WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. Mike Rollo

Case No. D2002-1069

 

1. The Parties

The Complainant is Canadian Tire Corporation, Limited, Toronto, ON M4P 2V8, Canada.

The Respondent is Mike Rollo of Duluth, MN 55802, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names are <canadiantiredealer.com> and <canadiantiredealers.com>, both of which are registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on November 22, 2002. A hard copy of the Complaint was received on November 26, 2002. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 on December 3, 2002. The Response was filed with the Center by email on December 23, 2002. A hard copy of the Response was received on December 30, 2002.

The Center appointed John Swinson as the sole panelist in this matter on January 7, 2003. 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 a number of registered trademarks in Canada incorporating the words "Canadian Tire". Details of some of those registered trademarks are as follows:

(a) Trade mark registration no. TMA279853 CANADIAN TIRE, filed in 1982, which claims first use in Canada at least as early as 1927 in association with automotive parts, tools, accessories and maintenance and service supplies; and

(b) Trade mark registration no. TMA469998 CANADIAN TIRE Design, which claims first use in Canada of November 1996, in association with the operation of a business dealing in the selling of vehicular parts, tools and accessories of others; the selling of maintenance and service supplies of others; the selling of hardware of others; the selling of housewares of others; the selling of household goods of others; the selling of sporting goods of others; and the servicing and maintenance of vehicles.

The Complainant operates its principal website at "www.canadiantire.ca". This website sells a number of items, not just related to automobiles, including items such as cooking pots, exercise equipment, watches and smoke alarms.

The Respondent registered the disputed domain names in September 2001. The disputed domain names both resolve to a website titled "www.yourtiredealer.com" which allows users to search of tire dealers in the United States and Canada who have registered with this website.

 

5. Partiesí Contentions

A. Complainant

The Complainantís submissions can be summarized as follows.

The Complainantís business

The Complainant is the owner of a number of registered trademarks in Canada that incorporate the words "Canadian Tire" ("Canadian Tire Mark"). The Canadian Tire Mark was first used in Canada as early as 1927, in association with automotive parts including tires, tools, accessories and maintenance and service supplies.

The Canadian Tire Mark has been used so for so long and so extensively in Canada by the Complainant that it has become distinctive of the Complainant. The Complainant has continuously and extensively used the Canadian Tire Mark and has established a very valuable reputation and goodwill in association with it.

The Complainant operates its principal website at "www.canadiantire.ca". The site portrays products which are representative of the Complainantís three core areas Ė Home, Automotive and Leisure. Currently, more than 12,000 products can be browsed. Consumers can purchase these products directly online for delivery to their homes or at Canadian Tire associate stores. On average, more than 30,000 individuals a day visit the website and it is consistently ranked as one of the most popular Canadian retail websites.

The Complainant is Canadaís largest seller of tires. In addition to selling tires and other goods, Canadian Tire Associate dealers collectively provide auto services to consumers through more than 4,400 service bays.

Canadian Tire stores are independently owned and operated by Canadian Tire associate dealers. The Complainant sells wares including tires to Canadian Tire associate stores, which sell them to the public. Canadian Tire associate dealers are licensed to use the Canadian Tire Mark owned by the Complainant pursuant to the provisions of a standard form of dealer agreement.

There are over 451 Canadian Tire stores in Canada. Nine out of ten adult Canadians shop at Canadian Tire at least twice a year, while 40% of Canadians shop at Canadian Tire every week. Eighty-five percent of the Canadian population lives within a 15 minute drive of a Canadian tire store, and these stores collectively employ over 28,000 Canadians. Canadian Tireís annual catalogue is distributed to more than nine million households in English and French.

Assertions regarding the Respondent

The Complainantís legal representatives sent an email and letter to the Respondent on October 17, 2002, stating that unless the disputed domain names were transferred to the Complainant proceedings would be instituted. To date, the Respondent has refused to transfer the disputed domain names.

The Complainant alleges that the Respondent is associated with the business known as "50 Below Sales and Marketing Inc" ("50 Below").

The disputed domain names are active and are linked to "www.yourtiredealer.com", which is a web site owned by the Respondent. When a user enters the disputed domain names, the user is presented with a site, which states:

"Search for tire dealers and automotive service centers in the U.S. and Canada. To find a tire dealer and automotive service centers nearest you, please enter your zip/postal code or city and state/province in the box to the left and click on "submit"

When conducting a search for tire dealers on the web site, contact details for various retailers of tires are displayed. However, the search does not disclose the existence of any associated dealers of the Complainant. Search results appear to be limited to tire dealers and service center operations who subscribe to the Respondentís service. The Complainant assumes that companies pay the Respondent for space on the web site for the disputed domain names. The Complainant asserts that the Respondent is using the disputed domain names in a commercial manner.

