The Complainant is Canadian Tire Corporation Limited, Toronto, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is Organization, Alberta, Canada.
The disputed domain name <canadiantirebanking.com> (herein the “domain name in dispute”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 6, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 8, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2008. The Center verified that the Complaint and the Amended 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, and the proceedings commenced on August 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 18, 2008.
The Center appointed J. Nelson Landry as the sole panelist in this matter on September 25, 2008. 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.
The Complainant is the registered owner of several Canadian trademark registrations for the trademarks CANADIAN TIRE in written and design form and the mark CANADIAN TIRE BANK in written form. These registrations include the following trademarks:
a) CANADIAN TIRE, used in Canada since at least 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, house wares, household goods, sporting goods and of others;
b) CANADIAN TIRE Design, used in Canada since at least 1996 in association with similar wares as those in the above trademark such as vehicular parts, tools and accessories; the selling of maintenance and service supplies selling of hardware, of house wares, of household goods, of sporting goods of others and the servicing and maintenance of vehicles;
c) CANADIAN TIRE, used in Canada since at least as early as 1984 in association with financial credit services provided through the medium of a credit card, and auto club services;
d) CANADIAN TIRE BANK, used in Canada since 2002 in association with providing credit and charge card and related services, banking services, mortgages, financial advice and providing deposit services and term deposits as well as lines of credit;
e) CANADIAN TIRE BANK Design, used in Canada since May 2003 in association with similar banking and credit services (herein the “Complainant's Trademarks” or the “Trademarks”).
The Complainant has continuously and extensively used and promoted the Complainant's Trademarks
The Complainant is the registrant of the domain name <canadiantire.ca>. The Complainant operates its principal website at “www.canadiantire.ca”. The site portrays products which are representative of the Complainant's three core areas: automotive parts, accessories and service and sports and leisure products and home products, where more than 25,000 products can be browsed and purchased by consumers directly online for delivery to their homes or at Canadian Tire associate stores. On average, more than 70,000 individuals a day visit the website and which is consistently ranked among Canada's top five busiest e-commerce sites.
The Complainant authorizes and licenses independent owners or associate dealers and its two wholly owned subsidiaries to operate under the Trademarks over 460 Canadian Tire stores in Canada. Nine out of ten adult Canadians shop at Canadian Tire stores at least twice a year, while 64% of Canadians shop at Canadian Tire each month. Over 80% of the Canadian population lives within a 15 minute drive of a Canadian Tire store and these stores collectively employ over 50,000 Canadians. Canadian Tire's Spring/Summer and Fall/Winter catalogues have been distributed to more than eleven million households in English and French. All these operations are under the control of the Complainant for the character and quality of the services offered to consumers in association with the Complainant's Trademarks.
Canadian Tire Financial Services Limited (CTFS) is a wholly owned subsidiary of the Complainant engaged primarily in financing and managing Canadian Tire Customer credit accounts and serves a broad geographic mix of cardholders across all the economic regions of Canada. In addition, CTFS processes transactions at Canadian Tire associate stores and at Canadian Tire's Petroleum Gasoline outlets on behalf of major bank credit cards. More recently, the banking related services have been provided by the Canadian Tire Bank.
Canadian Tire Bank is a wholy owned subsidiary of CTFS and is authorized to use the term “bank” under the Bank Act. Canadian Tire Bank provides a number of banking services to its customers.
CTFS and Canadian Tire Bank are licensed to use a number of the Trademarks under the control by the Complainant of the character or quality of the services offered to consumers in association with the Trademarks.
Neomatrix Canada Corporation, predecessor of the Respondent, registered the domain name in dispute <canadiantirebanking.com> on September 20, 2005 (Annex F).
On March 30 and May 28, 2007, counsel for the Complainant wrote letters to Ms. Holski, who was then shown as the administrative contact person of the registrant of the domain name in dispute, and requested that the registration of the said domain name be transferred to the Complainant.
On June 8, 2007, Ms. Holski replied to the aforesaid letters by email and enquired whether the Complainant was interested in purchasing the domain name in dispute and on July 4, 2007, she indicated that in exchange for the transfer of the said domain name she wished to receive Canadian Tire gift certificates in the amount of 1,800 Canadian dollars.
The Complainant responded by email dated July 5, 2007 and offered to reimburse the Respondent the sum of 300 Canadian dollars, which offer was refused by Ms. Holski by email of July 6, 2007. By email dated December 22, 2007, Ms. Holski advised counsel for the Complainant that she transferred the domain name to a privacy service. Ms. Holski has not responded to subsequent numerous email communications sent by the Complainant or its counsel.
