Complainant is Canadian Tire Corporation, Limited of Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
Respondent is Kean Lee Lim of Mannheim, Germany.
The disputed domain name <www-canadiantire.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2009. On September 16, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 16, 2009, 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 Complainant on September 17, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 17, 2009. 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 Respondent of the Complaint, and the proceedings commenced on September 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2009. Respondent emailed the Center on September 28, 2009 inquiring as to transfer of the Domain Name back to Complainant. Complainant suspended the proceeding on September 29, 2009 until October 19, 2009 to explore settlement. On October 16, 2009 Complainant extended the suspension period to October 29, 2009. The proceeding was reinstituted on October 29, 2009, with an adjusted due date for Response of November 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2009.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on November 17, 2009. 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.
Complainant is engaged in the business of selling tires, automotive parts and other wares and providing related services through some 473 Canadian Tire stores and dealerships located widely across Canada. Complainant's annual catalogue was distributed for years to more than 11 million households. The catalogue is now available electronically on Complainant's website at “www.canadiantire.ca”.
Complainant owns numerous Canadian trade mark registrations for the trade mark CANADIAN TIRE in connection with a broad range of wares, including automotive parts and, specifically, tires, and related services. These include Trade Mark registration no. TMA279,853 CANADIAN TIRE, registered May 27, 1983, and used in Canada since at least as early as 1927. This registration is recognized under Section 12(2) of Canada's Trade-marks Act with respect to wares, reflecting a determination that the mark as used in Canada had become distinctive of the applicant. Complainant is also the registered owner of registration number TMA469,998 CANADIAN TIRE Design, registered January 29, 1997.
Respondent registered the Domain Name on January 18, 2009, using a proxy service, Domains By Proxy, Inc. The Domain Name resolved to a website which offered the user a free 500 dollar Canadian Tire gift certificate “now” and directed the user to another website. At that site, the user is given an opportunity to enter an online contest after paying a fee that will appear on the user's cell phone bill.
Counsel for Complainant wrote three letters to the Domain Name registrant c/o Domains By Proxy, Inc. demanding that Registrant cease and desist use of its trade marks and from making representations concerning the gift cards. Counsel also sent a letter to the same effect directly to Domains By Proxy. Complainant received no response from Registrant or from Domains By Proxy.
After the Complaint in this proceeding was filed and served, Respondent communicated by email suggesting that he would transfer the Domain Name to Complainant. This proceeding was suspended for a time to allow Respondent to make the transfer, but he never did so, and Complainant reinstituted the proceeding.
Complainant contends that by reason of the registration of its trade marks, it has a legal right to exclusive use of the CANADIAN TIRE mark in Canada. That right is infringed by a person not entitled to use the mark who sells, distributes or advertises wares or services in association with a confusing trade mark or trade name.
Complainant further contends that the Domain Name is confusingly similar to its CANADIAN TIRE trade marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its trade marks or to apply to register the Domain Name, and the use of a domain name which is identical to Complainant's trade marks is not a bona fide offer or goods or services when Respondent has no registered or common law rights in the marks.
Finally, Complainant contends that Respondent registered and used the Domain Name in bad faith. Respondent has used the Domain Name to direct traffic to a website which purports to offer a free Canadian Tire gift card, but which does not do that. Instead, the Internet user is given an opportunity to enter an online contest only after paying a fee. Even if the user discovers at this point that there is no actual business relationship between Complainant and Respondent, Respondent still has succeeded in diverting Internet traffic to his own website by misleading the user.
Complainant thus contends that Respondent registered and is using the Domain Name with the intention of attracting, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's CANADIAN TIRE trade marks as to the source, sponsorship, affiliation or endorsement of the Complainant of Respondent's website, which constitutes bad faith. Complainant alleges further that the association of Complainant's trade mark with Respondent's misleading activities tarnishes Complainant's trade mark further supporting the inference of bad faith.
Complainant contends that it is inconceivable that Respondent was not aware of Complainant's well known CANADIAN TIRE trade mark when he registered the Domain Name.
Complainant points also to the fact that Respondent sought to disguise his true identity by using the privacy protection service of the Registrar as an indicator of bad faith.
Respondent did not reply to Complainant's contentions.
