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Canadian Tire Corporation, Limited v. Mick McFadden [2001] GENDND 1012 (24 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is Canadian Tire Corporation, Limited, a company incorporated under the laws of Ontario, Canada, with its principal place of business at 2180 Yonge Street, P.O. Box 770, Stn. K., Toronto, Ontario, M4S 2V9, Canada. Respondent is Mick McFadden, Automotive Sort & Rework, 418-981 Wellington Rd. South, London, Ontario, N6E 1Y8, Canada.

The domain name in issue is <crappytire.com>.

Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A. is the registrar for the domain name <crappytire.com>.

The WIPO Arbitration and Mediation Center (the Center) received the complaint on March 16, 2001, via email, and on March 20, 2001, 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 March 21, 2001, the Center transmitted via email to NSI, a request for registrar verification in connection with this case. On March 23, 2001, NSI transmitted via email to the Center, its Verification Responses, (1) confirming that the registrant of the domain name is as stated above, (2) identifying the administrative contact, (3) confirming that NSI's Version 5 Service Agreement is in effect with respect to the domain names, and (4) stating that the domain name is in ‘Active’ status.

The registrant of the domain name according to Network Solutions, Inc. is: Mick McFadden, whose address at the time of registration was Automotive Sort & Rework, 418-981 Wellington Rd. South, London, Ontario, N6E 1Y8, Canada.

On March 26, 2001, 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 April 14, 2001, (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 April 14, 2001, the Respondent forwarded a Response to the Center by e-mail, fax and courier.

On April 17, 2001, the Center forwarded an Acknowledgement of Receipt of Response to the parties by e-mail.

On April 16, 2001, the Complainant advised the Center by e-mail that it had received the Response and inquired whether the Complainant will be given an opportunity to reply to the Response. The Center advised the Complainant by e-mail on April 17, 2001, that the Center accepts supplemental filings made by either party before the appointment of the Administrative Panel, but it is at the Administrative Panel’s sole discretion as to whether such information will be considered in arriving at a decision.

On April 18, 2001, the Complainant submitted the Complainant’s Supplemental material by e-mail to the Center and to the Respondent.

On April 18, 2001, the Respondent sent an e-mail to the Center inquiring of the time limits by which he could file a further submission in response to Complainant’s additional information. The Center advised the Respondent that the acceptance of the additional information submitted by the Complainant will be decided solely by the Panelist and also advised the Respondent that he could either file directly additional material the acceptance of which would also be decided by the panelist or he could file a request to the panelist to be granted a turn for reply if the supplemental filing of the Complainant were accepted. On April 19, 2001, the Respondent filed a request that if the supplemental material submitted by the Complainant is accepted, the Respondent should be granted an opportunity for rebuttal.

On May 14, 2001, 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 May 27, 2001. Also on May 14, 2001, the Center transmitted the file in the case via e-mail and courier to Mr. Carson.

The Panel accepts Complainant’s Supplemental material submitted April 18, 2001. The Panel does not deem necessary to seek further information from the parties.

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.

- 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 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, used in Canada since May 1991 in association with operating a gas bar.

- 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.

(1) The domain name <crappytire.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.

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.

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, decided 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 submits that Canadian Tire is also colloquially referred to or known as "Crappy Tire". The term "Crappy Tire" is a slang expression derived from the Canadian Tire trade marks. Generally, the usage does not have a negative connotation but is an impertinent reference to a mass merchandiser. Complainant searched the internet for the words "crappy tire canadian" and resulted in 787 hits. Approximately 478 websites use these three words. A large number of them use the phrase "Crappy Tire" in substitution for "Canadian Tire". Copies of the printouts of these websites are attached as Annex [E] to the Complaint.

Complainant also submits that Canadian Tire is the registrant of the domain name <canadiantire.com>. Canadian Tire operates its principal websites at <canadiantire.com> and <canadiantire.ca> and can be found through other domain names.

Complainant advises that there are over 430 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 submits that Canadian Tire is frequently colloquially referred to or known as "Crappy Tire" by the public. This trade mark has been derived from the Canadian Tire trade marks and is distinctive of the Complainant. Complainant refers to the discussion of this issue in The Law of Passing-Off, by Christopher Wadlow, at pp. 354-355. Copies of the relevant pages from this text book are attached as Annex [F] to the Complaint.

Complainant submits that Respondent initially developed his website by copying selected pages of the Canadian Tire website and substituting "Crappy Tire" for "Canadian Tire". Copies of the printouts of these two websites are attached as Annex [G] to this Complaint.

