IMDb, Inc. v. Seventh Summit Ventures
Claim
Number: FA0503000436735
Complainant is IMDb, Inc. (“Complainant”), represented
by Kevin M. Hayes, of Klarquist Sparkman, LLP,
One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204. Respondent is Seventh Summit Ventures (“Respondent”), 15 Charter St., St. Johns,
West Indies 100, AG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <indb.com>, registered with Tucows Inc.
The
undersigned certifies that they have acted independently and impartially and,
to the best of their knowledge have no known conflict in serving as Panelist in
this proceeding.
The
Honorable Irving H. Perluss (Ret.), the Honorable James Carmody, and the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 10, 2005.
On
March 8, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <indb.com> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 30, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@indb.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Irving H. Perluss (Ret.), the Honorable James Carmody, and the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelists with the Honorable
Charles K. McCotter, Jr. being designated as Chair of the Panel.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, IMDb, Inc., makes the following assertions:
1. Respondent’s <indb.com>
domain name is confusingly similar to Complainant’s IMDB mark. Respondent, Seventh Summit Ventures, is a
recidivist cybersquatter that has registered a typo of Complainant’s famous
trademark “IMDB”. The typo simply
substitutes the letter M in Complainant’s trademark with the letter N. This typo is likely to occur because the M
is located next to the N on the standard QWERTY keyboard used in North America
and elsewhere. The <indb.com>
domain name is thus merely a typo of Complainant’s tradename and trademark,
obviously chosen for its confusing similarity.
2. Respondent does not have any rights or
legitimate interests in the <indb.com> domain name.
3. Respondent registered and used the <indb.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
one of the world’s best known providers of movie reviews, information, and
searching services, which it offers from its website at IMDb.com under its
tradename and trademark IMDB.
Complainant’s services have been provided in connection with its
trademark IMDB since as early as 1995.
In 1996, “[i]n the United States alone, Internet Movie Database [IMDB]
[received] 1.2 million hits a day.”
Peter M. Nichols, Cinema trivia
abounds online; Web sites let film - buffs rile Ratso, curry favor in India and
mess with Texas, Austin
American-Statesman, November 9, 1996, at C10. A screen capture from the Wayback Internet Archive shows Complainant’s
use of IMDB in January of 1997. “By
January 1998, IMDB was becoming one of the most popular Web sites in the
world.” Nikki Finke, Do You IMDB?, LA Weekly, Aug. 6-12, 2004.
Today, “[t]he IMDb is the 41st-most-popular site on the Web, according
to Internet traffic numbers compiled by Alexa; it receives more than 18 million
unique visitors a month.” Cade Metz, The Flick Files; Inside the making of the
Internet Movie Database, PC Magazine,
June 28, 2004, at 60. Complainant also
has a trademark registration for its IMDB mark, United States Trademark
Registration No. 2,609,882.
Respondent, a
cybersquatter, registered the <indb.com> domain name on August 8,
1997.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
rights in the IMDB mark, which Complainant uses in connection with “movie
reviews, information, and searching services” via its website located at the
<imdb.com> domain name.
Complainant registered the IMDB service mark with the U.S. Patent and
Trademark Office (Reg. No. 2,609,882; issued Aug. 20, 2002). The mark has been in use since January 30,
1996.
However,
Respondent registered the <indb.com> domain name on August 8,
1997, which raises a question of priority between the competing
registrations. Policy ¶ 4(a)(i) requires
a complainant’s rights in a mark to predate the disputed domain name
registration. In the instant case, the <indb.com>
domain name was registered on August 8, 1997. Complainant did not file for its federal service mark
registration until December 21, 2000.
Therefore, Complainant’s reliance upon its federal registration
post-dates Respondent’s domain name registration. See Abt Elecs., Inc. v.
Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004)
(Complainant's rights must predate Respondent's registration of a domain name
in order for Complainant to prevail under Policy
¶ 4(a)(i)); see
also B&V Assoc., Inc. v. Internet Waterway, Inc., FA
147531 (Nat. Arb. Forum Apr. 15, 2003) (concluding that Policy
¶ 4(a)(i) “assumes that Complainant's rights must predate Respondent's domain
name registration” because the Policy “was intended to protect against
infringement of existing trademark rights”); see also Transpark
LLC v. Network Admin., FA 135602 (Nat. Arb. Forum Jan. 21, 2003)
(finding that Complainant could not establish rights in its relied upon mark
pursuant to Policy ¶ 4(a)(i) because
Respondent’s domain name registration
predated Complainant’s trademark rights).
Complainant
may have established trademark rights apart from the presumption afforded by
federal trademark registration prior to Respondent’s registration of the domain
name in 1997 through secondary meaning.
See Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 769 (1992),
citing Restatement (Third) of Unfair Competition § 13, pp. 37-38, and
Comment a (Tent. Draft No. 2, Mar. 23, 1990) (“The general rule regarding
distinctiveness is clear: An identifying mark is distinctive and capable of
being protected if it either (1) is inherently distinctive or (2)
has acquired distinctiveness through secondary meaning.”). However, it is unnecessary to determine
whether Complainant has rights in the IMDB mark that have priority over
Respondent’s 1997 registration, because of a lack of confusing similarity between
the <indb.com> domain name and the IMDB mark.
Complainant
contends that the domain name, <indb.com>, is confusingly similar
to Complainant’s famous IMDB mark because the domain name fully incorporates
Complainant’s trademark, except the mere substitution of the letter “M” in
Complainant’s mark with the letter “N.”
Prior cases decided under the Policy have held that domain names are
confusingly similar to third-party marks where the only difference between the
names and marks is the substitution of one letter in the mark with another,
especially where the trademark or service mark is highly distinctive. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding the domain name
<tdwatergouse.com> confusingly similar to Complainant’s TD WATERHOUSE
mark); see also Ziegenfelder Co.
v. VMH Enters., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding confusing
similarity between Respondent’s domain name, <budgetsaver.com> and
Complainant’s mark, Budget$aver).
The Panel finds
that the <indb.com> domain name is not confusingly similar to
Complainant’s IMDB mark because in “the Internet context, consumers are aware
that domain names for different Web sites are quite often similar, because of
the need for language economy, and that very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1147 (9th
Cir. 2002). Especially in cases
involving only a few letters, where those letters do not create a recognized
word as is the case with “indb,” the Panel may choose to consider whether the
scarcity of domain names should be included in its analysis. A primary difference between domain names
and trademarks is that only one entity is able to use a single domain name;
whereas many different entities are capable of using the same trademark, albeit
for different goods or services. Given
the scarcity of useful and recognizable domain names, the Panel may choose to
consider whether a possible confusing similarity between a domain name and mark
may be trumped by the competing need to allow for diversified registrants and
uses of such domain names. See
Susan Thomas Johnson, Internet Domain Name and Trademark Disputes: Shifting
Paradigms in Intellectual Property, 43 Ariz.
L. Rev. 465, 470 (2001) (“The uniqueness requirement of domain names
creates an exclusivity that has important economic ramifications, since only
one entity can use a specific domain name.
This contrasts with trademarks, where more than one entity can have the
same trademark, depending on circumstances, such as geographic location.”); see
also ISL Mktg. AG v. Chung,
D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “wc”
is an abbreviation for WORLD CUP, it is not likely the meaning most people
would give to those letters); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000)
(finding that the domain name at issue <copart.net> is not identical to
nor substantially similar to the mark registered and used by Complainant,
"CI Copart Inc. Salvage Auto Auctions"); see also Thomas Cook Holdings Ltd. v. Aydin,
D2000-0676 (WIPO Sept. 11, 2000) (finding that
the domain name, <hot18to30.com>, is neither identical nor confusingly
similar to Respondent's trademark "Club 18-30”).
Complainant has
failed to satisfy the provisions of Policy ¶ 4(a)(i).
Having failed to
establish the first element required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it
is Ordered that the Complaint be DISMISSED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist, Chair
The Honorable Irving H. Perluss, Panelist
The Honorable James A. Carmody, Panelist
Dated:
April 25, 2005
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