IMDB.ca Complaint Allowed

The Canadian Internet Registration Authority (“CIRA”) ordered the transfer of the disputed domain name IMDB.CA to the complainant, Internet Movie Database Inc., a provider of movie reviews, information and searching services. CIRA found that the complainant successfully established all of the elements required for a successful ruling. Of particular interest, the complainant was able to establish that although IMDB only became a registered trade-mark in 2004, four years after the domain name was registered, the complainant had the requisite level of rights in the mark by virtue of its common law rights through use of the mark since 1996. Also, the complainant established that the domain name was registered in bad faith by showing that the registrant exhibited a pattern of registering domain names of well-known marks and famous entertainment, sport related or personality names in order to prevent rightful owners from registering them. Although the registrant did not intend to provide the exact same services as those offered by the complainant, the complainant established that the primary purpose of the registration was to disrupt the business of the complainant by establishing that the registrant was nonetheless competing for the Internet traffic intended for the complainant. Although the registrant claimed to have been working on the IMDB.CA website for five years, CIRA held that a present, not future, offering of an activity was required for the registrant to establish that it had the requisite legitimate interest in the domain name.

This entry first appeared in the January 12, 2006 edition of lawsof.com. For a copy of the CIRA decision, click here.