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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. 849075 Alberta Ltd., carrying on business as Par5Systems

Case No. D2000-0985

 

1. The Parties

The Complainant

Canadian Tire Corporation, Limited, incorporated in Ontario and operating throughout Canada: 2180 Yonge Street, P.O. Box 770, Stn. K, Toronto, Ontario, Canada, M4S 2V9.

Represented by Cassels Brock & Blackwell LLP, Barristers and Solicitors, Scotia Plaza, Suite 2100, 40 King Street West, Toronto, Ontario, Canada, M5H 3C2.

The Respondent:- According to Network Solutions, Inc.’s Whois database and the Alberta Corporate Registration System, the Respondent in this administrative proceeding is Par5 Systems ("Par5"), #23, 1411 Millwoods Road East, Edmonton, Alberta, Canada, T6L 4T3. A search of the Alberta Corporate Registration System indicated that Par5 is a business name registered and owned by a company listed as 849075 Alberta Ltd.

 

2. The Domain Name and Registrar

The domain names at issue are: "ecanadiantire.com" and "e-canadiantire.com".

They are registered with: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America, "www.networksolutions.com".

 

3. Procedural History

On August 9, 2000, the Complaint was filed with the WIPO Arbitration and Mediation Center by e-mail (with hard copy received on August 11, 2000). The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.

On August 15, 2000, the Center acknowledged receipt of the Complaint.

On August 18, 2000, the Center requested verification (NSI), and received the Registrar’s answer to that request on August 21, 2000.

On August 25, 2000, a formal requirements compliance review was completed pursuant to Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules.

On the same date, a Notification of Complaint and Commencement of Administrative Proceeding was issued.

On September 11, 2000, the Center received an e-mail (with hard copy following on September 18, 2000) from the Respondent confirming receipt of the Notification of Complaint and Commencement of Administrative Proceedings. The Respondent also set out a Response to Statements and Allegations Made in Complaint.

On September 13, 2000, the Complainant observed by e-mail that the Respondent had replied to its Complaint. It inquired whether it was permitted to file a response or needed to take any further steps.

On September 14, 2000, the Center responded that neither the Policy nor the Rules contemplated supplementary filings and that the admissibility of any such filings and the weight of same would be determined by the Administrative Panel in its sole discretion.

On September 15, 2000, the Center acknowledged receipt of the Response.

On September 29, 2000, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence.

On October 4, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties. The projected decision date was October 17, 2000.

On October 13, 2000, the Panelist advised that due to circumstances beyond his control, the projected decision date must be postponed. After consultation with the Center, it was postponed to October 20, 2000.

 

4. Jurisdictional Basis for the Mandatory Administrative Proceeding

Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex B to the Complaint.

Under Paragraph 4(a) of the ICANN Policy, a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) The respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name was registered and is being used in bad faith.

The Administrative Panel finds that the Complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.

 

5. Factual Background

The domain names at issue are "ecanadiantire.com" and "e-canadiantire.com".

The Complainant is the registrant of the domain name "canadiantire.com" and operates its principal website at "canadiantire.com".

The Complainant is the registered owner of numerous Canadian trademark registrations for the trademark CANADIAN TIRE in written form and in design format. Evidence of such marks was provided in both paragraph 12 of the Complaint and in Annex C to the Complaint.

Canadian Tire Corporation, Limited has continuously and extensively used the Canadian Tire trademarks and claims to have established a valuable reputation and goodwill in association with them.

Canadian Tire Corporation, Limited has not licensed or otherwise permitted Par5 to use any of its trademarks.

Par5 is a registered company engaged in providing Information Technology Solutions to private and corporate clients. According to its Response, this involves, "in part, the registering of domain names for clients’ possible needs." It continues to state that: "The registering of these names enables Par5 to offer value added service to it’s present and future clients."

According to Network Solutions, Inc. Par5 has registered "ecanadiantire.com" and "e-canadiantire.com" along with 44 other domain names. A copy of the printout of this search is attached as Annex [D] to the Complaint.

 

6. Parties’ Contentions

A. The Complainant contends that:

It is contended that the names "ecanadiantire.com" and "e-canadiantire.com" are clearly identical or confusingly similar to Canadian Tire’s trademarks.

Canadian Tire has not licensed or otherwise permitted Par5 to use any of its trademarks, nor licensed or otherwise permitted Par5 to apply for or use the domain names.

The Complainant alleges that the domain names were acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to Canadian Tire. The Respondent states in the e-mail correspondence attached in Annex [F] to the Complaint that: "These domain names are not for sale." However, that statement of disinterest is followed immediately by the statement: "However any reasonable offer will be considered for the transfer of "ecanadiantire.com" and "e-canadiantire.com."

Canadian Tire asserts therefore that Par5 has passively held the domain names in a manner demonstrating bad faith.

B. The Respondent contends that:

Par5 is a registered company engaged in providing Information Technology solutions to private and corporate clients. The nature of the business, in part, is registering domain names for clients’ possible needs.

The nature of registering domain names dictates the urgency in securing the domain names desired as quickly as possible when those names are available. The registering of these names enables Par5 to offer value added service to its present and future clients.

Par5 has never approached or offered Canadian Tire the sale of any domain name secured by Par5.

 

7. Discussion and Findings

The Panel is constituted in order to determine whether the respondent’s registration of The domain names at issue, "ecanadiantire.com" and "e-canadiantire.com", complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999).

As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:

 

"Applicable Disputes: You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

The Complainant contends that the domain name at issue is "confusingly similar to a trademark or service mark in which the complainant has rights."

The Panel finds that the complainant has proved this element. In its view, the domain names "ecanadiantire.com" and "e-canadiantire.com" are confusingly similar to Canadian Tire’s trademarks.

There is no evidence that the impugned domain names have been used in commerce as a website by Par5. However, such use is not required in order to find that a registrant has acted in bad faith. The Panel refers in this regard to the WIPO Arbitration and Mediation Centre Administrative Panel decision Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows, which finds that, in certain circumstances, the passive holding of a domain name is an act of bad faith.

The Panel finds that 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 an impression of an association with Canadian Tire.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names.

The Panel agrees that Respondent has no rights or legitimate interests in respect of the domain names. The Complainant’s rights and legitimate interests in the name on which "ecanadiantire.com" and "e-canadiantire.com" are both based are manifestly long-standing and settled.

Thirdly, the Complainant contends that the domain names have been registered and are being used in bad faith.

The Panel agrees. A review of the evidence filed in support of the Complaint shows that Par5 passively held the domain names "ecanadiantire.com" and "e-canadiantire.com". More importantly, the evidence shows that the Respondent, while disclaiming any intent to sell the names, immediately offered to consider any reasonable offer from Canadian Tire Corporation, Limited when contacted by it. In the Panel’s view, the willingness to accept "any reasonable offer" was the operative language of the e-mail communication and demonstrated bad faith under paragraph 4(b)(i) of the ICANN Policy.

 

8. Decision

At paragraph 13 of the Complaint, the Complainant requested that the Panel issue a decision that the contested domain names be transferred to it. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain names "ecanadiantire.com" and "e-canadiantire.com" be transferred to Canadian Tire Corporation, Limited.

 


 

J. C. THOMAS
Panelist

Dated: October 19, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-0985.html

 

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