Indb.com

The timeline behind indb.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION IMDb, Inc. v. Seventh Summit Ventures Claim Number: FA0503000436735 PARTIES 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. 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 Panelist in this proceeding. The Honorable Irving H. Perluss (Ret.), the Honorable James Carmody, and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists. PROCEDURAL HISTORY 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS 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. FINDINGS 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. DISCUSSION 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. Identical and/or Confusingly Similar 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). DECISION 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 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.