WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canadian Tire Corporation, Limited v. kusumaputra, Kusuma Putra
Case No. D2011-0648
1. The Parties
The Complainant is Canadian Tire Corporation, Limited, Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is kusumaputra, Kusuma Putra, Denpasar, Bali, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <canadiantiremastercard.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 13, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 13, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. A Complaint deficiency notification was transmitted on April 18, 2011 in regards to the identity of the registrar with which the domain name was registered at the time the Complaint was filed. The Complainant filed an amendment to the Complaint on April 18, 2011.
On April 18, 2011, the Center noted to the Registrar that the disputed domain name was set to expire on May 21, 2011. In response, the Registrar confirmed that the disputed domain name would remain locked until the conclusion or termination of these proceedings.
The Center verified that the Complaint together with the amendment to 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 April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on May 24, 2011. 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 is the registered owner of numerous Canadian trademark registrations for the trademark CANADIAN TIRE in written and design form, registered as early as 1983. These include, for example, trademark registration no. TMA279,853 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 of others; selling of house ware of others; selling of household goods of others; selling of sporting goods of others. The Complainant’s registered marks also include trademark registration no. TMA291,786 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, namely, the operation of an association providing to its members assistance in automotive emergency situations and in travel planning.
The Complainant is the registrant of the domain name <canadiantire.ca>. The Complainant operates its principal website at “www.canadiantire.ca” (the “Canadian Tire Website”). The Canadian Tire Website portrays products which are representative of the Complainant core areas, including automotive parts, sports & recreation, home products and tools. Currently, more than 21,000 products can be browsed. Consumers can purchase these products at Canadian Tire associate stores. On average, more than 70,000 individuals a day visit the website and it is consistently ranked among Canada’s top five busiest e-Commerce sites. The Canadian Tire website also displays a “Credit Cards” tab that, when clicked, opens a webpage that provides information relating to credit cards offered by the Complainant, including the Canadian Tire Options MasterCard, the Gas Advantage MasterCard and the Cash Advantage MasterCard. Consumers can apply for the Canadian Tire credit cards on the website.
Canadian Tire Financial Services Limited (“CTFS”) is a wholly owned subsidiary of Canadian Tire. CTFS is primarily engaged in marketing and promoting Canadian Tire branded financial products and services. CTFS is the parent company of Canadian Tire Bank. Canadian Tire Bank issues credit cards, including the Canadian Tire Options MasterCard, which is provided in association with the CANADIAN TIRE OPTIONS trademark. There are currently approximately four million Canadian Tire Options MasterCard cardholders.
CTFS and Canadian Tire Bank are licensed to use a number of the trademarks owned by Canadian Tire, including the Canadian Tire Trademarks. Pursuant to the terms of the license agreements and its relationship with CTFS and the Canadian Tire Bank, Canadian Tire, at all material times, had and continues to have control of the character or quality of the services offered to consumers in association with the Canadian Tire trade-marks.
The Complainant has been a party to several UDRP Panel decisions, including most recently Canadian Tire Corporation, Limited v. Kean Lee Lim, WIPO Case No. D2009-1226; and Canadian Tire Corporation, Limited v. Shahrokh Sherzady, WIPO Case No. D2009-1497. The Complainant was successful in these decisions, many of which found that the Canadian Tire 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.
After becoming aware that the disputed domain name had been transferred to the Respondent, counsel on behalf of the Complainant sent a letter to the Respondent dated June 23, 2010, requesting that the disputed domain name be transferred to the Complainant. To date, the Complainant has not received a response from the Respondent.
At the date of this decision, the disputed domain name reverts to a website headed “Canadian Tire MasterCard” and “The Best Info about Canadian tire Mastercard!” and featuring pictures of credit cards. The homepages for that site contains various text referring to financial services of a type offered by the Complainant, including the statement that “The Canadian tire is in financial services with main aim of building lifetime relationship to all their customers. All services of Canadian are primarily engage in marketing Canadian tire credit cards such as Options and MasterCard. Their cards are accepted to all 24 million locations all over the globe.”
5. Parties’ Contentions
The Respondent operates a website at “www.canadiantiremastercard.net”, which is confusingly similar to the Complainant’s trademark, CANADIAN TIRE and the balance of the CANADIAN TIRE trademarks. The website displays detailed information about Canadian Tire and the products and services it offers, particularly those pertaining to credit cards. The website displays a number of the Canadian Tire trademarks, including CANADIAN TIRE and CANADIAN TIRE OPTIONS. In addition, the language used on the website contains many grammatical errors.