Complainant also refers to cases decided in the courts of Ontario concerning infringement of a trade mark. Complainant cites Source Perrier (Societe Anonyme) v. Fira-Less Marketing Co. Ltd.(1983), 70 C.P.R. (2d) 61 (F.C.T.D.) in which a judge of the Federal Court of Canada found that the plaintiff had established a prima facie case of infringement relating to its "PERRIER" trade marks when the defendant used the words "Pierre Eh!", a reference to the then Prime Minister of Canada.

Complainant also cites a trade mark opposition, case in which a Hearing Officer found that the proposed trade mark "THE TORONTO SOK EXCHANGE" was not distinctive because it was confusing with the mark "THE TORONTO STOCK EXCHANGE".

Complainant further cites the case of Natural Footwear Ltd. et al v. Schwarz, (1986), 12 C.P.R. (3d) 84 (Ont. H.C.) concerning the trade mark "ROOTS" & representation of a beaver. The defendant used the trade mark "ROTS" in association with a parody of a beaver. The court concluded that a strong prima facie case of passing-off had been made out.

Copies of reports of these cases are attached as Annex [H] to the Complaint.

Complainant cites United States cases where relief was granted to prevent the use by defendants of a domain name similar to a trade mark of the plaintiff in circumstances where the motive of the defendant was to denigrate the plaintiff. Copies of People for the Ethical Treatment of Animals, Inc. v. Michael T. Doughney, June 12, 2000 (E.D. Va.) and Planned Parenthood Federation of America, Inc. v. Richard Bucci, March 24, 1997 (S.D. N.Y.) are attached as Annex [I] to the Complaint.

Complainant submits that parody or spoof of CRAPPY TIRE is part of the Uniform Domain Name Dispute Resolution Policy since paragraph 4(c)(iii) makes reference to an intention to tarnish a trade mark.

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 submits that due to the close association of the colloquialism or slang expression "Crappy Tire" with Canadian Tire, Respondent is attempting to create an impression of an association with Canadian Tire.

Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use the domain name in dispute <crappytire.com>.

Complainant submits that the domain name in dispute <crappytire.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 it. Complainant submits that the domain name in dispute is listed for sale at $85,000 at the website www.greatdomains.com. Copies of the printouts from this website are attached as Annex [J] to the Complaint.

Complainant submits that the Respondent has used his website to make rude, untrue and libellous statements about Canadian Tire in an attempt to force Canadian Tire to pay an exorbitant sum of money for the transfer of the domain name in dispute. Complainant submitted a copy of a page from Respondent’s website as seen in Annex [K] which included the following statement in hidden text:

"Canada’s leading rip off artist offering customers the convenience of four rip offs under one roof of automotive, sports, leisure and home products."

Complainant submits that the HTML code making up the site included the following key words in the form of meta tags:"Crappy Tire, Really Crappy Tires, Crappy Tire Corporation, Crappy Tire Store, Crappy Tire Associate Store" Canadian Tire Corporation, Limited, Crappy Tire Retail, Crappy Tire Petroleum, Crappy Tire Acceptance, eflyer, Automotive, Sports, Leisure, Hardware, Housewares, Home Improvement, Source Canada, tools, power tools, AquaQuest, Stay Alert…Stay Safe, Cycle Safe, Junkmaster, CrappyCraft, Auto Club, credit card, mastercard, plumbing, stamps, ‘money’, coupons, money machine, Bob Izumi, Outdoors Club, Hoop It Up, CASCAR, Team Crappy Tire, Canada Day, Automotive, sports, hardware, home, auto service, car service, car repair, hardgoods, retailer, Canada, racing, fishing, NBA, sports and leisure, home products".

Complainant submits that after complaints were made to the Respondent the website was modified to remove the name Canadian Tire from the meta tags and to delete the statements from this site. The current form of the Respondent’s website is described as currently unavailable. A copy of this page is attached as Annex [L] to the Complaint.

Complainant states that the Respondent has used the domain name <crappytire.com> in a manner demonstrating bad faith.

Complainant cites WIPO Arbitration and Mediation Center Administrative Panel decision World Wrestling Federation Entertainment, Inc. v. Michael Bosman decided January 14, 2000, in which it was found that the offer to sell a domain name in such a manner constituted use of the domain name in bad faith as defined in the Policy. A copy of this case is attached as Annex [M] to the Complaint.

Complainant cites WIPO Arbitration and Mediation Center Administrative Panel decision Walmart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, decided July 20, 2000, in which it was found that a demand for payment relating to a critical site is fundamentally inconsistent with the right of free expression. A copy of this case is attached as Annex [N] to the Complaint.