The Respondent's domain name is currently directly linked to the website of the Canadian Blood Services located at “www.bloodservices.ca”.
The Complainant, relying on the several registrations of the Trademarks used and promoted in association with various household and automotive products, banking and credit services, submits that it has rights in the Trademarks and that these Trademarks benefit of substantial goodwill by reason of the long use and promotion and are pervasive in Canada as acknowledged by other UDRP panels in ten previous decisions put in evidence (Annex E).
The Complainant further submits that the domain name in dispute is confusingly similar with the Trademarks and that the use of the said domain name is an infringement of the exclusively rights of the Complainant in the Trademarks in Canada.
According to the Complainant, the use of the Trademarks by it is so pervasive that other persons would not legitimately choose identical or confusingly similar names unless they were seeking to create an impression of association with the Complainant Canadian Tire. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 and Victoria's Secret, et al v Atchinson Investments LTD, NAF Claim No. 96496.
The Complainant states that it has not licensed nor permitted the Respondent nor its predecessor to use any of the Complainant's Trademarks or to apply to register and use the domain name in dispute. It further represents that the use of a domain name obviously confusingly similar with the Trademark of the Complainant does not constitute a bona fide offer of goods or services when the Respondent has no registered or common law rights in these Trademarks. Relying on Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Relying again on the pervasive use of its Trademarks, the Complainant contends that it is difficult to conceive a legitimate use by the Respondent of the domain name in dispute and to conceive that the Respondent would have been unaware of the existence of the Trademarks when the domain name in dispute was registered and therefore further contends that the said domain name in dispute was registered in bad faith.
According to the Complainant, the Respondent has benefited from the domain name in dispute in having gained website traffic from the establishment of a link through the use of the said domain name and relies on National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 in contending that paragraph 4(b)(iv) of the Policy does not require a demonstration that the Complainant suffered harm as a consequence.
The Complainant contends that the Respondent is using the domain name in dispute in bad faith by reason of having registered same primarily for the purpose of selling its registration to the Complainant for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name. According to the Complainant, evidence of use in bad faith is found in the act of diverting users in a misleading way and relies on Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day, NAF Claim No. FA 93554 and The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386.
Further evidence of bad faith is the breach of representations and warranty by the Respondent or its predecessor to the registrar that to its or her knowledge the said registration would not infringe the rights of any third party. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 and Carolina Herrera, Ltd v. Alberto Rincon Garcia, WIPO Case No. D2002-0806.
A last fact demonstrating bad faith conduct resides in the efforts of the current Respondent to disguise its true identity by using the privacy protection feature of the registrar which has been so held by panels in Medco Health Solutions, Inc. v. Whois Privacy Protection Services, Inc., WIPO Case No. D2004-0453; Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
The Respondent did not reply to the Complainant's contentions nor submit any evidence.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements in order for a domain name to be 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 in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel wishes to comment on two points in the evidence which are relevant and on which it rely in its decision.
First, as submitted by the Complainant, the Registrant and current Respondent has taken steps to mislead the reader as to its identity in giving “organization” at its name, “city” as its location in the province of Alberta and a postal code and telephone area number, not corresponding to the province of Alberta but to the province of Ontario and city of Toronto.
Second, there are further puzzling facts in respect of the identity of the successive parties, the one that registered the domain name in dispute and what appears to be two successors including the current Respondent. There are three WHOIS Search Results for <canadiantirebanking.com> in evidence (Annexes A, F and AA).
From the Panel's review of these reports, it consider that on the basis of update entry of September 20, 2006, as it appears from Annex F in the evidence, Neometrics Canada Corporation of Burlington, Ontario, would be as the registrant of the domain name in dispute which would have been registered on September 20, 2005 with an expiry date of September 20, 2007 and a last update of September 20, 2006. However, Annex A, identifies the Registrant as Domains by Proxy Inc. of Scottsdale, Arizona, with the same date of registration but now the expiry date is September 20, 2008 and then with a last update on December 6, 2007, a year past the corresponding entry in Annex F.
Finally Annex AA identifies the current registrant and Respondent as Organization with address 1, City, Alberta, l7m 1x2, Canada and the telephone number of the administrative and technical contacts mentioning Ms. Holski is 4169999999, the same contact person Ms. Holski as in Annex F, and the expiry date of the registration as September 20, 2009, last updated on August 12, 2008.
