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American Multi-Cinema, Inc. v. Kapuscinski , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00025 - by Eric Macramalla

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Domain Name: amctheatres.ca
OutCome: Transfer Denied
Response Filed: No
Panellist: Cecil O. D. Branson, Q.C.

In one of the few CIRA dispute proceedings involving non-commercial uses of disputed domain names, the Panel denied the Complainant's request to have the domain name transferred to it. The requesting part was the well-known movie exhibitor, American Multi-Cinema, owner of the trade-mark AMC THEATRES and the two related domain names amctheatres.com and amctheaters.com.

Prior to receipt of the Complaint, the disputed domain name resolved to a website displaying personal pictures of the Registrant along with a gratuitous link to the Complainant's dot-com website. Upon becoming aware of the Registrant's website, the Complainant sent the Registrant a letter demanding that the domain name be transferred and threatening legal action. There was no further communication between the Registrant and Complainant, but shortly thereafter the Registrant modified the content of his website. He added the title "Ancient and Middle Class Theatres" and photographs of ancient Greek and Roman theatres, along with a disclaimer that his amctheatres.ca website was not affiliated with the Complainant. The link to the Complainant's site was removed. Approximately one year later, the Complainant again contacted the Registrant, offering to purchase the domain name for USD$1000. The Registrant responded by requesting USD$15,000.

The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member arbitration Panel to a single Panellist.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a successful Complainant must establish that the disputed domain is confusingly similar to a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.

The Panel briefly considered confusing similarity and found the disputed domain name to be confusingly similar to the Complainant's marks. However, the Complainant was not successful in establishing bad faith registration. It failed to show, as required by paragraph 3.7 of the CDRP, that the primary purpose of the registration was "villainous". The Panel cited several related cases decided under the Uniform Domain Name Dispute Resolution Policy, which cautioned against inferring bad faith registration when activities that could constitute "acting in bad faith" did not occur until "well after the original registration". In addition, the Panel noted that offers to sell domain names for more than out-of-pocket expenses are not of themselves evidence of bad faith registration, unless it can be shown that the primary purpose of registration was such a sale. There was no evidence adduced that the Registrant had profited from his registration. The original link to the Complainant's site was gratuitous in nature, the Registrant's site was non-commercial and he had not been overly willing to sell the domain name to the Complainant. Overall, the Panel held that while it was possible that the domain name was registered in bad faith, the Complainant had not established this on a balance of probabilities.

In the absence of finding bad faith registration, the Panel did not consider whether the Respondent had any legitimate interest in the domain name. The Complaint was accordingly dismissed.

This case was wrongly decided. The domain name on its face clearly suggested an affiliation or connection with the Complainant. As well, the Registrant's attempt to legitimize the registration was ill-conceived, contrived and transparent.

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