WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA

Case No. D2007-1407

 

1. The Parties

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

The Respondent is Texas International Property Associates NA NA, of Dallas, United States of America, represented by Law Office of Gary Wayne Tucker of United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <canadianetire.com>, <canadien-tire.com> and <thecanadiantire.com> (the “Domain Names”) are registered with Compana LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 20, 2007, and in hard copy on September 25, 2007. The Center transmitted its request for registrar verification to the Registrar on September 25, 2007. The Registrar responded on September 27, 2007, stating that it had not received a copy of the Complaint, confirming that it was the Registrar and the Respondent was the registrant of all three Domain Names and providing the contact details held in respect of the registrations on its Whois database. The Registrar also confirmed that the Domain Names would remain locked during this proceeding and that the registration agreement was in English. In response to the Center’s questions about whether the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations and whether the registration agreement contained a submission to the jurisdiction at its principal office, the Registrar directed the Center to the online posting of its registration agreement.

By email of October 1, 2007, the Center drew the Complainant’s attention to the fact that the registrant of the Domain Names had been identified by the Registrar as Texas International Property Associates NA NA, rather than just Texas International Property Associates, and invited the Complainant to amend the Complaint. The Complainant filed an amendment to the Complaint accordingly on October 4, 2007.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 25, 2007. The Response was filed with the Center on October 26, 2007.

By email of October 29, 2007, the Complainant requested an opportunity to submit a further argument to address allegations in the Response.

The Center appointed Jonathan Turner as the sole panelist in this matter on November 7, 2007. 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.

By email of November 12, 2007, the Respondent asked for an opportunity to respond if the Panel admitted the Complainant’s proposed supplemental submission.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Procedural Ruling

Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request to make an additional submission may be regarded as an invitation to the Panel to exercise this discretion.

As observed in The EW Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (<commercialappeal.com>), in exercising this discretion, a Panel must take into account the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. The Panel has to bear in mind that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.

In this case, the Panel is not satisfied that the Response contains any submission which should not have been anticipated by the Complainant. In any event, the Panel is able to decide this Complaint on the basis of the primary submissions without recourse to the Complainant’s proposed additional submission. The Panel has therefore decided not to admit further submissions.

 

5. Factual Background

The Complainant supplies automotive parts, accessories and service; sports and leisure products; and home products. It licenses and supplies over 460 stores in Canada operating under the name “Canadian Tire”. Nine out of ten adult Canadians shop at Canadian Tire stores at least twice a year and 64% shop there each month. The stores employ over 50,000 Canadians.

The Complainant’s catalogues are distributed to more than 11 million households in English and French. The Complainant also operates a website at “www.canadiantire.ca”, which is visited by more than 70,000 individuals on average each day and is one of Canada’s top five busiest e-commerce websites. A subsidiary of the Complainant operates Canadian Tire Bank which finances and operates customer accounts.

The Complainant has registered “CANADIAN TIRE” and various phrases including the words “CANADIAN TIRE” as trademarks in Canada.

The Respondent registered the Domain Names <canadianetire.com> on November 23, 2005, <canadien-tire.com> on December 6, 2005 and <thecanadiantire.com> on April 22, 2006. The Domain Names are directed to web pages containing sponsored links to other websites. These pages contain banner headings comprising the respective Domain Names and a copyright notice at the foot of the form “ 2007 canadianetire.com. All Rights Reserved”.

The Complainant’s solicitors sent a letter to the Respondent on April 5, 2007, demanding transfer of the Domain Names. The Respondent’s lawyer replied after several reminders on June 5, 2007, rejecting the Complainant’s demand.

 

6. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its registered mark “CANADIAN TIRE”. The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they were registered and are being used in bad faith.

The Complainant argues that in view of its extensive use of the “CANADIAN TIRE” mark, the Respondent must have been aware of it when the Domain Names were registered. The Complainant also alleges that the Respondent has been found to have registered and used domain names in bad faith in numerous other cases and that this is further evidence of bad faith in this case.

B. Respondent

The Respondent contends that “CANADIAN TIRE” is generic and not entitled to protection as a trademark.

The Respondent also submits that it has rights or legitimate interests in the Domain Names because it offers a legitimate business of targeted advertising searches. The Respondent states that it registered the Domain Names in good faith because it believed that they consisted of geographic, generic and descriptive terms to which no party had exclusive rights.

