and to obtain commercial gain.

As for bad faith registration and use, according to Complainant, there is no doubt that, on the date of registration of the domain name Respondent was aware of the Complainant's CANADIAN TIRE trademark and products.

Given the content of the website, the Complainant believes that it is obvious that the purpose for registering the disputed domain name was to attract Internet users by creating a likelihood of confusion due to the similarity to its trademarks, to make a commercial profit. B. Respondent

The Respondent did not reply to the Complainant's contentions and is therefore in default. 6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the rightful owner of the Canadian trademarks No. TMA279, 853 registered on May 27, 1983 and No. TMA469, 998 registered on January 29, 1997 and that both trademarks have been duly renewed.

A further aspect that needs to be assessed is whether there is confusing similarity between the trademark and the disputed domain name. The disputed domain name fully incorporates the Complainant's trademark CANADIAN TIRE with the addition of the letter “t” in between the words “canadian” and “tire”.

In light of previous UDRP decisions, the Panel considers that the mere addition of a letter in the domain name, such as “t” in this case, does not alleviate the likelihood of confusion. In fact, the distinctive element of the Respondent's domain name remains Complainant's trademark and both a visual and aural comparison between the trademark and the domain name supports the assertion that the domain name is confusingly similar to the trademark (Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303 and AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447).

It has already been held that the mere addition of one letter can be defined as a case of “typosquatting”, namely a conduct that aims at reaching Internet users that would misspell the name of a certain domain name (Kijiji International Ltd. v. Fookin Ventures,WIPO Case No. D2006-0840; VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Yahoo! Inc. and GeoCities v. Data Art Corp. et al.,WIPO Case No. D2000-0587 and Expedia, Inc. v. Alvaro Collazo,WIPO Case No. D2003-0716).

If it was not for the adjunction of the letter “t”, the domain name would be identical to the Complainant's trademark.

Moreover, in previous UDRP decisions the mere incorporation of a trademark in its entirety has been found to be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered trademark (AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 and Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253).

Another difference between the trademark CANADIAN TIRE and the disputed domain name is the adjunction of “.com”. Such an adjunction is due to the current technical requirements of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant's trademark (New York Life Insurance Company v. Arunesh C. Puthiyoth,WIPO Case No. D2000-0812; Accor S.A. v. ,WIPO Case No. D2007-1257 and Telstra Corp Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the trademark CANADIAN TIRE owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name:

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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.”

The Panel believes from the record that there is no relationship between the Respondent and the Complainant and that the Respondent is neither a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark.

Furthermore, several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden shifts to the respondent to prove its rights or legitimate interests in the domain name (see Sinbar v. Forsyte Corporation,WIPO Case No. D2008-1667; Southcorp Limited v. Frontier Direct Pty Ltd,WIPO Case No. D2004-0949 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753).

The Panel considers that the fact that the disputed domain name directs towards a parking page displaying sponsored links does not constitute a bona fide offering of goods and thus it is another indication that the Respondent lacks of rights or legitimate interests (See Robert Bosch GmbH v. Asia Ventures, Inc. –WIPO Case No. D2005-0946, Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd. CaseWIPO Case No. D2004-0088.).

In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests with respect to the disputed domain name. The Panel's opinion is further corroborated by the lack of a Response by the Respondent in these proceedings as well as the Panel's findings further below.

Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

Both conditions enunciated in paragraph 4(a)(iii) are cumulative, as stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001). Consequently, the Complainant must clearly show that: (a) the domain name was registered by the Respondent in bad faith and, (b) the domain name is being used by the Respondent in bad faith. a. Registered in Bad Faith

The domain name is composed by the Complainant's trademark and the mere addition of the letter “t”.

As the Complainant rightfully points out, it has been established by previous UDRP decisions that Complainant's trademark enjoys a reputation throughout Canada and has been the object of extensive use since as early as 1927 (Canadian Tire Corporation, Limited v. Mario Koch,WIPO Case No. D2008-1788; Canadian Tire Corporation, Limited v. Digi Real Estate Foundation,WIPO Case No. D2006-117 and Canadian Tire Corporation, Limited v. None and Steve Carrière,WIPO Case No. D200-0461).

However, neither the former registrant nor the Respondent is located in Canada. In the present circumstances, this has little bearing in the present decision in so far as the Panel has a suspicion of cyberflying, which is the conduct whereby a domain name is transferred to different owners in order to circumvent the trademark rights of the complainant.

In fact, the Panel has come across different decisions where the former registrant was involved and notably one where it transferred the domain name during a UDRP procedure (see NAF NAF v. Hostmaster Hostmaster,WIPO Case No. D2007-1175).

Several UDRP decisions have already held that cyberflying is an indication of bad faith (CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints,WIPO Case No. D2007-0407).

Moreover, when the domain name was transferred to the Respondent, it ought to verify whether it was infringing any third parties trademarks.

Besides, in previous UDRP decisions, panels have considered that in certain circumstances when a complainant's trademark is well-known, the respondent's bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”).

Furthermore, it seems clear to the Panel that the Respondent has purposely registered the domain name (adding the “t” to the Complainant's trademark) betting on the fact that Internet users would mistype the Complainant's trademarks. Consequently, it is reasonable to infer that the Respondent did not ignore the existence of Complainant's trademark when he registered the disputed domain name.

These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent. b. Used in Bad Faith

In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the domain name was registered in bad faith, it is also necessary to prove that the domain name is being used in bad faith.

The disputed domain name leads to a parking page displaying various sponsored links mostly in the field of tires. The Complainant's products are named on the website along with competitor's products. The wording as well as the content posted on the domain name is in this Panel's view very likely to mislead Internet users which might believe that the Respondent is somehow affiliated to the Complainant and that it is legitimately authorized to sell its products online.

The fact that the disputed domain name resolves to a parking page in this case confirms the Respondent's bad faith because it links to a website selling the Complainant's product but also competing ones. It is now well-established that the use of a parking page in this manner is indicative of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; Roust Trading Limited. v. AMG LLC,WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267 and Sports Saddle, Inc. v. Johnson Enters,WIPO Case No. D2006-0705.

As a result, the Panel finds that the domain name has been registered and is being used in bad faith. Therefore, the Panel considers that the conditions set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.

Nathalie Dreyfus
Sole Panelist

Dated: August 10, 2009

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