Internet Movie Database, Inc. v. Alf
Temme
Claim Number: FA0504000449837
PARTIES
Complainant
is Internet Movie Database, 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 Alf Temme (“Respondent”),
8137 Lankershim Blvd, North Hollywood, CA 91605.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <8imdb.com>, <i8mdb.com>, <9imdb.com>, <i9mdb.com>, <imdsb.com>, <imdxb.com>, <imxdb.com>, <imdbg.com>, <imdgb.com>, <imdhb.com>, <imjdb.com>, <imdcb.com>, <imkdb.com>, <ikmdb.com>, <imdbn.com>, <imdnb.com>, <imdbv.com>, <imdvb.com>, <imdfb.com> and <imdbb.com>, registered with Moniker Online Services, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Professor
Darryl C. Wilson, Chair, Honorable Tyrus R. Atkinson, Jr., M. Kelly Tillery,
Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 5, 2005.
On
April 1, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain names <8imdb.com>, <i8mdb.com>, <9imdb.com>, <i9mdb.com>, <imdsb.com>, <imdxb.com>, <imxdb.com>, <imdbg.com>, <imdgb.com>, <imdhb.com>, <imjdb.com>, <imdcb.com>, <imkdb.com>, <ikmdb.com>, <imdbn.com>, <imdnb.com>, <imdbv.com>, <imdvb.com>, <imdfb.com> and <imdbb.com> are registered with Moniker Online Services, Inc.
and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified
that Respondent is bound by the Moniker Online Services, 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
April 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 27,
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@8imdb.com, postmaster@i8mdb.com,
postmaster@9imdb.com, postmaster@i9mdb.com, postmaster@imdsb.com.
postmaster@imdxb.com, postmaster@imxdb.com, postmaster@imdbg.com,
postmaster@imdgb.com, postmaster@imdhb.com, postmaster@imjdb.com,
postmaster@imdcb.com, postmaster@imkdb.com, postmaster@ikmdb.com, postmaster@imdbn.com,
postmaster@imdnb.com, postmaster@imdbv.com, postmaster@imdvb.com,
postmaster@imdfb.com and postmaster@imdbb.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used or the Commencement Notification, the Forum transmitted to
the parties a notification of Respondent Default.
On May 10, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Professor Darryl C. Wilson, Chair, Honorable Tyrus R.
Atkinson, Jr., M. Kelly Tillery, Esq. as Panelists.
Having reviewed the communication records, the
Administrative Panel (the “Panel) finds that the Forum 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
Forum’s Supplemental Rules and any rules and principles of law that the Panel
deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the owner
of a famous trade name and trademark, IMDB, associated with the provision of
movie reviews, information and searching services which it offers from its
website at <imdb.com>.
Complainant asserts that Respondent is engaged in typosquatting and
further asserts that Respondent has registered 20 domain names that are
confusingly similar to Complainant's trademark. Complainant also states that Respondent has no rights or
legitimate interests in the domains registered and that the domain names are
being used in bad faith since they are not associated with any trade names or
trademarks and the websites to which they are attached redirect users to a
variety of miscellaneous sites.
B. Respondent
Respondent did not file an answer to
the Complaint,
FINDINGS
Complainant is a well-known corporation
based in Seattle, Washington that is in the business of providing services
related to the movie industry. Complainant
has been offering services from its website at <imdb.com> since as early
as 1995 and has been cited by numerous publications regarding its
popularity. These publications indicate
that Complainant's website is visited and its services used by millions of
Internet users. Complainant also has
secured federal registrations for IMDB as service marks on the Principal
Register of the United States Patent and Trademark Office pursuant to Reg. No.
2,730,592 dated June 24, 2003, Reg. No. 2,612,776 dated August 27, 2002 and
Reg. No. 2,609,882 dated August 20, 2002, for International Classes 35, 38, and
41 respectively.
Respondent is an individual whose
address, as reflected in the WHOIS database, indicates that he resides in North
Hollywood, California. The domain names
in dispute are registered with Moniker Online Services, LLC whose address is
located in Pompano Beach, Florida.
Respondent's domain names are variants of Complainant's mark with six
fully including Complainant's trademark while adding one letter in front or at
the end of the same, and the other fourteen adding one letter or numeral within
Complainant's trademarks.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 used the IMDB mark since 1995 in connection with movie reviews,
information, and searching services from its website at <imdb.com>. Complainant has also provided evidence that
it holds several federal registrations for the IMDB mark. The Panel finds that the registration with
the USPTO and Complainant's continuous use of the mark in commerce demonstrates
Complainant's rights in the IMDB marks for purposes of Policy
¶4(a)(i). See Janus Int'l Holding
Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)(finding that panel
decisions have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive, and that a respondent has the burden of refuting this assumption).
Complainant further argues that the
letters and numerals added to its trademark in forming the disputed domains are
located adjacent to the correct keys for typing Complainant's mark on the
QWERTY keyboard commonly used throughout the world. The Panel finds that the disputed domain names are confusingly similar
to Complainant's mark because Respondent's marks are common misspellings of
Complainant's mark involving keys that are conspicuously placed adjacent to the
current keys comprising Complainant's mark.
See Marriott Int'l., Inc. v. SEOCHO, FA 149187 (Nat. Arb. Forum
Apr. 28, 2003)(finding that the respondent's <marrriott.com> domain name
was confusingly similar to the complainant's MARRIOTT mark because
"Respondent's typosqatting, by its definition, renders the domain name
confusingly similar to Complainant's mark").
