The Complainant is Canadian Tire Corporation, Limited, in Toronto, Canada, represented by Cassels Brock & Blackwell, LLP, in Canada.
The Respondent is Yuki Lam, in Hong Kong SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 3, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, the Registrar 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 August 9, 2012.
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 August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2012.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on September 17, 2012. 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 states that it is the registered owner of numerous Canadian trademark registrations for the trademark CANADIAN TIRE and variations thereof (hereinafter referred to collectively as “the CANADIAN TIRE trademarks”). Examples of the trademark registrations referenced in the Complaint include:
(i) Canadian Trademark Registration No. TMA279,853 for CANADIAN TIRE with a claim of use dating from as early as 1927 in association with automotive parts, tools, accessories and maintenance and service supplies; operation of a business dealing in the selling of vehicular parts, tools and accessories of others; servicing and maintenance of vehicles; selling of hardware of others; selling of housewares of others, etc;
(ii) Canadian Trademark Registration No. TMA291,786 for CANADIAN TIRE in connection with financial credit services provided through the medium of a credit card, and auto club services (the operation of an association providing to its members assistance in automotive emergency situations etc.). Use of the mark was asserted therein to have commenced since as early as 1984;
(iii) Canadian Trademark Registration No. TMA437,419 for CANADIAN TIRE OPTIONS with a claim of use dating from 1992 in association with the operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders; and
(iv) Canadian Trademark Registration No. TMA641,874 for CANADIAN TIRE FINANCIAL SERVICES with a claim of use dating from 2005 in association with providing credit, charge card and related services; providing banking services of others, etc.
The Complainant asserts that it has continuously and extensively used the CANADIAN TIRE trademarks and has established a very valuable reputation and goodwill in association with them.
The Complainant is the registrant of the domain name which is also the domain name used in relation to its principal website. The Complainant’s website offers more than 21,000 products which include automotive parts, sports and recreation products, home products and tools. These represent the Complainant’s core areas. On average, more than 70,000 individuals a day visit the Complainant’s website. Accordingly, it has been ranked among Canada’s top five busiest e-commerce sites. The Complainant’s website also displays a “Credit Cards” tab which, when clicked, opens a webpage which displays the CANDIAN TIRE trademarks that provides information relating to credit cards offered by the Complainant, including the “Canadian Tire Options MasterCard”, the “Gas Advantage MasterCard” and the “Cash Advantage MasterCard”. Applications for these credit cards can be made via this website.
The Complainant states that there are over 486 retail stores in Canada with an employ of over 50,000 Canadians.
The Complainant has been a party to a number of UDRP decisions in all of which the Complainant was successful.
The disputed domain name was registered on March 27, 2012. The Respondent uses the disputed domain name for its website which displays detailed information about the Complainant and the products and services it offers, particularly offers and expressly discusses the relationship between the Complainant and MasterCard. The website displays the Complainant’s CANADIAN TIRE trademark extensively as well as the Complainant’s CANADIAN TIRE ‘MONEY’ trademark.
The Complainant’s representative wrote to the Respondent on June 27, 2012 and on July 12, 2012, requesting the transfer of the disputed domain name. The Complainant states that it did not receive any response from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant asserts, first, that the disputed domain name is confusingly similar to the CANADIAN TIRE trademarks as it consists of the words “Canadian”, “tire” and “franchise”. The only difference between the disputed domain name and CANADIAN TIRE is the addition of the word “Franchise”.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed name. On this point, the facts put forward in support are:
(i) that the Complainant’s CANADIAN TIRE trademarks have been so pervasive in Canada since 1927 that no other person or entity would legitimately choose an identical or confusingly similar domain name unless they were seeking to create an impression of an association with the Complainant;
(ii) the Complainant has not licensed or otherwise permitted the Respondent to use the CANADIAN TIRE trademarks or to apply for or use the disputed domain name; and
(iii) the use of the disputed domain name which is confusingly similar to the CANADIAN TIRE trademarks does not constitute a bona fide offer of goods or services.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith and this is supported by the fact that it is difficult to conceive of a legitimate use by the Respondent of the disputed domain name in view of the pervasive use of the CANADIAN TIRE trademarks. For the same reason, it is not plausible that the Respondent was unaware of the Complainant’s well-known CANADIAN TIRE trademarks. The Complainant submits that the disputed domain name was registered and is being use with the intention to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s CANADIAN TIRE trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. A. Identical or Confusingly Similar
The Complainant has established it has rights to the CANADIAN TIRE trademarks. The disputed domain name incorporates the Complainant’s CANADIAN TIRE trademark in its entirety. The additional element “franchise” in the disputed domain name is a well-known trademark of a third party.
Its incorporation into the disputed domain name does not serve to remove the confusing similarity with the Complainant’s CANADIAN TIRE trademark.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
Additionally, as the Respondent is in default, it has brought no argument to support the contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its using of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it knew that CANADIAN TIRE was the trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant’s trademarks when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondents’ registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainant’s marks.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain name or that there is conceivable good faith use for the disputed domain name. After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Panel is persuaded from the evidence submitted that the Respondent has indeed sought to gain commercially by attracting Internet users to its website by causing confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Accordingly the Panel finds in favour of the Complainant on the third element of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Dated: October 1, 2012
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