Respondent did not respond to the Complaint therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier to Respondent at the addresses provided in Respondent's registration information provided by the registrar. In addition, although Respondent did not answer the Complaint, he did communicate in writing indicating receipt of the Complaint. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding and that the notice was in fact effective.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Complainant clearly possesses legal rights in the CANADIAN TIRE trade mark by reason of its long term use in Canada, acquired distinctiveness, and registration by the Canadian Intellectual Property Office.
The Domain Name is confusingly similar to Complainant's trade marks. The Domain Name incorporates the CANADIAN TIRE trade mark in its entirety, which prior UDRP Panels have held to be sufficient to support a finding of confusing similarity. Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
The addition to Complainant's trade mark of the prefix “www-”does not negate confusing similarity. The letters “www” are commonly used to refer to the World Wide Web and appear in the greatest part of all Internet addresses. The letters thus are nondistinctive. The addition of such generic, nondistinctive letters to the trade mark does not distinguish the Domain Name from Complainant's trade mark and does not, therefore, render the Domain Name not confusingly similar to Complainant's trade marks. See Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 (<wwwairfrance.com>); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (<www-wal-mart.com>). The use of the dash after the letters www has been found by prior panels to be nondistinctive and also to constitute a form of typosquatting. Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787 (<www-jkrowling.com>); Viacom International, Inc. v. Erik Peterson, WIPO Case No. D2001-0346 (<www-mtv.com>); AT&T Corp. v. Byeong Deog Im, WIPO Case No. D2004-0026 (<www-att.com>).
The addition of the “.com” suffix is a nondistinctive, common top level domain, which has no relevance in determining confusing similarity. Viacom International, Inc. v. Erik Peterson, WIPO Case No. D2001-0346 (<www-mtv.com>).
Complainant has established that the Domain Name is confusingly similar to the CANADIAN TIRE trade marks in which it has established legal rights.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). The evidence, both the name itself and its use with Complainant's gift card, supports a finding that Respondent selected the Domain Name in order to create the false impression of association with Complainant's business. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397. Respondent uses the Domain Name to divert Internet traffic from Complainant's website, first, to a website promising a gift card from Complainant, and then to a website attempting to lure the user into a contest to win a gift card for which the user must pay an entry fee. Such use can in no way represent either a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use of the Domain Name under Policy, paragraph 4(c)(iii). This is clearly a commercial venture on Respondent's part based on a highly misleading use of Complainant's name and trade mark.
Complainant has not licensed or consented to Respondent's registration and use of a domain name incorporating the CANADIAN TIRE trade mark. There is no evidence that Respondent has been commonly known by the Domain Name. Policy, paragraph 4(c)(ii). See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question).
The Panel finds that Complainant has made a prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name. Respondent, in default, failed to produce evidence to rebut Complainant's prima facie case and has not, therefore, established that he has rights or legitimate interests in the Domain Name. The Panel thus concludes that Complainant has established that Respondent has no rights or legitimate interests in the Domain Name. Policy, paragraph 4(a)(ii).
Complainant must demonstrate that Respondent both registered and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii).
Paragraph 4(b)(iv) of the Policy provides that the following, among other factors, shall be evidence of the registration and use of a domain name in bad faith:
By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site . . . 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.
Respondent is doing precisely that. Respondent's schema first uses the Domain Name, based on Complainant's trade mark, to offer the user a Canadian Tire gift card, thus suggesting Complainant's sponsorship or affiliation with the offer. The user is then directed to another website at which the possibility of a Canadian Tire gift card is continued but now converted to a contest requiring payment of an entry fee. Respondent is clearly using a false association with Complainant and the resulting confusion to divert the Internet user to Respondent's website for the purpose of Respondent's own commercial gain. This is sufficient evidence of bad faith registration and use of the Domain Name. As Complainant notes, it is immaterial that the user may ultimately discover that there is no actual association between the “contest” and Complainant. The Policy does not require proof of actual economic harm to establish bad faith; the bad faith lies in the intentional use of confusion to divert Internet traffic to one's own website for commercial purposes. See 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 use of a proxy service to hide the identity of the actual domain name registrant can have legitimate purposes, but it can also be suggestive of bad faith, depending upon the circumstances of a particular case. See Microsoft Corporation v. Whois Privacy Protection Services/Lee Xongwei, WIPO Case No. D2005-0642. The Panel finds that the use of a proxy registration suggests bad faith under the circumstances of the present case.
The Panel concludes that Complainant has established Respondent's bad faith registration and use of the Domain Name.
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 name, <www-canadiantire.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: December 1, 2009