WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. Wix.com Ltd / Andrew Arezes Reis, AMAR Graphics

Case No. D2021-2549

1. The Parties

The Complainant is Canadian Tire Corporation, Limited, Canada, represented by Norton Rose Fulbright Canada LLP, Canada.

The Respondent is Wix.com Ltd, United States of America / Andrew Arezes Reis, AMAR Graphics, Canada.

2. The Domain Name and Registrar

The disputed domain name <canadian-fire.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2021, the Registrar 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 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 9, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 7, 2021. 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 a Canadian retailer of a broad range of goods and services, from automotive, hardware, sporting goods, camping equipment, to home goods and much more.

The Complainant was founded in 1922 and has since then become one of Canada’s most iconic retailers, with over 1,700 retail and gasoline outlets in Canada, and stores in every province and territory with the exception of Nunavut, employing tens of thousands of people across Canada and around the world.

The Complainant was incorporated under the name “Canadian Tire Corporation, Limited” in 1927, and has since then developed substantial reputation for its business and services, notably built on its iconic name and hundreds of trademarks (thereafter the “CANADIAN TIRE Trademark”), which it is the owner, some of them including the words “Canadian” and “Tire”, some others consisting of or incorporating a red triangle logo topped by a green maple leaf, which was independently designed and created by the Complainant.

The Complainant is thus the owner of hundreds of trademarks, amongst which:

- The Canada word trademark CANADIAN TIRE, registration No. TMA291786, registered on June 8, 1984;

- The United Kingdom word trademark CANADIAN TIRE, registration No. UK00916818965, registered on January 8, 2018;

- The European Union Trademark (“EUTM”) CANADIAN TIRE, registration No. 016818965, registered on January 8, 2018;

- The China semi-figurative trademark CANADIAN TIRE, registration No. 9369764, registered on January 7, 2014;

- The Canada semi-figurative trademark CANADIAN TIRE, registration No. TMA886385, registered on September 22, 2014.

The Complainant also owns the <canadiantire.ca> domain name, registered on October 11, 2000, and which leads to its official website.

The disputed domain name <canadian-fire.com> was registered by the Respondent on June 12, 2021.

At the time of filing the Complaint, the disputed domain name pointed to a website relating to the sale of marijuana products, displaying a header incorporating the words “canadian” and “fire” in red block lettering, with a red equilateral triangle lined in black positioned to the left, the top side of which appearing to be a green marijuana leaf.

At the time of the decision, the disputed domain name directs users to a blank website.

The Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First, the Complainant stands that the disputed domain name is near identical to its registered CANADIAN TIRE Trademark, the sole difference between them being the replacement of the letter “t” by an “f” and the incorporation of a hyphen between the two words “canadian” and “fire”, which does not provide any distinguishing quality.

The Complainant also underlines that, while there are conceptual differences between the words “tire” and “fire”, they have strong phonetic and aural similarity, adding that the broader case context should be taken into account, namely the fact that the website to which the disputed domain name redirected users displayed a logo which was confusingly similar to that of the Complainant.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Respondent has not been authorized or licensed by the Complainant to use the CANADIAN TIRE Trademark in any way and has no connection or affiliation with the Complainant.

The Complainant also considers that the Respondent has not made bona fide, a legitimate noncommercial or a fair use of the disputed domain name, and that there is no evidence that the Respondent has become commonly known by the disputed domain name.

At last, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, since it is implausible that the Respondent was unaware of the CANADIAN TIRE Trademark given the facts that this trademark is extensively well known in Canada, that the disputed domain name is nearly identical to the Complainant’s trademark, and that the content of the Respondent’s website had a similar look and feel to the Complainant’s official website.

The Complainant insists on the fact that even if the Respondent’s website enabled users to purchase marijuana products, the disputed domain name is clearly used to take advantage of the Complainant’s reputation, which infers from the use of the disputed domain name that almost identically reproduces the CANADIAN TIRE Trademark, from the incorporation of logos which mirror the Complainant’s triangle design, and from the font choices and colour scheme of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the CANADIAN TIRE Trademark.

Then, the Panel notices that the disputed domain name <canadian-fire.com> is composed of (i) the misspelled CANADIAN TIRE Trademark, consisting of the replacement of the letter “t” by the letter “f”, giving the word “fire” instead of “tire”, (ii) the addition of a hyphen between the words “canadian” and “fire” and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel finds that it differs from the CANADIAN TIRE Trademark merely by the replacement of the letter “t” by the letter “f” and by the addition of a hyphen in the disputed domain name.

This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark, all the more that the letters “t” and “f” are diagonally adjacent to one another on a “qwerty” keyboard, and the Panel considers that the CANADIAN TIRE Trademark is clearly recognizable in the disputed domain name (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and section 1.9 of the WIPO Overview 3.0).

Moreover, at the time of filing the Complaint the disputed domain name pointed to a website containing a logo that is almost identical to that of the Complainant. This is evidence that the Respondent targeted the Complainant’s CANADIAN TIRE Trademark and affirms the confusing similarity (section 1.15 of the WIPO Overview 3.0).

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has not been authorized or licensed by the Complainant to use the CANADIAN TIRE Trademark in any way and has no connection or affiliation with the Complainant.

Moreover, the Panel finds that, at the time of the Complaint, the disputed domain name directed to a website related to the sale of marijuana products and that almost identically reproduced the Complainant’s trademark and red triangle logo, topped by a green marijuana leaf instead of a maple one, as well as the look and feel of the Complainant’s website, which does not represent any bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the disputed domain name.

Finally, the Panel also finds that there is no evidence that the Respondent was commonly known under the disputed domain name.

Moreover, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <canadian-fire.com>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

First, the Panel finds that it is established that the Complainant’s CANADIAN TIRE Trademark was registered before the registration of the disputed domain name, and that the Respondent could not be unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the strong reputation of the CANADIAN TIRE Trademark and the fact that the website to which the disputed domain name redirected at the time of filing the Complaint almost identically reproduced the Complainant’s trademark and red triangle logo, topped by a green marijuana leaf instead of a maple one, as well as the look and feel of the Complainant’s website.

Moreover, the simple registration by an unaffiliated entity of a domain name that is identical or confusingly similar to a famous or widely known trademark such as the CANADIAN TIRE Trademark, particularly domain names comprising typos such as the replacement of the letter “t” by the letter “f”, which are diagonally adjacent to one another on a “qwerty” keyboard, can by itself create a presumption of bad faith.

Then, the Panel considers that the Respondent obviously used the disputed domain name to misleadingly divert users who intended to visit the Complainant’s website to its own website related to the sale of marijuana products.

In view of all the circumstances developed above, the Panel finds that by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s CANADIAN TIRE Trademark and thus taking advantage of its reputation.

Consequently, the Panel holds that the Respondent has registered and used the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <canadian-fire.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: September 21, 2021