The disputed domain name consists of the words “Canadian”, “tire” and “mastercard”. As such, it is confusingly similar to the Canadian Tire trademarks. The only difference between the two names is the addition of the word “mastercard”. Simply adding the word “MasterCard” should receive no weight, particularly when the Complainant offers a MasterCard credit card and a number of the Canadian Tire trademarks are used in association with MasterCard credit cards. It has been held in many UDRP panel decisions that when a domain name incorporates a registered mark in it’s entirely, such as in this case, it is confusingly similar to that registered trademark.
The Complainant states that its CANADIAN TIRE trademarks have been so pervasive in Canada since 1927, the year Canadian Tire was incorporated, 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.
In light of the pervasive use of the CANADIAN TIRE trademarks it is difficult to conceive of a legitimate use by the Respondent of the disputed domain name. It is also difficult to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. Accordingly, the Complainant states that the Respondent registered the disputed domain name in bad faith. 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 Complainant of the Respondent’s website. The Respondent’s efforts to disguise its true identity by supplying incorrect and incomplete contact information when registering the domain name is another example of bad faith conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
The Complainant clearly has registered rights in its CANADIAN TIRE mark. Evidence of those rights was provided as attachments to the Complaint. Being a registered mark, it is entitled to a presumption of distinctiveness. (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903.) Further, the Complainant’s registered rights have been recognized in prior cases involving the Complainant under the Policy. See e.g. Canadian Tire Corporation, Limited v. Kean Lee Lim, WIPO Case No. D2009-1226.
The disputed domain name entirely incorporates the Complainant’s mark with the addition of the term “mastercard”. In prior cases involving the Complainant, including Canadian Tire Corporation, Limited v. Kean Lee Lim, WIPO Case No. D2009-1226 cited above, panels have found that the entire incorporation of the Complainant’s mark in a domain name was sufficient for a finding of confusing similarity. The addition of the term “mastercard” in this case also introduces, on the Complainant’s evidence, a term associated with products and services offered by the Complainant. As such, it is a term that is likely to further increase the possibility of confusion.
It is evident that the disputed domain name incorporates a trademark (“mastercard”) of a third party. The Complainant provides no evidence that it is, itself, licensed to use this mark. However, this is not a matter which affects the Panel’s conclusion of confusing similarity. The Complainant need only prove that the disputed domain name is confusingly similar to its mark. In this case, the primary emphasis in the disputed domain name relates to the Complainant’s mark. The addition of the term “mastercard” does not lessen that emphasis.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In this case, the Complainant has made a detailed overall case against the Respondent, which the Respondent has chosen not to answer. While the ultimate burden of proof remains with the Complainant, the Respondent’s failure to respond formally, or communicate at all in connection with this case, allows an adverse inference to be drawn against it.
In the absence of any Response, there is no evidence in this case that would suggest that the Respondent might have a right or legitimate interest in the disputed domain name. The Complainant disclaims any. The Respondent’s website appears to refer to the Complainant by name. The suggestion is created of some association with the Complainant, which the Complainant explicitly denies. While the Complainant’s case against the Respondent under this particular ground is brief, there is an absence of evidence to support any case to the contrary. The circumstances of bad faith (see further below) further support a finding that the Respondent lacks rights or legitimate interests.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name has been registered and used in bad faith.
As set out in paragraph 4(b)(iv) of the Policy, bad faith may be found, for the purpose of paragraph 4(a)(iii) of the Policy, where the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The evidence in this case indicates that the Respondent was aware of the Complainant when it registered and then used the disputed domain name. The Respondent’s website refers to the Complainant. The Complainant’s use of its mark appears well-known and is long-standing. The Complainant’s registered mark is entirely incorporated in the disputed domain name. There is no evidence that the Respondent has any legitimate connection with the terms incorporated in the disputed domain name. The series of prior cases against the Complainant also indicates that the Complainant’s mark is an attractive target for cybersquatters. The nature of the Respondent’s website suggests that it was clearly aware of the Complainant and the nature of its business. In these circumstances, there is a reasonable inference that the Respondent registered the disputed domain name to exploit the value of the Complainant’s mark as described in paragraph 4(b)(iv) of the Policy. Such registration and use is indicative of bad faith.
As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <canadiantiremastercard.net>, be transferred to the Complainant.
James A. Barker
Dated: June 7, 2011