Complainant submits that subjecting the Complainant’s trade mark to ridicule or attack is not compatible with the function of a trade mark and not a denial of any Charter rights. Complainant enclosed a copy of Cie Générale des Établissements Michelin-Michelin & Cie v. C.A.W. – Canada et al., (1996) 71, C.P.R. (3d) 348 (F.C.T.D.) as Annex [O] to the Complaint.

Respondent submits the Complainant shows that Canadian Tire Corp. owns many trade marks. None of these are the domain name in question, <crappytire.com>. Respondent submits that this issue is not covered by the Uniform Domain Name Dispute Resolution Policy.

Respondent refers to Complainant’s submission that in a previous decision by WIPO, "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". Respondent submits that the previous decision does not apply in any way to this case as the name in question is not confusingly similar in any way.

Respondent inquires "since when is the word "Canadian" interchangeable with or similar to "crappy""?

Respondent submits that since the Complaint does not conform to all three requirements of the policy paragraph 4 (a) he requests an immediate finding of reverse highjacking.

Respondent advises he will not dispute the fact that Canadian Tire Corporation is colloquially referred to as Crappy Tire. Respondent submits that the vast majority of references located in Complainant’s internet search are made to "crappy products". Respondent refers to the statement in the Complainant which states that a large number of them did use "Crappy Tire" in substitution of Canadian Tire. Respondent advises that that number is actually around 10% if only the words "crappy tire" are searched instead of the words "Canadian, crappy and tire". Respondent submits that since <crappytire> is the name in question and not "Canadian crappy tire", Complainant’s statement is an attempt to manipulate the facts. Respondent submits that using the term "crappy tire" on google.com 6,380 results were found on April 13, 2001. Also, the vast majority of returns were for references to "tires" that were "crappy" and had nothing to do with Canadian Tire. Respondent did not attach copies of the search results but advises that the results are readily available online.

Respondent submits that Complainant’s remark "that this trade mark has been derived from Canadian Tire trade marks and is distinctive of the complainant" is a blatant lie. Respondent submits that the term <crappytire> is not trademarked "and if anyone has a right to the trademark it is I who first used it in a commercial fashion". Respondent advises that he has over 75 domain names, some of which have been developed. Respondent submits that he "spent $80,000 developing citybycity.com (trademarked name) only to run out of money and having to shut down all his sites because of lack of funding. Respondent submits he spent his entire life savings and borrowed another 30,000 dollars.

Respondent advises that he owns mad4u.com which is a planned dating / singles website. He owns nastybugs.com, jetdive.com, trafficmarkingservices.com. and drugbasics.com. "I have every intention of developing websites on all of these sites. Mbula.com was a pet adoption site and mickmcfadden.com is a personal site."

Respondent submits that the reference to the text book "The Law of Passing Off" as stated in the Complaint is irrelevant.

Respondent denies Complainant’s allegation that he developed his website operated under the domain name <crappytire.com> by copying selected pages from the Complainant’s website. Respondent advises that he looked at those pages and made them similar in format but content and wording were completely changed.

Respondent refers to the most recent case of walmartcanadasucks.com vs. Walmart Canada in which the judge found in favor of sucks.com, the owner of the domain name. Respondent also refers to a recent precedent-setting U.S. court case, brought against the owner of ‘lucentsucks.com' by Lucent Technologies, in which Judge Brinkema ruled that the owner of "lucentsucks.com' did not violate trademark law or the provisions of the U.S. Anti-Cybersquatting Consumer Protection Act, and subsequently was permitted to keep his domain name. Respondent quotes from the ruling of the presiding Judge Brinkema "The likelihood of confusion is a key element when determining whether trademark infringement or dilution has occurred. The average consumer would not confuse ‘lucentsucks.com' with a Web site sponsored by the plaintiff. Registering domain names in the form of [company name] sucks.com to provide a forum for critical commentary is not uncommon, and is part of an Internet phenomenon known as ‘cybergriping.'" Respondent submits that this decision applies to this case directly and as such this information alone should be cause enough for a finding of reverse high jacking on the part of Canadian Tire Corp.

Respondent submits that Complainant’s attorneys contacted him and asked for a penalty to be paid by him for damages and the name to be signed over to them. (Annex "A" to Response.) Respondent advises they also asked him to remove the site "as an act of good faith" until the dispute is resolved. Respondent advises he did immediately, under threat of suit. Respondent submits that Complainant’s attorneys contacted him initially about acquiring the domain, and Respondent has stated that the domain is not for sale to them. He would sell it to someone else as long as the sale price was fair market value. He would sell almost any of his domains in order to raise funding for development of other domains.

Respondent submits that a copy of his initial development plan for his website at <crappytire.com> was enclosed with the Complaint.

