Canadian Tire Corporation, Limited v ΚΛΕΑΝΘΗΣ ΝΙΚΟΛΑΙΔΗΣ

WIPO Case No. D2024-4950

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canadian Tire Corporation, Limited v. ΚΛΕΑΝΘΗΣ ΝΙΚΟΛΑΙΔΗΣ

Case No. D2024-4950

1. The Parties

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

Canada LLP, Canada.

The Respondent is ΚΛΕΑΝΘΗΣ ΝΙΚΟΛΑΙΔΗΣ, Greece.

2. The Domain Name and Registrar

The disputed domain name <canadiantireltd.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29,
2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 2, 2024, the Registrar transmitted
by email to the Center its verification response, disclosing the registrant and contact information for the
disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy
LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant
on December 3, 2024, 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 amendment to

the Complaint on December 4, 2024.

The Center verified that the Complaint and the amendment to the 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 December 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2024.

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The Center appointed María Alejandra López García as the sole panelist in this matter on January 6, 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 founded in 1922, is a recognized Canadian retailer of a broad variety of goods and services. The Complainant’s “Canadian Tire” stores sell different products ranging from automotive, hardware, sporting goods, camping equipment, home goods, and others. The Complainant owns over 1,700

retail and gasoline outlets in Canada and in 2023 had an approximate annual revenue of 15.2 billion
Canadian dollars.

The Complainant has been operating under the name “Canadian Tire Corporation, Limited” since 1927. The Complainant claims that through the years it has developed substantial goodwill and reputation for its business and services, conveyed by its iconic brand and hundreds of trademarks, including but not limited to, the word mark CANADIAN TIRE.

The Complainant is the owner of nearly 250 trademark registrations, of which 234 are registered in Canada.
The Complainant also owns trademark registrations for the word mark CANADIAN TIRE in China, Hong

Kong, China, the United Kingdom, and the European Union. Among them, the following trademarks:

-Canadian Trademark for CANADIAN TIRE (word mark), Reg. No. TMA770252, in International Classes
(“ICs”) 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 30, 35, and 36, registered on June 21, 2010,
and in force until June 21, 2025.
-United Kingdom Trademark for CANADIAN TIRE (word mark), Reg. No. UK00916818965, in ICs 6, 7, 8, 11,
12, 16, 20, 21, 22, 28, and 35, registered on January 8, 2018, and in force until June 9, 2027.
-European Union Trademark for CANADIAN TIRE (word mark), Reg. No. 016818965, in ICs 6, 7, 8, 11, 12,
16, 20, 21, 22, 28, and 35, registered on January 8, 2018, and in force until June 9, 2027.

The Complainant also owns the domain name <canadiantire.ca>, registered on October 11, 2000, which displays the CANADIAN TIRE trademarks in association with the Complainant’s goods and services. The Complainant also actively promotes and advertises its goods and services through its social media accounts, namely, Instagram, X (formerly known as “Twitter”), YouTube, and LinkedIn.

The Complainant’s CANADIAN TIRE trademark has received the following recent recognitions:

(a) Brand Finance’s Canada 100 (2024) valued the CANADIAN TIRE brand in the top 25 of Canada’s 100

strongest brands.

(b) Leger’s 2024 Reputation Study identified the Complainant as one of the most admired companies in

Canada.

(c) Newsweek and Statista identified “Canadian Tire” in the top 10 World’s Most Trustworthy Companies

(2024).  

The disputed domain name was registered on October 5, 2024, and resolves to a pay-per-click (“PPC”) website with commercial links related to the Complainant's business activities and some links referencing the Complainant. The disputed domain name was also used for sending emails impersonating a Complainant’s employee to third party vendors. The Complainant has also submitted evidence showing that an email address associated with the disputed domain name was used on a business card by an individual holding himself out as a member of the Complainant’s board of directors.

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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 TIRE; that the addition of the element “ltd”, a well-known acronym of “limited” and common type of company structure, does not preclude a finding of confusing similarity with the Complainant’s trademark, which use certainly may increase the likelihood of confusion, based on the Complainant’s legal name.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, given that the Complainant has never granted any authorization or license to the Respondent to use the CANADIAN TIRE trademark in any way, including as a domain name; that the Respondent is not

commonly known by the disputed domain name; the Respondent is using the disputed domain name to fraudulently impersonate the Complainant, which emphasizes such lack of rights or legitimate interests.

The Complainant contends that the disputed domain name has been registered and is being used in bad Complainant, including through sending emails incorporating the CANADIAN TIRE trademarks to third party vendors, and impersonating an employee of the Complainant by using the name of a legitimate member of the Complainant’s board of directors.
faith, given that by the time of the registration of the disputed domain name on October 5, 2024, the

Complainant’s trademark rights over the term CANADIAN TIRE were already constituted and known in

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 must satisfy each of the three following elements:

(i) the disputed domain name is identical 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

No Response or any kind of communication has been submitted by the Respondent, despite the fair opportunity given by the Center to present its case under paragraph 2(a) of the Rules. However, the Complainant must establish the three elements of paragraph 4(a) of the Policy. See WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.3. Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute under the “balance of probabilities” or “preponderance of the evidence” standard. See paragraphs 14 and 15(a) of the Rules, and WIPO Overview 3.0, section 4.2.

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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 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 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 term “ltd”, 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 Panel finds the first element of the Policy has been established.

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.

According to the evidence submitted by the Complainant, besides the use for PPC commercial links related to the Complainant's business activity and to the Complainant itself, which, as it has been established by the previous UDRP panel decisions, does not represent a bona fide offering of goods or services where, as here, such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise

mislead Internet users (see WIPO Overview 3.0, section 2.9), the disputed domain name was also used for sending fraudulent emails impersonating a Complainant’s employee to third party vendors and as a contact email address on a business card by an individual holding himself out as a member of the Complainant’s

board of directors.

Panels have held that the use of a domain name for illegal activity here, claimed as impersonation, phishing
and fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section

2.13.1.

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

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C. Registered and Used in Bad Faith

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.

Regarding the registration of the disputed domain name, the Panel finds that, at the time of its registration,
the Respondent was likely aware of the Complainant and its trademark rights over the term CANADIAN
TIRE, given its recognition and presence across Canada and in several jurisdictions and, notably, the use of
the disputed domain name for impersonating the Complainant in furtherance of a fraudulent scheme. See

WIPO Overview 3.0, section 3.2.2.

third-party sponsored PPC commercial links, some of which are related to the Complainant, and to allegedly collect click-through fees is evidence of bad faith under paragraph 4(b)(iv) of the Policy (see	Regarding the bad faith use, the Panel finds that the use of a confusingly similar domain name to display connection with a scheme to fraudulently impersonate the Complainant, which to the Panel reinforces the finding of bad faith.
Panels have held that the use of a domain name for illegal activity here, claimed as impersonation, phishing and fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes 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 <canadiantireltd.com> be transferred to the Complainant.
/María Alejandra López García/ María Alejandra López García Sole Panelist Date: January 20, 2025