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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. None and Steve Carriere

Case No. D2002-0461

 

1. The Parties

Complainant is Canadian Tire Corporation, Limited, a company incorporated under the laws of the Province of Ontario, Canada, with its principal place of business at 2180 Yonge Street, Toronto, Ontario, M4P 2V8, Canada. Complainant is represented by John S. McKeown of Cassels Brock & Blackwell LLP, Barristers & Solicitors, Scotia Plaza, Suite 2100, 40 King Street West, Toronto, ON M5H 3C2, Canada. Respondent is None and Steve Carriere, 13361 95a Avenue, Surrey, British Columbia, V3V 1R4, Canada.

 

2. Domain Name and Registrar

The domain name in issue is <canadian-tire.com>.

Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America is the registrar for the domain name <canadian-tire.com>.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the complaint on May 14, 2002, via email, and on May 16, 2002, in hard copy form. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules. Complainant has made the required payment to the Center.

On May 16, 2002, the Center transmitted via email to Network Solutions Inc. (NSI) a request for registrar verification in connection with this case. On May 20, 2002, NSI transmitted via email to the Center, its Verification Responses, (1) advising that there is no named registrant of the domain name which is registered as follows: 13361 95a Avenue, Surrey, B.C. V3V 1R4, (2) advising that there is no named Administrative or Technical Contact, the only details being the same address as that given under "Registrant" namely 13361 95a Avenue, Surrey, B.C. V3V 1R (3) advising that the Billing Contact is Steve Carriere of #207 – 8139 121a Street, Surrey, B.C. V3W 0Z2, Canada; (4) confirming that NSI's Version 5 Service Agreement is in effect with respect to the domain names.

On May 22, 2002, the Center advised the Complainant's representative that the Center had been informed by NSI that Steve Carriere is not the Registrant of the disputed domain name but rather that the registrant is recorded as "none". The Center requested the Complainant to file an amendment to the Complaint listing the Registrant as the Respondent and making all necessary amendments.

The Center received the Complainant's Amended Complaint by e-mail on May 27, 2002, and in hard copy of May 30, 2002.

On May 31, 2002, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent via post, facsimile and email to the address identified in the complaint and transmitted a copy by e-mail to the Complainant. The Center advised that (1) the Response was due by June 20, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondents’ default as it considers appropriate, (4) Complainant had elected for the matter to be decided by a single panelist, (5) the fees for the administrative proceeding will be paid in their entirety by Complainant unless the Respondent chooses to have the case decided by a three-person Panel, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at postal and email addresses, a stated telephone number and fax number.

On June 21, 2002, the Center received the Response by e-mail. The Center received the hard copy of the Response on June 27, 2002

On June 21, 2002, the Center forwarded an Acknowledgement of Receipt of Response to the parties by e-mail.

On June 21, 2002, the Complainant advised the Center by e-mail that it had received the Respondent's response where for the first time the contact has acknowledged that the domain name in issue is being used for typo-piracy. The Complainant advised that it was preparing a supplement to the Complaint, which it would submit on June 24, 2002.

On June 24, 2002, the Center advised the Complainant by e-mail that the Rules for the Uniform Domain Name Dispute Resolution Policy do not make an express provision for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Accordingly, if such supplemental filing is received by the Center, the Administrative Panel, when appointed, will be informed of the fact of the Center's receipt of such filing and it will be in the sole discretion of the Administrative Panel to determine whether to admit and consider the supplemental Filing in rendering its decision.

On June 24, 2002, the Center received the Supplemental Filing of the Complaint and acknowledged receipt thereof. The Center repeated its statement that it will be in the sole discretion of the Administrative Panel to determine whether to admit and consider the Supplemental Filing.

On July 24, 2002, the Center transmitted to the parties via email Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Ross Carson had been appointed as the single panelist, and the decision was due August 7, 2002. Also on July 24, 2002, the Center transmitted the file in the case via e-mail and courier to Mr. Carson.

On July 26, 2002, the Panel advised the Center that it does not accept Complainant’s Supplemental material submitted June 24, 2002, as it finds that this is not an exceptional case warranting the filing of further submissions.

 

4. Factual Background

The Trademarks

Complainant advises that Canadian Tire is the registered owner of numerous Canadian trade mark registrations for the trade mark CANADIAN TIRE in written form and in design format. Copies of the trademarks are attached at Annex C to the Complaint. The registrations owned by Canadian Tire include the following trade marks:

- Trade mark registrations no. TMA279853 and TMA208904 CANADIAN TIRE, used in Canada since at least as early as 1927 in association with automotive parts, tools, accessories and maintenance and service supplies.