Respondent submits that it is a legitimate website, he planned a message board for "cyber-griping" to enhance the website, but was set back by the threatened lawsuit. Respondent attached as annex "A" a copy of the letter from the solicitor for Canadian Tire which was sent to him by e-mail and courier on March 9, 2000.

Respondent submits that he did not offer to sell Complainant the domain. He advises Complainant contacted him, wanting to take it away from him.

Respondent wishes to have it on record that he feels he was not given enough time for the response. The plaintiff had over a year to prepare and he had only 20 days. Respondent submits that this obviously slants decisions in favor of plaintiffs and he feels this time period should be expanded to a fair length of time.

Finally Respondent submits that this case should be decided before a court, not WIPO as it does not meet the guidelines.

In its further submissions dated April 18, 2001, the Complainant denies the various points made by the Respondent.

Complainant attaches copies of the decisions in WIPO Arbitration and Mediation Center Administrative Panel decision Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com and Kenneth J. Harvey, decided November 23, 2000, and Lucent Technologies, Inc. v. Lucentsucks.com, May 3, 2000 (E.D. Va) as Annex [A] to this Supplemental material. Complainant submits that the reference made by the Respondent to the Lucent case is not accurate nor was a final finding made on the issue of confusion.

Complainant submits a complete copy of the letter of March 8, 2000, marked as Annex [A] to the Response. Complainant denies it asked the Respondent to remove the site "as an act of good faith". Complainant submits that it has not directly or indirectly contacted the Respondent with respect to acquiring the domain name in issue.

The Panel has reviewed the Complaint, the Response and the Complainant’s Supplementary Submissions.

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.

The Complainant has not alleged or filed proof of any use of the words "CRAPPY TIRE" by the Complainant as a trademark or service mark used to distinguish the goods or services of the Complainant from those of others.

In paragraph 7 of the Response the Respondent submits that while Canadian Tire owns many trademarks for or including Canadian Tire, none of the registered trademarks are for or include CRAPPY TIRE.

Section 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy does not apply to a dispute between corporate or business names not used in association with wares or services by the Complainant and a domain name.

The trademark CRAPPY TIRE is not in fact used by the Complainant as a trade name or business name but is a slang expression applied by younger customers to the place of business or the business of Canadian Tire stores or business.

The Complainant attached as Annex F pages 354 and 355 from The Law of Passing-Off, by Charles Wardlaw, relating to spontaneous public adoption of a name, mark or get up which become distinctive of the plaintiff’s goods. However, based on the submissions and evidence in the Complaint the spontaneous use of CRAPPY TIRE by the public is as a trade name or corporate name and not as a trademark or service mark.

On April 12, 2001, WIPO made available to the public an Interim Report of the Second WIPO Internet Domain Name Process entitled The Recognition Of Rights And The Use of Names In The Internet Domain Name System. Paragraphs 287 to 330 relate to possible extension of dispute resolution to trade names. Although it is recognized that the Interim Report contains only preliminary recommendations on which further comments are sought, at paragraph 322 it is concluded: "It is not recommended that a special procedure for the protection of trade names against abusive registration and use as domain names be established at this stage through modification of the UDRP." It remains to be seen, of course, whether this recommendation will remain unaltered in the Final Report, expected to be published in the summer 2001.

The law with respect to passing off extends to businesses as well as trademarks or service marks. The Uniform Domain Name Dispute Resolution Policy does not extend to business names not associated with wares at the time of sale or used in association with the advertisement of services.

The Complainant referred to a previous WIPO Arbitration and Mediation Center Administrative Panel decision Canadian Tire Corporation, Limited v 849075 Alberta Ltd. carrying on business as Par5Systems. A copy of the decision was attached as Annex D. The domain names in dispute were <ecanadiantire.com> and <e-canadiantire.com>. However, in that case there was evidence of extensive use of CANADIAN TIRE in association with wares and services. In this case there is no evidence of use of CRAPPY TIRE by the Complainant in relation to wares and services. The use of CRAPPY TIRE is used spontaneously by certain customers as a substitute business name for the Complainant. The decision in this case relates to a different word, a different domain name and different submission and evidence.

The Panel finds that the Complainant has failed to establish that the Complainant has rights in the trademark or service mark CRAPPY TIRE in Canada. The Complainant therefore failed to prove a required element under Paragraph 4.a.(i) of the Policy. The Panelist makes no finding with respect to trade names, passing off or other areas of unfair competition not covered by the Policy.

Given the finding under the previous heading that the Complainant has failed to establish that the domain name in dispute is identical or confusingly similar to a trademark owned by the Complainant, the Panel makes no finding with respect to the issues in paragraphs 4.a.(ii) and (iii) of the Policy.

The Complaint is dismissed.

Ross Carson
Sole Panelist

Dated: May 24, 2001