The Complainant is Canadian Tire Corporation, Limited, Canada, represented by Norton Rose Fulbright Canada LLP, United States of America (“United States”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Alexander Alexander, United States.
The disputed domain name <jobs-canadiantire.online> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2021 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 November 29, 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 28, 2022. 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 following facts are undisputed.
The Complainant is a Canadian retailer of different products, including automotive, hardware, sporting goods, camping equipment and home goods.
The Complainant is the owner of several trademark registrations that consist of or incorporate the words CANADIAN TIRE, including but not limited to the following registrations:
- European Union (“EU”) Trademark (wordmark) CANADIAN TIRE with registration number 16818965, registered on January 8, 2018;
- Canadian Trademark (wordmark) CANADIAN TIRE with registration number TMA849652, registered on April 29, 2013;
- United Kingdom (“UK”) Trade mark (wordmark) CANADIAN TIRE with registration number UK00916818965, registered on January 8, 2018.
These trademarks will hereinafter together be referred to, in singular, as the “Trademark”.
The Complainant is also the owner of several trademark registrations that contain a triangle logo, including but not limited to the following registrations:
- EU Trademark (figurative mark) with registration number 16843195, registered on January 8, 2018;
- UK Trade mark (figurative mark) with registration number UK00916843195, registered on January 8, 2018;
- Canadian Trademark (combined trademark) with registration number TMA886385, registered on September 22, 2014
These trademarks will hereinafter together be referred to, in singular, as the “Triangle Trademark”.
The Complainant is the owner of several domain name registrations that incorporate the Trademark, including <canadiantire.ca>, registered in 2000.
The Domain Name was registered on September 29, 2021. At the time of filing the Complaint, the Domain Name resolved to a website (“Website”) which displays a header incorporating the words: “CANADIAN TIRE CORPORATION ONLINE INTERVIEW PORTAL FOR IT PROJECT MANAGER” in block lettering, with the Trademark depicted above the text.
Insofar as relevant, the Complainant contends the following.
The Domaine Name is confusingly similar to the Trademark, as the Trademark is recognizable within the Domain Name. The Trademark is completely incorporated in the Domain Name and only the descriptive term “jobs” is added as a prefix. This creates confusion with the Complainant’s own offering of employment opportunities on the Complainant’s careers page. Job seekers may think that the Domain Name is that of the Complainant or is affiliated with the Complainant. Moreover, the generic Top-Level Domain (“gTLD”) need not to be taken into consideration.
The Respondent has no rights or legitimate interest in the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent deliberately chose a domain name consisting of the Trademark to mislead job seekers into providing their personal information. The Respondent had the intention to impersonate or falsely suggest affiliation with the Complainant by using the Trademark and the Triangle Trademark extensively and significantly on the website the Domain Name resolved to.
The Domain Name was registered and is being used in bad faith. The Trademark was at the time of the registration of the Domain Name, extensively well known. It is implausible that the Respondent was unaware of Trademark. The Respondent is intentionally and in bad faith attempting to attract, for commercial gain, users to the Domain Name by creating a likelihood of confusion with the Trademark. The Respondent is impersonating the Complainant to collect information in support of a job phishing scam. Furthermore, the use of a proxy service to conceal its identity constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In the light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark and the term “jobs”. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the added term does not prevent a finding of confusing similarity.
In addition, with regard to the gTLD “.online”, as it was established in many previous UDRP decisions (see it A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD “.online” is a necessary component of the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “canadiantire” or “jobs” is the Respondent’s name or that the Respondent is commonly known as such. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark. The Respondent is impersonating the Complainant by using the Domain Name in connection with a website on which e.g. also the Triangle Trademark is used. By using the Domain Name to impersonate the Complainant, the Respondent cannot be considered to make any use in connection with the bona fide offering of goods or services.
Given the nature of the Website and lacking any Response, there is also no reason to assume that the Respondent is making any noncommercial or fair use.
In addition, there is also no evidence in the case file that the Respondent would have any rights or legitimate interests in the Domain Name for any other reason.
For all the foregoing reasons, the Panel is satisfied that the second element of the Policy is met.
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name, in particular as the Respondent used the Triangle Trademark and the Complainant’s full name on the Website.
The Respondent also used the Domain Name in bad faith by impersonating the Complainant by creating the false impression that the Website is a job interview portal for the Complainant.
In accordance with section 3.6 of WIPO Overview 3.0, the Panel finds that the fact that the Respondent hid his/her identity from the public behind a WhoIs privacy wall, is additional evidence of bad faith.
Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
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 <jobs-canadiantire.online> be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: February 11, 2022