- Trade mark registration no. TMA240380 CANADIAN TIRE & DESIGN used in Canada since at least as early as 1942 in association with automotive parts, tools, accessories and maintenance and service supplies, namely anti-freeze, tires and tubes, tire pumps and a long list of other wares.

- Trade mark registration no. TMA208908 CANADIAN TIRE & DESIGN used in Canada since at least as early as 1967 in association with automotive parts, tools, accessories and maintenance and service supplies, and 1960 in association with the operation of a gas bar.

- Trade mark registration no. TMA208907 CANADIAN TIRE & DESIGN used in Canada since at least as early as 1967 in association with automotive parts, tools, accessories and maintenance and service supplies, and at least as early as 1985 in association with the services of operation of a gas bar.

- Trade mark registration no. TMA469998 CANADIAN TIRE Design used in Canada since November 1996 in association with the operation of a business dealing in the selling of vehicular parts, tools and accessories of others; the selling of maintenance and service supplies of others; the selling of hardware of others; the selling of housewares of others; the selling of household goods of others; the selling of sporting goods of others; and the servicing and maintenance of vehicles.

- Trade mark registration no. TMA477649 CANADIAN TIRE & Triangle Design used in Canada since at least as early as August 1994 in association with the operation of a business dealing in the selling of vehicular parts, tools and accessories of others; the selling of maintenance and service supplies of others; the selling of hardware of others; the selling of housewares of others; the selling of household goods of others; the selling of sporting goods of others; and the servicing and maintenance of vehicles.

- Trade mark registration no. TMA491979 CANADIAN TIRE & TRIANGLE & RECTANGLE DESIGN used in CANADA since June 1995 in respect of services.

- Trade mark registration no. TMA386591 CANADIAN TIRE, registered in 2002 in relation to propane dispensing facilities, operation of convenience stores and car wash services.

- Trade mark registration no. TMA395456 CANADIAN TIRE & Triangle Design used in Canada since December 1991 in association with operating a gas bar.

- Trade mark registration no. TMA402768 CANADIAN TIRE & Triangle Design used in Canada since July 1992 in association with operating a gas bar.

- Trade mark registration no. TMA291786 CANADIAN TIRE, used in Canada since March 1984 in association with financial credit services.

 

5. Parties’ Contentions

A. Complainant

(1) The domain name <canadian-tire.com> is identical or confusingly similar to a trade mark in which the Complainant has rights; and

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

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

(1) Identical or Confusingly Similar

Complainant submits that Canadian Tire has continuously and extensively used the Canadian Tire Trade Marks and has established a very valuable reputation and goodwill in association with them.

The domain name in issue is <canadian-tire.com> consisting of the words "Canadian" and "Tire" with a hyphen between them. As such it is clearly identical or confusingly similar to Complainant's Canadian Tire trademarks.

Complainant advises that Canadian Tire is the registrant of the domain name <canadiantire.ca> and operates its principal website at "www.canadiantire.ca". The site portrays products which are representative of Canadian Tire's three core areas – Home; Automotive and Leisure. Currently more than 12,000 products can be browsed. Consumers can purchase these products directly online for delivery to their homes or at one of the Canadian Tire associate stores in Canada. On average more than 30, 000 individuals a day visit the website and it is consistently ranked as one of the most popular Canadian retail websites.

Complainant advises that there are over 435 associate Canadian Tire stores in Canada and 90% of adult Canadians shop at Canadian Tire at least twice a year, while 40% of Canadians shop at Canadian Tire every week. Complainant submits that 85% of the Canadian population lives within a 15 minute drive of a Canadian Tire store. These stores collectively employ over 28,000 Canadians. Canadian Tire’s annual catalogue is distributed to almost nine million households in English and French.

Complainant refers to the WIPO Arbitration and Mediation Center Administrative Panel decision Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. carrying on business as Par5Systems, WIPO Case D2000-0985 (October 19, 2000), in which it was found that the Canadian Tire Trade Marks 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. A copy of the decision is attached Annexed [D] to the Complaint.

Complainant advises that Complainant's representative wrote to the Respondent Mr. Steve Carriere on November 13, 2001. Complainant advised Mr. Carriere that use of the trade mark CANADIAN TIRE as part of the domain name <canadian-tire.com> constitutes trade mark infringement and/or passing off. Complainant advised that unless the registration of the domain name <Canadian-tire.com> was transferred to Canadian Tire and all use of the domain name discontinued, proceedings would be instituted. It also indicated that Canadian Tire was prepared to attempt to resolve the matter if prompt cooperation was received. A follow up letter was sent to Respondent on November 26, 2001. On February 1, 2002, Complainant's solicitor advised that "further to our telephone conversation we are enclosing a copy of an official representative trade mark summary for the trademark CANADIAN TIRE. As you will see, there are numerous associated registrations, many of which contain the words "Canadian Tire". A further follow up letter was sent to Mr. Carriere on February 8, 2002. Complainant advises that at the time of filing the Complaint Respondent has refused to transfer the domain name. Copies of said letters are attached as Annex E to the Complaint.

