The January 14, 2003, a World Intellectual Property Organization (WIPO) arbitration panel released its decision in Canadian Tire Corporation, Limited v. Mike Rollo. The panel ordered the transfer of the domain names canadiantiredealer.com and canadiantiredealers.com to Canadian Tire Corporation ("Canadian Tire"). The Complainant, Canadian Tire, who has aggressively defended the use of its marks on the web, successfully argued that:
  1. (i) a domain name can be confusingly similar with a registered trade-mark formed primarily of a geographic indicator where there is evidence that the mark has acquired distinctiveness: Canadian Tire Corporation, Limited v. None and Steve Carrier Case, WIPO Case No. D2002-0461.
  2. (ii) given knowledge of the marks, the use of the domain name to attract users to a tool for locating the mark holder's competitors is not a legitimate use.
  3. (iii) bad faith exists where "[t]he domain names were registered and are being used to intentionally attract for commercial gain, Internet users to the Respondent's "yourtiredealer" website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, or location of the Complainant's products or services on the Respondent's website: Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237."
For the full text of the decision, please visit: http://arbiter.wipo.int/domains/decisions/html/2002/d2002-1069.html

E-TIPS® ISSUE

03 01 20

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