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Canadian Tire Corporation, Limited v. Juancho Feliciano [2005] GENDND 678 (4 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. Juancho Feliciano

Case No. D2005-0375

1. The Parties

The Complainant is Canadian Tire Corporation, Limited, Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.

The Respondent is Juancho Feliciano, Toronto, Ontario, Canada.

2. The Domain Names and Registrar

The disputed domain names <cantire.biz> and <cantire.info> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 11, 2005, and on April 14, 2005, on hard copy. On April 12, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On April 12, 2005, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <cantire.biz> and providing the contact details for the administrative, billing, and technical contact. Wild West Domains, Inc. also transmitted by email to the Center its verification response stating that Canadian TechInfo Research Enterprises is listed as the registrant organization of <cantire.info>, Juancho Feliciano being listed as the registrant individual, and transmitted the contact details for the administrative, billing, and technical contact.

The registrar added that it was not in receipt of a copy of the Complaint sent by the Complainant on April 11, 2005, as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy paragraph 4(b) (“the Supplemental Rules”). The registrar confirmed on May 31, 2005, that it had received a copy of the Complaint.

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 Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 15, 2005. On April 27, 2005, the Respondent sent an email to the Center acknowledging receipt of the Complaint both by email and on hard copy. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2005.

The Center appointed Thomas Webster as the Sole Panelist in this matter on May 20, 2005. 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.

4. Factual Background

The Complainant in this administrative proceeding is Canadian Tire Corporation, Limited, a company involved in interrelated businesses, engaged in retail, financial services and petroleum.

It is the registered owner of the Canadian trademark ‘CANADIAN TIRE’ in written and design form. This trademark was registered on May 27, 1983, and has been used in association with automotive parts including tires, tools, accessories and maintenance and service supplies.

Furthermore, the Complainant registered and is using the domain name <canadiantire.ca> to sell products relating to the Complainant’s three core areas of business: automotive parts, accessories & service, sports & leisure products, and home products. The Complainant has also obtained other registrations for domain names such as <cantire.biz> (which has not been renewed in November 2003), <cantire.com>, <cantire.net> and <cantire.org>.

Respondent registered the disputed domain names <cantire.biz> and <cantire.info> on December 17, 2003, and February 21, 2003.

On January 5, 2004, the Complainant wrote to the Respondent, and indicated that unless the registration of the domain name <cantire.biz> was transferred to the Complainant and all use of the domain name discontinued, proceedings would be instituted. On January 8, 2004, the Respondent responded that the domain name had been reserved for the business ‘Canadian Tech-Info Research Enterprises’, and denied that the registration had been made in bad faith. The Respondent indicated that it was in the process of creating a website for its business ‘Canadian Tech-Info Research Enterprises’.

On January 30, 2004, the Complainant acknowledged receipt of the Respondent’s email, ‘indicating that it found no reference to a business name registration for “Canadian Tech-Info Research Enterprises”.

The Respondent is not currently using the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the domain names <cantire.biz> and <cantire.info> are confusingly similar to the CANADIAN TIRE Trademarks because they consist of an abbreviation of the word “Canadian” and the word “tire”. Therefore, ‘A potential customer of the Complainant’s products or services would during the process of contacting either of the Disputed Domain Names reasonably believe that the website to be accessed was operated by or on behalf of the Complainant in connection with the Complainant’s business’.

Moreover, the Complainant claims that the Respondent has not demonstrated any legitimate interests in respect of the domain names that are the subject of the Complaint. The Complainant states that ‘the Canadian Tire Trademarks have been so pervasive in Canada since 1927, the year Canadian Tire was incorporated, 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’.

The Complainant also asserts that ‘it is not sufficient for the Respondent to merely assert that it has plans for the commercial use of the Disputed Domain Names since anyone could easily make an assertion of planned use’. According to the Complainant, ‘during 2004, attempts were made to try to ascertain if the Respondent was in fact attempting to use the domain name cantire.biz in conjunction with a website. It appears that no steps were taken to develop a website at this address. References to this domain name resulted in a message to the effect that it could not be found’.

Furthermore, according to the Complainant, no website is associated with the domain name <cantire.info> ‘but a notice posted at this address states Canadian Techlnfo Research Enterprises is under construction’.

The Complainant adds that ‘in light of the pervasive use of the Canadian Tire Trademarks it is difficult to conceive of a legitimate use by the Respondent of the Disputed Domain Names. It is also difficult to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration’. Therefore, the Complainant asserts that the Respondent has registered and is using the disputed domain names in bad faith.

