Canadian Tire Corporation, Limited v Annie Tong

WIPO Case No. DCC2025-0009

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. Annie Tong

Case No. DCC2025-0009

1. The Parties

The Complainant is Canadian Tire Corporation, Limited, Canada, represented by Norton Rose Fulbright

Canada LLP, Canada.

The Respondent is Annie Tong, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <canadiantire-affiliate.cc> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2025. On
May 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 21, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on May 22, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on May 26, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2025.

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The Center appointed Gill Mansfield as the sole panelist in this matter on June 24, 2025. 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 is a well-known Canadian retailer. Founded in 1922, it was incorporated under the name “Canadian Tire Corporation, Limited” in 1927, and its CANADIAN TIRE stores sell a wide range of products including automotive, tools and hardware, sporting goods, outdoor and camping equipment, home goods and

other products. It has more than 1700 retail stores and gasoline outlets in Canada and has stores located in every province of Canada with the exception of Nunavut. The Complainant and its dealers, franchisees and petroleum retailers employ thousands of people across Canada and around the world. In 2024 the
Complainant had an annual revenue of Canadian dollars $14.8 billion.

The Complainant has a large portfolio of registrations for the CANADIAN TIRE trademark with registrations dating back as far as 1975, including (inter alia) the following:

Canadian trademark registration number TMA770252 for CANADIAN TIRE (word mark) registered on June

21, 2010 in classes 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 30, 35 and 36.

European Union trademark registration number 16818965 for CANADIAN TIRE (word mark) registered on

January 8, 2018 in classes 6, 7, 8, 11, 12, 16, 20, 21, 22, 28 and 35.

China trademark registration number 9369764 for CANADIAN TIRE (figurative mark) registered on January

7, 2014 in class 35.

The Complainant is the owner of the domain name <canadiantire.ca> which was registered on October 11,
2000 from which is operates its company website.

The disputed domain name was registered on March 9, 2025 and at the time of the filing of the Complaint resolved to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the entirety of the Complainant’s mark, and that the addition of the element “affiliate” in the disputed domain name does not preclude a finding of confusing similarity but on the contrary gives the false impression that the disputed domain name is used by the Complainant or a legitimate affiliate, and increases the likelihood of confusion.

It submits that the Respondent has no legitimate interest in the disputed domain name. The Complainant states that the Respondent has not been authorised or licensed by the Complainant to use the CANADIAN TIRE trademark in any way, including in respect of the disputed domain name, and that the Respondent has no connection or affiliation with the Complainant. It submits that the Respondent is not commonly known by the disputed domain name and that the Respondent has never made any bona fide use of the disputed domain name. It points to the fact that the disputed domain name was registered decades after the date that the Complainant first started using and promoting the CANADIAN TIRE mark in relation to its own goods and

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services. It further submits that the use of the CANADIAN TIRE mark in its entirety suggests an intention to target the Complainant and to misleadingly divert users and business, which it contends does not constitute bona fide use.

The Complainant argues that the Respondent acted in bad faith in registering the disputed domain name in 2025 when the CANADIAN TIRE mark had been registered and known for decades and that, in the circumstances, it is highly improbable that the Respondent was not aware of the Complainant’s mark when it registered the disputed domain name. It further submits that the use of the CANADIAN TIRE mark in its entirety supports the contention that the Respondent targeted the Complainant and its trademark. Finally, the Complainant contends that the non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant carries the burden of proving:

1. that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights, and

1. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and

2. that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the CANADIAN TIRE mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, the addition of the term “-affiliate”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration
requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview
3.0, section 1.11.1. As such, the country code TLD “.cc” in the disputed domain names is disregarded for the

purposes of the first element confusing similarity test.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that Respondent has not been authorised or licensed by the Complainant to use the CANADIAN TIRE trademark in any way, including in relation to the disputed domain name, and the Respondent has no connection or affiliation with the Complainant. The Respondent is not commonly known by the disputed domain name. There is also no evidence of use, or demonstrable preparations to use, the disputed domain name for a bona fide offering of goods or services, or evidence of legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name resolves to an inactive webpage.

The disputed domain name itself comprises the Complainant’s well-known CANADIAN TIRE mark in full with the addition of the descriptive term “-affiliate”. The Panel notes that the term “affiliate” suggests some connection or relationship with the Complainant, and falsely creates the impression that the disputed domain name is that of the Complainant, or related to, linked to or affiliated with the Complainant and its CANADIAN TIRE business and trademark.

As such the Panel finds that the composition of the disputed domain name is such as to carry a risk of implied affiliation that cannot constitute fair use, as it effectively impersonates the Complainant, or suggests affiliation with, or sponsorship or endorsement by, the Complainant. WIPO Overview 3.0, section 2.5.1.

Further, under paragraph 14(b) of the Rules, the Panel may draw from the lack of response of the Respondent such inferences as it considers appropriate. The Panel is of the view that the lack of response from the Respondent corroborates the absence of any rights or legitimate interests of the Respondent in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the long history and reputation of the Complainant’s CANADIAN TIRE brand and that it has trademark registrations dating back almost 50 years. The Respondent in contrast registered the disputed domain name in March 2025, many decades after the Complainant first began using the CANADIAN TIRE mark in association with its goods and services. The Panel also notes the structure and composition of the disputed domain name, comprising the entirety of the Complainant’s CANADIAN TIRE trademark with the term “affiliate” which (as noted above) implies some connection, affiliation or relationship with the Complainant and its trademark.

Having regard to these factors the Panel finds that it is highly implausible that the Respondent was unaware of the Complainant and its CANADIAN TIRE brand and trademarks when the disputed domain name was registered, and that it registered the disputed domain name with the Complainant’s CANADIAN TIRE trademark in mind.

The record shows that the disputed domain name resolves to an inactive webpage.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <canadiantire-affiliate.cc> be transferred to the Complainant.

/Gill Mansfield/
Gill Mansfield
Sole Panelist
Date: July 8, 2025