(2) Rights or Legitimate Interests

Complainant submits that Canadian Tire Trade Marks have been so pervasive in Canada since 1927, 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 Canadian Tire. Complainant advises that it has not licensed or otherwise permitted Respondent to use any of its trade marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use the domain name in dispute <canadian-tire.com>.

(3) Registered and Used in Bad Faith

Complainant submits that in view of the pervasive use of the Canadian Tire Trade Marks it is difficult to conceive of a legitimate use by Respondent of the domain name in dispute <canadian-tire.com>. Complainant submits that it is difficult to conceive of a situation in which Respondent would have been unaware of this fact at the time of registration. Complainant states that the Respondent registered the domain name in bad faith and that there is no evidence that the domain name in dispute has been used in commerce as a website by the Respondent.Complainant submits that the domain name <canadian-tire.com> was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Canadian Tire for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to registration of the domain name in dispute.

Complainant cites WIPO Arbitration and Mediation Center Administrative Panel decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, (February 18, 2000) in which, it was found that the passive holding of the domain name by the Respondent amounted to the Respondent acting in bad faith as defined in the Policy. A copy of this case is attached as Annex [F] to the Complaint. Complainant also cites recent Ferrari S.p.A. v. Pierangelo Ferrari, WIPO Case No. D2001-1004 (October 1, 2001) and Banconsumer Service, Inc. v. Mary Langthorne, WIPO Case No. D2001-1367 (January 20, 2002). Copies of these cases are attached as Annex [G] to the Complaint.

Complainant submits that the Respondent is passively holding the domain name in dispute in a manner demonstrating bad faith.

B. Respondent

The Respondent avers that the disputed domain name is not identical to nor confusingly similar to the marks cited by the Complainant, nor has the domain name been registered or use in bad faith. Respondent submits that Registrant has a legitimate right to and interest in the domain name.

History

Respondent submits that he decided on a career change in early 2000 and intended to take courses in web site development. His friend Harold Hopink has been carrying on business as California Tire, a Canadian company selling tires, automotive accessories, lift kits and installation services in Langley, British Columbia for approximately ten years. Most of his products are imported from California. Mr. Hopink wished to be available online to Canadian customers looking for tires and other products. California Tire operates a web site at "www.californiatire.com". Respondent submits that Respondent and California Tire decided to register the domain name <canadian-tire.com> to point or link to the California Tire site, in order to route Canadian customers looking for tire products.

Respondent registered the domain name on or about March 3, 2000. Respondent submits that his son was born in May 2000 and his intentions to return to school were suspended.

Respondent submits that he was unsure how to complete the online forms when registering the domain name. He left some fields blank. He updated his address on registration and after moving and provided the Complainant with all his contact information. He attempted to add his name to the registration information but the record was frozen upon filing of the Complaint.

Respondent submits that he responded to the Complainant's lawyer's letter of November 13, 2001, by telephone indicating he had done nothing wrong and did not intend to transfer the domain name to the Complainant. Respondent advised he responded to all correspondence from Complainant's lawyer and at no time did he indicate that he wished to sell, transfer or be compensated for the domain name.

Respondent submits that he has not to date established a web site and does not intend to do so. Respondent advises that he has prepared to establish a link from the domain name <Canadian-tire.com> to the California tire home page. Respondent advises that the domain name was registered with the intent to point it at the California Tire web site.

(1) Identical or Confusingly Similar

Respondent submits that the domain name <canadian-tire.com> is not identical to nor confusingly similar to the marks cited by the Complainant. Respondent admits that the domain name is similar to some of Complainant's Marks. Respondent submits that due to the design elements, registration in color and disclaimers of the words "Canadian" and "tire" and geographical restrictions on the trademarks of the Complainant, the domain name cannot be considered confusingly similar to Complainant's marks.

Respondent submits that Complainant has provided copies of the Canadian Intellectual Property Office database records but not registration certificates. Respondent submits that Complainant's marks are not distinctive and asserts that they were not registrable at the time of registration and that there is no evidence of use of the Complainant's trademarks.

Respondent submits that the use of the domain name <canadian-tire.com> as a link to the California Tire web site would not constitute trade-mark infringement or passing-off due to the difference in wares and services associated with the marks, channels of trade, specialized nature of the California Tire customers and their sophisticated knowledge and the clear indication on the California Tire web site that it is a small company in Langley, British Columbia. The California Tire web site does not use the words "Canadian Tire" together or as a trade mark.