Complainantís case:

The Complainant asserts the following:

(a) The disputed domain names are confusingly similar to the Canadian Tire Mark because they consist of the words "Canadian" and "Tire" and the generic word "dealer" or "dealers" added.

(b) The Respondent has no rights or legitimate interests in the domain names because:

(i) the Canadian Tire Mark has been so pervasive in Canada since 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; and

(ii) the Complainant has not licensed or otherwise permitted the Respondent to use the Canadian Tire Mark or any other marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the disputed domain names.

(c) The Respondent has registered and is using the disputed domain names in bad faith of the following grounds:

(i) In light of the pervasive use of the Canadian Tire Mark it is difficult to conceive of a legitimate use by the Respondent of the disputed domain names. It is inconceivable at the time of the registration of the domain names that Respondent was not aware of the very well known Canadian Tire Mark used by over 451 associate dealers across Canada: see Canadian Tire Corporation, Limited v. None and Steve Carrier Case, WIPO Case No. D2002-0461.

(ii) It is difficult to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration particularly in light of the nature of the Respondentís business and the services it offers directed to Canadians.

(ii) The disputed domain names have been registered and are being used by the Respondent with the intention of attracting, for commercial gain, internet users to the Respondentís websites, by creating confusion with the Complainantís Canadian Tire Mark as to the source, sponsorship, affiliation or endorsement of the Complainant with the Respondentís websites: see Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237 and Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231.

B. Respondent

Whilst the Respondent does not make clear his relationship with the organization 50 Below, the Respondent appears to be trading as or associated with 50 Below.

The Respondentís submissions can be summarized as follows.

The Respondent claims that 50 Below is in the business of building and maintaining web site and locator programs for industries such as the tire industry, powersports industry (businesses that sell snowmobiles, ATVs, motorcycles, power equipment, etc.) and the pool and spa industry. Each industry web site program has an Internet based locator intended to provide Internet users with a tool to locate retailers within that specific industry. Since most Internet based locators use geographic criteria to match consumers with retailers, the Respondent registers domains such as the disputed domain names that have geographic connotations.

The disputed domain names resolve to the web site "www.yourtiredealer.com" which is an online locator designed to aid consumers looking for retail tire locations in the USA and Canada. The locator contains 5398 retail tire locations (567 Canadian locations and 4831 United States locations). Each retailer listed on the locator receives free of charge a printable map of their location and a business listing which includes business name, address, phone, and fax numbers. Any business that sells tires in the USA and Canada can be listed for no charge.

The Respondent also registered <ustiredealer.com> for similar reasons, and this site resolves to the "www.yourtiredealer.com" website as well.

The Respondent claims that 50 Below has partnerships with the following tire manufacturers:

(a) Contracted to provide web site program for Bridgestone/Firestone North American Tire, LLC who have 12000 locations throughout North America.

(b) Contracted to provide web site program and dealer locator for Goodyear Tire & Rubber Company from 1997-2001.

(c) Sponsored by Michelin, which allows retailers of Michelin products in the United States and Canada to receive co-op advertising funds on web sites purchased from 50 Below. Web sites purchased from 50 Below will be linked to Michelin dealer locators at "www.michelin.com" and "www.michelin.ca".

The Respondent claims that it has legitimate rights and interests in the domain names and that it did not register and is not using the disputed domain names in bad faith for the following reasons:

(a) The disputed domain names and <ustiredealer.com> were registered on September 10, 2001, to service retail tire businesses in the USA and Canada that were existing subscribers of 50 Below. These domain names were registered when the Goodyear contract ended.

(b) Tire dealers that subscribed to a web site program developed for Canadian tire dealers developed by 50 Below received:

(i) a web site with unlimited pages and tire manufacture catalogs;

(ii) a map of the dealerís location; and

(iii) "listing" on the disputed domain names.

The disputed domain names were submitted to search engines in an effort to drive consumer traffic to retail tire locations listed at the disputed domain names.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Policy, namely:

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

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

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

The onus of proving these elements is that of the Complainant.

Preliminary matters

The disputed domain names are owned by Mike Rollo.

The Response is submitted naming the Respondent (in one place) as "Mike Rollo 50 Below Sales & Marketing" and in another place as "50 Below Sales & Marketing Inc."

The Response is signed on behalf of "50 Below Sales & Marketing" by Dan Barnes.

A "Who Is" search of the Registrarís website indicates that the Respondentís email address is domain@50below.com. The Respondentís street address corresponds with the street address for the company operating the website "www.50below.com".

The Response does not provide any information at all as to the Respondentís rights or legitimate interests in the disputed domain names. The Response speaks only of "50 Below Sales and Marketing Inc." and that companyís alleged rights to the disputed domain names. The Response is not signed by the Respondent, but by Dan Barnes who the Respondent has appointed as his authorized contact, apparently on behalf of 50 Below Sales and Marketing Inc.

