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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canadian Tire Corporation Limited v. Digi Real Estate Foundation
Case No. D2006-1117
1. The Parties
The Complainant is Canadian Tire Corporation Limited, of Toronto, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is Digi Real Estate Foundation, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <canadiantireoptionsmastercard.com> is registered
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2006. On September 4, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 5, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2006.
The Center appointed Knud Wallberg as the sole panelist
in this matter on October 20, 2006. 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,
4. Factual Background
The Complainant is a Canadian based company established in 1927 that sells wares including tires, automotive parts and accessories, tools, sports and leisure products and home and garden products through independently owned stores of which there are more than 460. The Complainant also runs an extensive e-business site under the <canadiantire.ca> domain name just as the Complainant is the whole owner of Canadian Tire Bank and Canadian Tire Financial Services. Canadian Tire Bank is licensed to use the MASTERCARD trademark owned by MasterCard International Inc.
The Complainant is the proprietor of several trademark
registrations in Canada including registrations of CANADIAN TIRE, OPTIONS and
CANADIAN TIRE OPTIONS. The latter is registered and used for operation of an
incentive program in which points redeemable for awards are accumulated by Canadian
Tire credit card holders.
5. Parties’ Contentions
The disputed domain name consists of one or more of the Complainant’s trademarks with the addition of the trademark MASTERCARD. The domain name must therefore be considered to be confusingly similar with the Complainant’s rights cf. Policy, para. 4(a)i).
The Complainant has not licensed or otherwise permitted the Respondent to us its marks, nor has it permitted the Respondent to apply for or use the disputed domain name. Further, since the Respondent does not seem to have any rights in the names that are incorporated in the domain name on the concrete use of the domain name does not constitute any bona fide offering of goods or services.
Due to the notoriety of the Complainant’s marks the Respondent must have been aware of the Complainant’s rights when registering the disputed domain name. The name has been registered and is being used for the purpose of attracting for personal gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant. The website established under the disputed domain name is a search engine, which contains links to inter alia tires, tools and credit cards, all of which are products and services offered by the Complainant. In addition the Respondent has been involved in several other domain name disputes under the UDRP similar to the present one which clearly indicates a pattern of conduct in registering domain names that prevent the owner of a trademark from reflecting the mark in a corresponding domain name.
Consequently, the Complainant contends that all the requirements of the Policy, para. 4(a) is met and the contested domain name shall be transferred to the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains the Complainant’s distinctive trademark CANADIAN TIRE OPTIONS in its entirety, but also incorporates the term “mastercard”, which the Panel understands is also a trademark belonging to a third party, namely MasterCard International Inc.
UDRP Panels have consistently found that the Respondent’s inclusion of
a third party’s trademark in its domain name does not necessarily eliminate
the visual impression that the disputed domain name is associated with the Complainant’s
trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin
Marketing, WIPO Case No. D2002-0793,
Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793 and F.
Hoffmann-La Roche AG v. Bob, WIPO Case No.
Also, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark to apply for the domain name incorporating the Complainant’s mark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case it is unlikely that any such rights or interests may exist.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove
the Respondent’s registration and use of the domain name in bad
faith. Paragraph 4(b) sets out, by way of example, a number of circumstances
which may be taken as indicative of bad faith.
Given the notoriety of the Complainant’s trademark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
As described above, the disputed domain name is used for a “search engine” which contains links to inter alia tires, tools and credit cards, all of which are products and services offered by the Complainant. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Panel also finds that the evidence show that the Respondent is indeed engaged in a pattern of conduct in registering domain names containing the trademarks of others, which is an indication of bad faith under the UDRP.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.
The Panel notes that this results in the transfer to the Complainant of a domain
name that includes the trademark MASTERCARD, which the Panel understands is
owned by a third party, MasterCard International Inc., that is not a party to
the current proceeding. In other cases under the UDRP procedure, the Complainants
have presented evidence of the consent of other trademark owners with a potential
interest in the transferred domain name. See inter alia, Pfizer, Inc.
v. Martin Marketing, WIPO Case No. D2002-0793
and Yahoo! Inc. v. M & A Enterprises, WIPO
Case No. D2000-0748. However, while in good practice neither the Policy
nor the Rules expressly require such consent and the Panel finds no reason to
question that the Complainant’s subsidiary Canadian Tire Bank is licensed
to use the said mark. Accordingly, the Panel orders that the domain name be
transferred to the Complainant without prejudice to any rights, which may be
asserted by MasterCard International Inc.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <canadiantireoptionsmastercard.com> be transferred to the Complainant.
Dated: November 8, 2006