Respondent submits that "registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that a mark is inherently distinctive" and cites WIPO Case D2001-1367, Tab G, p. 8.

Respondent submits that a panel shall look to the rules of law set out in decisions of the court in the U.S. where both the Complainant and Registrant are domiciled in the U.S.

Respondent sets out the test for confusion under Canadian Trademark Law and submits that the domain name <canadian-tire.com> is not confusing with the Complainant's CANADIAN TIRE marks. Respondent suggests that use of the domain name in dispute <canadian.tire.com> would not be likely to lead to the inference that the wares associated with those trade-marks are offered by the same person.

Respondent submits that "Canadian" is a commonly used word and is clearly descriptive of a geographical location. Respondent submits that "tire" is clearly descriptive of tires and wheels. Many trademarks in the Canadian Trademarks database contain the words "tire" and many others incorporate the word "Canadian".

Respondent discusses "inherent distinctiveness" (page 7 of Response) and "Nature of the Wares, .Business and Trade" at pages 8 to 10 of the Response. Respondent further discusses "Degree of Resemblance" of the individual marks owned by Complainant and discusses the registrability of these registered trademarks on pages 10 to 13 of the Response.

In conclusion Respondent submits that the trademark 'CANADIAN TIRE' has low inherent distinctiveness and therefore small differences will distinguish a domain name from the marks. Respondent avers that the channels of trade of the wares are significantly different.

Respondent submits that the domain name is not identical nor confusingly similar to the Complainant's marks. Respondent submits that the registration is legitimate and based on preparations to link the domain name in dispute <canadian-tire.com> to California Tire's web site.

(2) No Rights or Legitimate Interests in the Domain Name

The Respondent's first submission is that some of the registrations include a disclaimer to the exclusive use of the words "Canadian" and "tire" apart from the trade-mark. Secondly the Respondent submits the Respondent has made demonstrable preparation to use the domain name <canadian-tire.com> as a link to a friend in Canada who is involved in selling tires under the domain name <californiatire.com>. As stated at paragraph B [7] at page 3 of the Response: "The Respondent and California Tire decided to register the Domain name to 'point' or link to the California Tire site, in order to route Canadian customers looking for tire products."

3) Domain Name Registered and Used in Bad Faith

The Respondent submits that the domain name was not registered for selling to Canadian Tire for an amount in excess of the Respondent's out of pocket expenses in registering the domain name in dispute. The Respondent submits that Respondent has not provided false contact details. The Respondent submits that Complainant's trade-marks are weak and descriptive, containing design elements in certain cases. The Respondent submits that linking the domain name in dispute to the California Tire web site will when effected be a legitimate use of the domain name <canadian-tire.com>.

 

6. Discussion and Findings

The Panel has reviewed the Complaint and the Response.

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity to a trademark or service mark

The Respondent submits that the word "Canadian" is of geographical significance and the word "tire" is the name of the wares and the trade-mark Canadian Tire is weak. The Respondent's argument does not take into account the concept of secondary meaning. By extensive use in Canada for 75 years and the fact that 90% of adult Canadians shop at Canadian Tire stores at least twice a year and most households in Canada receive a Canadian Tire Catalogue each year the trade-mark CANADIAN TIRE is a very well known trade-mark throughout Canada in association with tires. The domain name <canadian-tire.com> is confusingly similar to the trade-mark CANADIAN TIRE.

Rights or Legitimate Interests

The Respondent submits that once the Respondent activates its website <canadian-tire.com> the website will link to the website of a friend who advertises and sells tires at "californiatire.com". It is not a legitimate use of the domain name <canadian-tire.com> to divert Canadian Tire customers to the website of California Tire.

Registered and Used in Bad Faith

The Respondent submits that California Tire sells expensive tires whereas Canadian Tire Ltd. sell conventional automobile tires and Canadian Tire customers will not be confused into believing that California Tires are being offered by Canadian Tire Corporation, Ltd. Once a customer looking for Canadian Tire products is diverted to California Tire's website the customer may purchase California Tire products.

The purported use of the domain name <canadian-tire.com> to attract internet users to the website of California Tire for the benefit of California Tire by creating an instantaneous likelihood of confusion to attract internet users to the California Tire website is evidence of use in bad faith under paragraph 4.b (iv) of the Uniform Domain Name Dispute Resolution Policy. (See WIPO Case D-2001-1237 Nokia Corporation v Phonestop). At the date of Registration of the domain name in dispute I find that on a balance of probabilities the Respondent was aware of the very well known trade-mark CANADIAN TIRE associated with over 435 stores across Canada.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <canadian-tire.com> be transferred to the Complainant.

 

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Ross Carson
Sole Panelist

Dated: August 6, 2002