This information is compatible with the exchange of correspondence of counsel for the Complainant with Ms. Holski during the period of March 30 to July 5, 2007 and the mention by Ms. Holski on December 22, 2007 that she transferred the domain name to a privacy service, Domains By Proxy.
The Panel is satisfied that Domains By Proxy is a known privacy service, that disclosure of the current registrant by the registrar occurred in timely fashion prior to formal commencement of the proceeding, and that when the Complainant was invited by the Center to amend the Complaint it chose to do by naming “Organization” as the sole Respondent. In the circumstances the Panel is satisfied that “Organization” is the appropriate sole Respondent. See e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.
The evidence of long standing use and promotion first of the Trademarks CANADIAN TIRE as words and in descriptive script since 1927 in association with automotive parts and with several other products added during the period of 1927 until 1968, the offering and providing of financial credit services since at least March 1984, the operation of business stores as applied for in 1994 and the adoption, application to register the Trademark CANADIAN TIRE BANK in December 2002 and its subsequent use in providing credit and charge cards and banking services demonstrate to this Panel on the basis of the evidence adduced by the Complainant that the said Complainant has significant rights in the said Trademarks.
The further evidence as to the extent of the use and promotion of the Trademarks, the more than 25,000 products that can be browsed on its website at “www.canadiantire.ca” and the more than 70,000 individuals who visit the said website in a day, the presence and activities of over 460 stores in Canada where nine out of ten Canadian adults shop at these CANADIAN TIRE stores and are served by more than 50,000 employees and finally the two annual edition of its catalogue, Spring/Summer and Fall/Winter, distributed to more than eleven million households in English and French, amply demonstrate that these CANADIAN TIRE Trademarks are most distinctive and have substantial goodwill associated therewith and that this is not recent as it has been acknowledged by ten previous UDRP panels in their decisions during the period of 2000 to 2008 cited by the Complainant (Annex E).
In ten previous UDRP decisions Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. carrying on business as Par5Systems, WIPO Case No. D2000-0985; Canadian Tire Corporation, Limited v. None and Steve Carriére, WIPO Case No. D2002-0461; Canadian Tire Corporation, Limited v. Mike Rollo, WIPO Case No. D2002-1069; Canadian Tire Corporation, Limited v. Juancho Feliciano, WIPO Case No. D2005-0375; Canadian Tire Corporation, Limited v. Joey Man, WIPO Case No. D2006-0671; Canadian Tire Corporation, Limited v. C.C.C., Kevin Lyan, WIPO Case No. D2006-1049; Canadian Tire Corporation, Limited v. Digi Real Estate Foundation, WIPO Case No. D2006-1117; Canadian Tire Corporation, Limited v. Mainstream Advertising, WIPO Case No. D2006-1159; Canadian Tire Corporation, Limited v. Texas International Property Associates - NA NA, WIPO Case No. D2007-1407 and Canadian Tire Corporation, Limited v. CK Aspen, WIPO Case No. DTV2007-0015, the respective panels have found that the Complainant's Trademarks 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 the impression they were associated with the Complainant.
The CANADIAN TIRE BANKING Trademarks are used by Canadian Tire Financial Services Limited (“CTFS”) a wholly owned subsidiary of the Complainant and is engaged primarily in financing and managing customer credit accounts. Canadian Tire Bank is a wholly owned subsidiary of CTFS, authorized under the Bank Act of Canada, to use the term “bank” and provides different banking services to customers of the Complainant. Both CTFS and Canadian Tire Bank are licensed by the Complainant to use the Trademarks while the latter controls the said use of the Trademarks in compliance with the Trademarks Act in Canada.
The domain name in dispute incorporates the whole of both CANADIAN TIRE and CANADIAN TIRE BANK Trademarks with the small addition of the term “banking” to the first, the ending “ing” to the second and the top level domain name “.com” to both. Considering the long standing use and goodwill associated with the Trademarks this Panel has no hesitation in finding first that these small changes do not alter in any way the confusing similarity between the domain name in dispute and the Trademarks and second and foremost that there is confusing similarity between the said domain name of the Respondent and the Trademarks of the Complainant.
The first criterion has been met.
The Respondent has not filed any Response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “Canadian Tire Banking” or the domain name in dispute and is not making a legitimate non-commercial or fair use of the domain name in dispute.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant's Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant's Trademarks. Furthermore there is evidence that Ms. Holski on behalf of Respondent's predecessor by her demand attempted to extort money from Complainant in the form of gift certificates in an amount exceeding the costs to register the domain name in dispute. This behaviour is not compatible with a legitimate business. To the contrary, its shows bad faith.
