The Complainant is Canadian Tire Corporation, Limited of Toronto, Ontario, Canada represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is cen kuanghong of Wuhan, Hubei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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.
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 January 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default January 24, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 6, 2013. 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 was incorporated in 1927 and is the owner of multiple Canadian trademark registrations in respect of the mark CANADIAN TIRE in both word and figurative varieties. For example, the Complainant owns Canadian trademark registration no. TMA279853 in respect of the word mark CANADIAN TIRE, registered on May 27, 1983 in respect of multiple goods from automotive parts to sports equipment. The Complainant is also the registrant of the domain name through which it operates its principal website. The Complainant’s said website benefits from more than 70,000 individual site visits each day and features more than 21,000 products which consumers can purchase at independently owned retail outlets branded “Canadian Tire”. Each of the said retail outlets operates under a standard dealer agreement with the Complainant which incorporates a license to use the Complainant’s CANADIAN TIRE trademarks. There are over 488 of such retail outlets in Canada at which nine out of ten Canadians shop at least twice each year. The Complainant sells goods to the operators of the said retail outlets which in turn sell them on to consumers.
The Complainant has been a party to multiple complaints under the Policy and has been successful in these decisions, many of which found that the CANADIAN TIRE trademark is pervasive in Canada and that other persons or entities would not choose identical or confusingly similar domain names unless they were seeking to create the impression they were associated with the Complainant.
The disputed domain name was created on November 9, 2012. The website associated with the disputed domain name displays the Complainant’s CANADIAN TIRE trademark along with information about and images of designer luxury handbags, together with a means for Internet users to purchase items of merchandise. The Complainant’s legal counsel wrote to the Respondent on December 3, 2012 requesting that the disputed domain name be transferred to the Complainant however no response was received from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant further contends that the only difference between the disputed domain name and the Complainant’s CANADIAN TIRE trademark is the addition of the phrase “blackfriday” in the disputed domain name which should receive no weight. The Complainant adds that it has been held in previous cases under the Policy that when a domain name incorporates a registered trademark in its entirety it should be held to be confusingly similar to that trademark. The Complainant also asserts that there is significance in the fact that the Complainant’s trademark appears first in the disputed domain name and as such attracts primary attention, increasing the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Complainant asserts that its CANADIAN TIRE trademarks have been so pervasive in Canada since the Complainant’s incorporation in 1927 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 the Complainant. The Complainant notes that it has not licensed or otherwise permitted the Respondent to use its CANADIAN TIRE trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. The Complainant contends that the use of the disputed domain name does not constitute a bona fide offering of goods or services when the disputed domain name is confusingly similar to the Complainant’s CANADIAN TIRE trademarks and the Respondent has no registered or common law rights in such marks.
The Complainant asserts that in light of the pervasive use of the Complainant’s CANADIAN TIRE trademarks it is difficult to conceive of a legitimate use by the Respondent of the disputed domain name or of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. The Complainant submits that the disputed 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 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. The Complainant notes that the website associated with the disputed domain name features information and images of merchandise and displays the Complainant's CANADIAN TIRE trademarks, which is used by the Complainant in association with brand-name merchandise. The Complainant contends that it is inconceivable that at the time of the registration of the disputed domain name the Respondent was not aware of the Complainant’s very well-known CANADIAN TIRE trademark, associated with over 488 retail dealers across Canada. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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. A. Identical or Confusingly Similar
The Complainant has established to the Panel’s satisfaction that it has rights in the trademark CANADIAN TIRE. The Complainant’s trademark is reproduced in its entirety as the first and most dominant part of the disputed domain name. The remaining elements in the disputed domain name are the generic words “black” and “friday”, together with the top level domain “.com” which may be disregarded for the purposes of comparison as is customary in cases under the Policy. Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from being confusingly similar to that trademark. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). Furthermore, it is obvious to the Panel that the phrase “Black Friday” is commonly identified with retailing and, given that the Complainant’s CANADIAN TIRE trademarks are likewise strongly associated with retail activities, the Panel is of the view that this intensifies the confusing similarity of the disputed domain name to the Complainant’s CANADIAN TIRE trademarks.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a 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 a 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant contends that it has not licensed or otherwise permitted the Respondent to use its CANADIAN TIRE trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. The Complainant also submits that the use of the disputed domain name does not constitute a bona fide offering of goods or services and that in light of the pervasive nature of the Complainant’s CANADIAN TIRE trademarks it is difficult to conceive of any possible legitimate use by the Respondent of the disputed domain name. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the Respondent did not respond to the Complaint, and therefore did not submit any evidence regarding any alleged rights or legitimate interests in the disputed domain name. It appears to the Panel from the undisputed facts and circumstances of this case that the Respondent deliberately selected the Complainant’s CANADIAN TIRE trademark as the dominant element of the disputed domain name in an attempt to falsely associate itself with the Complainant’s retailing operations. This activity could not confer any possible legitimate interest or right upon the Respondent in respect of the disputed domain name. The Panel notes that there is no suggestion on the record that the Respondent has any legitimate connection to the disputed domain name or that the Respondent could have any conceivable bona fide use for it.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(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 you have engaged in a pattern of such conduct; or
(iii) you have 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 your web site or other online 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 your web site or location”.
In the present case, the Panel notes that the Respondent has reproduced the Complainant’s trademark in its entirety in the disputed domain name and that the associated website purports to make available for sale to the public a category of goods entitled “Canadian Tire Black Friday”. Given the pervasive nature of the Complainant’s trademark, which is strongly associated with retailing activities of the kind to which the Respondent’s website is dedicated, the Panel finds it inconceivable that the Respondent did not register and use the disputed domain name without the Complainant’s trademark firmly in mind. The Respondent has chosen to provide no alternative explanation for its actions.
Accordingly, based on the record before it, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website, as contemplated by paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: February 20, 2013
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