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Internet Movie Database, Inc. v. 384128 Canada Inc., British Columbia International Commercial Arbitration Centre Case No. 00047 - by Eric Macramalla

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Domain Name: imdb.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: Elizabeth Cuddihy, Q.C. Kenneth A. Gamble R. John Rogers

The Complainant was one of the world's best known providers of movie reviews, information and searching services offered through its site at imdb.com. The Complainant was the owner of Canadian trade-mark registration for IMDB.

When the Complainant first contacted the Registrant, the disputed domain name was pointing to a website hosted by DomainSponsor.com. Following the issuance of the Complainant's demand letter, the administrative contact name was changed, and the domain name was pointed to a website entitled "Famous Quotes: Inspiration and Motivation 4 Discovery & Balance". The site claimed to contain "a very selective collection of famous inspirational and motivational quotes". When contacted a second time by the Complainant, the Registrant indicated that it may be willing to discuss the potential for "an amicable transfer".

The Panel held that the domain name was confusingly similar to the Complainant's mark, and that the Complainant had rights that predated the domain name registration.

On the issue of bad faith registration, the Complainant took the position that the Registrant had engaged in a pattern of abusive registrations, as it was the owner of a number of domain names containing third party marks, including nhl.ca , nflfootball.ca , and tragicallyhip.ca. The Panel agreed with the Complainant's position and made a finding of bad faith.

The Panel also made a finding of bad faith as per sub paragraph 3.7(c), which provides that bad faith will be established if the Registrant registered the domain name primarily for the purpose of disrupting the business of the Complainant, who is a competitor of the Registrant. In particular, the Panel noted that this bad faith factor is satisfied where the use of the domain name creates a likelihood of confusion among end users as to affiliation or sponsorship, and includes trade-mark infringement and passing off. In the view of the Panel, while the Registrant did not intend to provide the exact same services as those offered by the Complainant, the Registrant was clearly competing directly with the Complainant for Internet traffic.

The Panel held that the Registrant did not have legitimate interest in the domain name.

In light of the foregoing, the domain name was transferred to the Complainant

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