The Respondent provides no details or evidence as to his association or relationship with 50 Below. The domain name <50below.com> is owned by "FBSM" (possibly an abbreviation for "50 Below Sales and Marketing") which lists an email address for the technical and admin contact as domain@50BELOW.COM. This domain name shares the same domain servers as the disputed domain names. The Respondentís contact email address is also listed as domain@50below.com. The Respondentís address is the same as the address provided for 50 Below.

Strictly speaking, the Response should not be accepted as it is not a Response from the Respondent, and the use of the disputed domain names by 50 Below should not be considered as legitimate use of the disputed domain names by the Respondent. However, the panel notes there is a possible legitimate business connection between the Respondent and 50 Below, and will consider the Respondent to be both Mike Rollo and 50 Below for the purpose of this dispute.

A. Identical or Confusingly Similar

The Complainant owns registered trademarks in Canada including "Canadian Tire." The Complainant also has associated dealers, which form part of the Complainantís business. The Complainantís web site at "www.canadiantire.ca" contains comprehensive information about how to become a Canadian Tire dealer. Canadian Tire dealers are inherent to the Complainantís business.

The Complainant has continuously and extensively used the Canadian Tire Mark and has established a very valuable reputation and goodwill in association with its trademarks. Because of the extensive use of the Canadian Tire marks in Canada, the trademark "Canadian Tire" is very well known throughout Canada in association with tires: Canadian Tire Corporation, Limited v. None and Steve Carrier Case, WIPO Case No. D2002-0461.

The disputed domain names comprise a geographic term and some generic words. This is not fatal to the Complainant. Geographical names may qualify for protection under the Policy as trademarks if shown by evidence of their use to have become distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive. It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark. Oshawa Centre Holdings Inc. v. M. Bharwani (eResolution Case No. AF-0820); Daydream Island Resort Investments Pty Ltd. v. Alessandro Sorbello (eResolution Case No. AF-0586); Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932. The Policy applies to geographical indications that function as trademarks in like manner as it applies to generic words that function as trademarks. MIRC Electronics Limited v. Onida.com, WIPO Case No. D2001-1061. The panel finds that the Complainant has trademark rights in the Canadian Tire Mark.

The Panel also finds that the disputed domain names are confusingly similar to the Complainantís Canadian Tire marks.

The Respondent makes no submissions to the contrary.

B. Rights or Legitimate Interests

The Panel agrees with the Complainantís assertions that the Respondent has no rights or legitimate interests in the disputed domain names.

The Panel does not dispute that the Respondent conducts a legitimate business of developing web sites and locator programs for various industries including the tire industry. However, this does not justify the Respondent registering domain names which incorporate a trade mark of an organization that has established significant good will and a reputation in the tire industry using those marks.

The Complainantís Canadian Tire Marks have been extensively used in Canada for 75 years. The Panel is satisfied that the Canadian Tire Mark is very well known throughout Canada in association with tires (among other products and services). In Canadian Tire Corporation, Limited v. None and Steve Carrier Case, WIPO Case No. D2002-0461, the panel held that the Complainantís marks "are pervasive in Canada and that other persons or entities would not choose identical or confusingly similar domain names unless they were seeking to create an impression of an association with Canadian Tire". The Panel agrees with these views.

It is possible, but unlikely, that the Respondent registered the disputed domain names without knowledge of the Complainant. The Respondentís address is Duluth, United States, not in Canada. But Duluth, on Lake Superior, is relatively close to the Canadian border. The Respondent does not assert that he was unaware of the Complainant when registering the disputed domain names.

The Respondent appears to be familiar with the tire industry and services a number of well known companies/brands in the tire industry.

The panel concludes, based on all the submissions, that the Respondent was aware of the Complainantís famous Canadian Tire marks and its reputation in the tire industry when registering the disputed domain names.

The disputed domain names divert to a website which allows Internet users to find tire retailers which are in effect, competitors of the Complainant. The web site to which the disputed domain names resolve contains no details of authorized dealers of the Complainant.

The Respondent is not commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of the domain names. It is reasonable to conclude that:

(a) the purpose for registering and using the disputed domain names is to divert consumers looking for services of the Complainant to a web site where consumers can find similar products offered by the Complainantís competitors; and

(b) because of the widely known reputation of the Complainant in the tire industry and the familiarity of the Canadian Tire Marks with consumers, the Respondent registered the disputed domain names to attract the maximum amount of traffic to the Respondentís web site.

Accordingly, the panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names were registered and are being used in bad faith for the following reasons:

(a) Given the Respondentís experience in servicing the tire industry, it would have been aware of the Complainantís Canadian Tire Marks at the time of registration of the disputed domain names.

(b) The disputed domain names were registered and are being used to intentionally attract for commercial gain, Internet users to the Respondentís "yourtiredealer" website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís website, or location of the Complainantís products or services on the Respondentís website: Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237.

 

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 disputed domain names be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Date: January 14, 2003