Finally, the Complainant states that ‘the Respondent’s non-use or passive holding of the Disputed Domain Names in the case of cantire.biz for 15 months and in the case of cantire.info for 25 months is sufficient to constitute bad faith registration and use’.

B. Respondent

The Respondent did not file a response.

6. Discussion and Findings

Under the Policy, paragraph 4(a) a Complainant must prove that each of the following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark 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.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The disputed domain names <cantire.biz> and <cantire.info> sound like abbreviations of the words ‘Canadian Tire’. The term “Can” is a common abbreviation for “Canada”, and not sufficient to distinguish it from the word Canadian as used in the Complainant’s mark, and the word ‘tire’ is fully incorporated in the disputed domain name.

In WIPO Case No. D2001-0063, the panel decided that Internet users seeking Complainant’s website ‘are likely to use the name <calovernight.com>, particularly after determining that there is no active website identified by the domain name <californiaovernight.com>’. In the present case, it is also very likely that Internet users wishing to use the Complainant’s website will type ‘Can’ instead of ‘Canadian’. (See also the National Arbitration Forum case of Donna Salyers’ Fabulous-Furs, Inc. v. Fabfurs, Inc. June 28, 2004 (Trademark “Fabulous Furs” shortened to “Fabfurs”) and WIPO Case No. D2001-0603 (‘An Internet user with an interest in the management consulting area might easily not type the full “Booz·Allen Hamilton” expression. If the user typed in “booz”, thinking that that would produce on an online presentation by the Complainant, he/she would not achieve “Booz·Online”, but would reach the Respondent’s inert website. The expression “Booz·Online” indicates a site that portrays “Booz” on the Internet. So does the name <booz.com>. Hence, there is confusing similarity.’)

In fact, the abbreviation ‘can’ has been frequently used by the Complainant who has obtained registrations for the domain names <cantire.biz>, <cantire.ca>, <cantire.com>, <cantire.net>, <cantire.org>, <ecantire.com> and <e-cantire.com>.

Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant argues that the Respondent’s use of the disputed domain name ‘clearly does not constitute a bona fide offer of goods or services when the Respondent has no registered or common law rights in these marks’.

The Respondent has not filed a response although it has on two occasions sent letters in response to those of the Complainant’s lawyer. The gist of those letters is that the Respondent has registered the domain name for a business he refers to as ‘Canadian TechInfo Research Enterprises’.

However, the Complainant has found no trace of this business and has filed material to the effect that under the law of Ontario (where the Respondent is apparently located), a party is required to register a business name to conduct business under it. Therefore, the Complainant has demonstrated in this case that there is apparently no trace of the business referred to by the Respondent and that there should be a trace.

Therefore, according to the Policy paragraph 4(a)(ii) and paragraph 14(b) of the Rules, it does not appear that the Respondent has any rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

In this case, several factors point to registration in bad faith. First, the CANADIAN TIRE trademark is extremely well known in Canada. Second, the use of the abbreviation “can” for Canadian is also very widespread in Canada. Third, the Respondent appears to be located in Canada and therefore should be well aware of the CANADIAN TIRE trademark. Shortening “Canadian Tire” to Cantire for use as a domain name therefore tends to show that the registration was made in bad faith.

As regards use in bad faith, it is established that ‘paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith’ (WIPO Case No. D2000-0003). ‘Such circumstances, however, cannot be identified in abstract; “in considering whether a passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Panel must give close attention to all the circumstances of the Respondent’s behavior”’.

In this case, holding of the domain names is not entirely passive. The home page for “www.cantire.info” states that the site is “under construction” and refers to a copyright of 2003. It is not clear why this copyright notice would be from 2003 if the site is not operational now. In addition, the domain names that are being held by the Respondent are not only confusingly similar to the Complainant’s trademark, they are also similar to domain names actually used by the Complainant. The use of the name ‘Canadian TechInfo Research Enterprises’, does not assist the Respondent. To this Panelist, it is a confirmation of the common use of the word “Can” and, in the absence of an active business, it appears to be an attempt to “dress up” the domain names to fit within one of the exceptions to the Policy.

As a result, the fact that the disputed domain names <cantire.biz> and <cantire.info> are passively held by the Respondent and not being used in relation to the ‘Canadian TechInfo Research Enterprises’ more than two and a half years after registration is a sign of use of the domain names in bad faith.

Therefore, according to the Policy paragraph 4(a)(iii) and paragraph 14(b) of the Rules, it appears that the Respondent has registered and is using the domain names in bad faith.

7. Decision

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 names, <cantire.biz> and <cantire.info> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: June 4, 2005