WIPO Domain Name Decision D2009-1497 for canadianusedtire.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Canadian Tire Corporation, Limited v. Shahrokh Sherzady Case No. D2009-1497 1. The Parties

The Complainant is Canadian Tire Corporation, Limited of Ontario, Canada (“Canadian Tire”) represented by Cassels Brock & Blackwell, LLP of Canada.

The Respondent is Shahrokh Sherzady of Ontario, Canada. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2009. On November 5, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 5, 2009, eNom 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 November 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2009.

The Center appointed Cherise M. Valles as the sole panelist in this matter on December 9, 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

The Complainant, Canadian Tire, is well-known in Canada in connection with automotive products, including tires, accessories and service supplies, operation of a business dealing in the sale of vehicular parts, tools and accessories, servicing and maintenance of vehicles, selling of houseware, hardware, household goods and sporting goods of others. The Complainant is the registered owner of numerous Canadian trade mark registrations for trade mark CANADIAN TIRE. The trade mark, CANADIAN TIRE, was registered as TMA279,853 by the Canadian Intellectual Property Office on May 27, 1983 (Annex D), although the trade mark was used as early as 1927. The trade mark was registered pursuant to subsection 12(2) of the Trade-marks Act which permits a trade-mark that is not prima facie registrable to be registered upon showing that it has been used in Canada so as to have become distinctive. The trade mark, CANADIAN TIRE, DESIGN was registered on January 29, 1997 as TMA469, 998.

The disputed domain name was registered by Shahrokh Sherzady on or about August 22, 2007 by eNom. The website offers for sale auto parts, new and used tires, snow tires and rims. 5. Parties' Contentions A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the registered owner of the CANADIAN TIRE in both written and design format. Copies of the Complainant's trade mark registration certificates were provided as Annex D to the Complaint. The Complainant is the registrant of the domain name , which is visited, on average, by 150,000 individuals a day. The Complainant asserts that the disputed domain name, is confusingly similar to the Complainant's trademarks in the light of the fact that it incorporates this trademark in its entirety. Moreover, the addition of the descriptive term “used” between the terms “canadian” and “tire” do not sufficiently distinguish the disputed domain name from that of the Complainant's registered trademark.

- The Respondent has no rights or legitimate interests with respect to the disputed domain name.

The Complainant states that the CANADIAN TIRE trademark is so pervasive in Canada, having been used since 1927, that other persons would not legitimately choose identical or confusingly similar names unless they were seeking to create an impression of an association with Canadian Tire. The Complainant has the exclusive rights to the CANADIAN TIRE trademarks and has not licensed or otherwise permitted the Respondent to apply for or use the disputed domain name.

- The domain name was registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on August 22, 2007, the Respondent undoubtedly had knowledge of the Complainant's well-known Canadian Tire trademarks. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with those well-known marks. Bad faith may be found where the registrant tarnishes the trademark of the Complainant by associating the Complainant's trademarks with the Respondent's misleading activities. The Complainant asserts that the Respondent is, therefore, using the Complainant's mark in bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy. B. Respondent

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

The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:

(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and,

(c) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent, having failed to respond in these proceedings is in default, and the Panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.

The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark CANADIAN TIRE. The Complainant has submitted evidence of its trademark registrations in Canada in Annex D of the Complaint. The disputed domain name differs from the Complainant's trademark with the addition of the word “used” between “canadian” and “tire”. Thus, the disputed domain name incorporates the Complainant's mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. The addition of the generic and non-distinctive term “used” does not detract from the confusing similarity. See, Koninklijke Philips Electronics N.V. v Lewis & Clark Inc.,WIPO Case No. D2001-1344.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed 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 legitimate noncommercial 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure.

The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's well-known CANADIAN TIRE trademarks. The trademark “CANADIAN TIRE” is pervasive in Canada. The Complainant, who has registered the trademark CANADIAN TIRE has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark CANADIAN TIRE in the disputed domain name.

The Respondent has not attempted to make any bona fide or legitimate non-commercial or fair use of the disputed domain name. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant's well known mark, and due to user confusion, will generate a lot of traffic by mistake.

The Respondent is not an authorised sales or service agent of the Complainant. See; Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited supra. The Panel finds that, in these circumstances, the Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

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

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

(ii) you have respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or

(iv) by using the domain name, you have 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 your web site or location or of a product or service on its website or location.

The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain name in order to direct traffic to a website that offers for sale auto parts, new and used tires, snow tires and rims. The Complainant offers for sale similar products. In the light of the widespread knowledge of CANADIAN TIRE in Canada, in the Panel's view it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully d/b/a Advcomren,WIPO Case No. D2000-0021. This Panel is of the view that the Respondent registered the disputed domain name with full knowledge and for the express purpose of re-directing Internet users to its site selling new and used tires. Thus, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website in order to create a likelihood of confusion with the Complainant's well-known trade mark.

The evidence in this dispute, in the Panel's view, supports the conclusion that the Respondent sought to profit from, or exploit the CANADIAN TIRE trademarks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and Rule 15, the Panel orders that the domain name be transferred to the Complainant.

Cherise M. Valles
Sole Panelist

Dated: December 20, 2009

Full & Egal Universal Law Academy