Furthermore, the Panel finds that the
addition of the generic top level domain ".com" fails to distinguish
the domain names from Complainant's IMDB mark and therefore, the domain names
are confusingly similar to the mark under Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000)(finding that the top level of the domain name
such as ".net" or ".com" does not affect the domain name
for the purpose of determining whether it is identical or confusingly similar).
Respondent has failed to submit a
response in the proceeding thus the Panel may accept as true all reasonable
allegations contained in the Complaint unless clearly contradicted by the
evidence. Respondent has failed to
propose any set of circumstances that could substantiate its rights or
legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See Vertical Solutions Mgmt, Inc. v.
Webnet-Marketing, Inc., FA95095 (Nat. Arb. Forum July 31, 2000)(holding
that a respondent's failure to respond allows all reasonable inferences of fact
in the allegations of a complaint to be deemed true); see also Parfums
Christion Dior v. QTR Corp., D2000-
0023 (WIPO Mar. 9, 2000)(finding that by
not submitting a response, the respondent failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain
name).
Complainant asserts that Respondent is
not commonly known by any of the disputed names and notes that the WHOIS
information states that Respondent is known as "Alf Temme." The Panel finds that Respondent has failed
to demonstrate rights or legitimate interests in the domain names under Policy
¶4(c)(ii). See RMO, Inc. v.
Burbridge, FA96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
The Panel also finds that Respondent's
commercial use of the websites to which the disputed domain names resolve is
not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and
not a legitimate noncommercial or fair use of the domain names pursuant to
Policy ¶4(c)(iii). See MSNBC Cable,
LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding no rights or
legitimate interests in the famous MSNBC name where Respondent attempted to
profit using Complainant's mark by redirecting internet traffic to its own
website).
The Panel finds that Respondent's
registration of multiple domain names incorporating various misspelled versions
of Complainant's IMDB mark is evidence of bad faith registration. See Harcourt, Inc. v. Fadness, FA
95247 (Nat. Arb. Forum Sept. 8, 2000)(finding that one instance of registration
of several infringing domain names satisfies the burden imposed by the Policy
¶4(b)(ii)).
Furthermore the Panel agrees with
Complainant's contention that Respondent's registration of the domain names in
dispute constitutes bad faith because the domain names are merely typosquatted
versions of the IMDB mark. See Nat'l
Ass'n of Prof'l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003)("Typosquatting is the intentional misspelling of words with intent
to intercept and siphon off traffic from its intended destination, by preying
on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.").
Complainant argues that Respondent's
registration of domain names confusingly similar to Complainant's mark suggests
that Respondent knew of Complainant's rights in the IMDB mark. Additionally, Complainant asserts that
Complainant's federal registration gave Respondent constructive notice of the
IMDB mark. The Panel finds that
Respondent registered the domain names in dispute based on the distinctive and
well-known qualities of Complainant's mark which evidences bad faith
registration and use under Policy ¶4(a)(iii).
See Sony Kabushiki Karsha v. Inja, Kil, D2000-1409 (WIPO Dec. 8,
2000)(finding bad faith where (1) Respondent knew or should have known of
Complainant's Sony marks and (2) Respondent registered multiple domain names
which infringed upon Complainant's mark); see also Orange Glo Int'l v. Jeff
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)("Complainant's
OXYCLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof").
Complainant's marks are similarly situated and the Panel finds the
conclusions of those cases apply with equal force to the present circumstances.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <8imdb.com>, <i8mdb.com>, <9imdb.com>, <i9mdb.com>, <imdsb.com>, <imdxb.com>, <imxdb.com>, <imdbg.com>, <imdgb.com>, <imdhb.com>, <imjdb.com>, <imdcb.com>, <imkdb.com>, <ikmdb.com>, <imdbn.com>, <imdnb.com>, <imdbv.com>, <imdvb.com>, <imdfb.com> and <imdbb.com> domain names be TRANSFERRED from Respondent to Complainant.
Professor Darryl C. Wilson, Chair
Honorable Tyrus R. Atkinson, Jr.
Dated: May 24, 2005
CONCURRING AND
DISSENTING OPINION
I concur with both the
reasoning and the results with the Majority as to the six (6) domain names as
follows:
1.
<8imdb.com>
2.
<9imdb.com>
3.
<imdbg.com>
4.
<imdbn.com>
5.
<imdbv.com>
6.
<imdbb.com>
I also concur with the
Majority’s reasoning and findings for all of the domain names in question except
the reasoning and finding that the following domain names are confusingly
similar to Complainant’s Mark:
1. <i8mdb.com>
2. <i9mdb.com>
3. <imdsb.com>
4. <imdxb.com>
5. <imxdb.com>
6. <imdgb.com>
7.
<imdhb.com>
8.
<imjdb.com>
9. <imdcb.com>
10. <imkdb.com>
11.
<ikmdb.com>
12.
<imdnb.com>
13.
<imdvb.com>
14.
<imdfb.com>
These fourteen (14) domain names are simply, in my judgment, not
confusingly similar to Complainant’s Mark.
Marks made up of four letters that are clearly abbreviations are not
very strong and when one interrupts the flow of the Mark with a randomly (or
even not so randomly) selected letter or number, it makes the resulting
gibberish fairly distinct from the Complainant’s Mark. For example, I do not believe that “ikmdb”
brings to mind “imdb;” it is a meaningless string of letters and nothing more.
Respondent’s selection of letters/numbers to intersperse is curious, if
not suspicious, at best, and is substantial and convincing evidence of
registration and/or use in bad faith, but it is not evidence of
confusingly similarity, the finding of which is an essential element of a
successful complaint.
Dated: May 24, 2005
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