The Respondent contends that it did not have constructive notice of the Complainant’ registrations of the mark “CANADIAN TIRE” in Canada and that there is no evidence that it selected the Domain Names in order to obtain a free ride on the Complainant’s mark. It submits that there is no evidence of confusion or intent to confuse or that the Respondent, based in Texas, had any reason to know of the Complainant, whose operations are confined to Canada.

The Respondent argues that use of the Domain Names for pay per click advertising is not evidence of bad faith and that it is entitled to use the Domain Names descriptively. Finally, the Respondent states that the existence of some complaints under the Policy against it is merely a reflection of the scale of its business in registering automatically generated generic domain names and does not show that the Domain Names in this case were registered and are being used in bad faith.

 

7. Discussion and Findings

In accordance with paragraph 4 of the Policy, the Complainant must prove (a) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and (c) that the Domain Names have been registered and are being used in bad faith. Each of these requirements will be considered in turn.

A. Identical or Confusingly Similar

The Panel has no reason to doubt the validity of the Complainant’s registrations of the mark “CANADIAN TIRE”. The Complainant has shown very extensive use of this mark which is likely to have been sufficient to make it distinctive.

The Domain Names are confusingly similar to this mark, particularly in the context of the Internet. The first two Domain Names represent variants of the mark which are liable to be typed in error by Internet users, followed by the generic “.com” suffix. The third consists of the mark preceded by the definite article, which consumers with imperfect recollection may assume to be part of the mark, followed by the generic “.com” suffix.

The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

In the Panel’s view, the Respondent’s use of the Domain Names for web pages containing automatically generated sponsored links to other websites does not of itself constitute a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent is not offering any real service and, even if it is, it is not offering it in good faith for the reasons discussed in the following section.

The Respondent is not commonly known by the Domain Names. Nor is it making legitimate non-commercial or fair use of the Domain Names without intent for commercial gain. On the contrary, it is making commercial use of the Domain Names to obtain revenue from pay per click sponsored links through diverting Internet users by confusion within the Complainant’s mark.

On the evidence in this case, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Names. The second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel considers that it is more likely that the Domain Names were registered in order to take advantage of the Complainant’s widely-known mark than that they were registered purely on account of their descriptive indications as suggested by the Respondent.

In the first place, “CANADIAN TIRE” is not an obvious descriptive term, since the national origin of tires does not confer any particular quality on them. “CANADIAN TIRE” is not equivalent, for example, to “French cheese”. Secondly, the typographical variants of “CANADIAN TIRE” comprised in the first two Domain Names are still less obvious as choices of descriptive terms. Thirdly, the use of the definite article in the third Domain Name signifies a particular entity or object rather than a descriptive use.

In any case, it is clear that following registration of the Domain Names, the Respondent directed them to web pages of automatically generated sponsored links, and it is reasonable to infer that the Respondent registered them with that intention.

As observed in Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381 (<avg.com>), where a domain name is very similar to a mark belonging to another party, such use is inherently likely to result in the display of sponsored links in the field in which the mark is used, including competitors of the mark’s owner. It is thus a system which is likely to enable a registrant to obtain click-through commissions from the diversion of Internet users where the domain name is confusingly similar to another party’s mark.

The risk of confusion is increased by the banners and copyright notices described in section 4 above, which treat the Domain Names as marks rather than generic descriptions: see, to the like effect, Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027.

Thus the natural and probable consequence of the use of the Domain Names intended and put into effect by the Respondent was that it profited from the diversion of Internet users by confusion between the Domain Names and the Complainant’s mark.

Even if, as the Respondent implies, it was unaware of the Complainant, it was an experienced Internet operator and recipient of a number of complaints under the Policy. It may therefore be taken to have known at the very least of the risk that the Domain Names might be confusingly similar to another company’s mark, and that the use which it intended to make and did make of the Domain Names would result in its profiting from the diversion of Internet users through confusion with such a mark. The Respondent nevertheless proceeded to register and use the Domain Names either intending to run that risk or deliberately disregarding it.

In these circumstances, the Panel concludes that the Domain Names were registered and are being used in bad faith. The third requirement of the Policy is satisfied.

 

8. 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 names, <canadianetire.com>, <canadien-tire.com> and <thecanadiantire.com>, be transferred to the Complainant.


Jonathan Turner
Sole Panelist

Dated: November 21, 2007