The party, Neomatrix Canada Corporation, who registered the domain name in dispute in September 2005, was a Canadian entity based in Burlington, Ontario. There is no evidence that it was then known by the terms “Canadian Tire Banking” nor the domain name in dispute. It is unconceivable, considering the goodwill, reputation and even fame in Canada of the Complainant and its Trademarks, that Ms. Holski of Neomatrix Canada Corporation or the principals thereof in Burlington would not be aware of the existence and considerable reputation associated with the Trademarks and the Complainant, particularly upon considering that as the Panel found on Internet that there are two CANADIAN TIRE stores in Burlington, Canada, one on Guelph Street in Burlington Fairview and the other on Appleby Line in Burlington North.
Even if the use made by the Respondent of the domain name in dispute is not in diverting Internet visitors to a website of a competitor, the use of the domain name in dispute which the Panel has found above to be confusingly similar to the Trademarks of the Complainant, such use cannot be a bona fide offering of goods or services when it is made with full knowledge of the Trademarks and without any permission or authorization of the Complainant. This Panel adopts the findings of the panels in the three decisions cited by the Complainant in this respect and mentioned herein.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
The second criteria has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 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 website or location or of a product or service on your website or location.
According to the evidence adduced by the Complainant, summarized herein, this Panel finds that Neometrix Canada Corporation, the predecessor of the Respondent, having a place of business in Burlington Ontario where there are two CANADIAN TIRE stores was most certainly aware of the existence of these stores and several others in Canada and of the well-known Trademarks of the Complainant when it registered the domain name in dispute.
As previously mentioned herein, the Trademarks of the Complainant are well-known, benefit of substantial goodwill and could be considered famous in Canada. Secondly, the entity Neometrics Corporation who registered the domain name in dispute was located in Burlington with Ms. Holski mentioned as administrative contact must have been aware of the existence of the Trademarks. Upon further considering the fact located by this Panel that there are two CANADIAN TIRE stores in Burlington, this Panel agrees with the Complainant that it is difficult to conceive of a plausible situation in which the registering party and Ms. Holski would have been unaware of the existence of these Trademarks at the time of the registration of the domain name in dispute in September 2005.
The Complainant did not license nor authorize Neometrics Corporation, Ms. Holski nor anybody else to register a domain name which incorporates their Trademarks and is confusingly similar therewith which is contrary to the representations of absence of infringement of any trademark made to the Registrar at the time of registration of the domain name in dispute. Furthermore, it is well established in the evidence with the exchanges of emails with Ms. Holski in 2007 that the domain name in dispute was registered primarily for the purpose of selling it to the Complainant as she, on July 4, 2007 requested 1,800 Canadian dollars of gift certificates from the Complainant in response to the latter's request to transfer the said domain name.
This Panel therefore finds that the domain name in dispute was registered in bad faith even though it was registered by a party different from the current Respondent, yet the first predecessor to the Respondent.
According to the evidence, Annex K, the domain name in dispute is linked to the Canadian Blood Services website, not to a competitor of the Complainant. As correctly submitted by the Complainant, upon relying on the panel statement in National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118, the Policy does not require in paragraph 4(b)(iv) that a complainant should demonstrate that it suffers or would be likely to suffer harm as a consequence.
While the diversion of Internet users in the present case is not to competitors of the Complainant, the mere act of such diversion is misleading, as held in the earlier decision of the panel in The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386, and is evidence of use in bad faith. Such bad faith use is further confirmed by the activities of the initial registrant, Neometrics Canada Corporation and its contact, Ms. Holski, when upon transferring the domain name in dispute to the current registrant, the identity of the latter was simply “organization” with an address, postal code are misleading since they do not correspond to a real postal code that could be awarded in the province of Alberta. The postal code is one associated with the general area of Burlington in the province of Ontario. These facts further confirm the bad faith of the Respondent and this finding is supported by the UDRP decisions cited by the Complainant in this respect.
For these reasons, this Panel finds that the domain name in dispute is used in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the domain name <canadiantirebanking.com> is confusingly similar to the Complainant's Trademarks;
(b) the Respondent has no rights or legitimate interests in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <canadiantirebanking.com> be transferred to the Complainant.
J. Nelson Landry
Dated: October 8, 2008