MTV owner gets 'mtv.ca' back from cybersquatter
In Viacom International Inc v Harvey Ross Enterprises Ltd, a Canadian Internet Registration Authority panel has ordered the transfer of the domain name 'mtv.ca' from the registrant, Harvey Ross Enterprises Ltd, to Viacom International Inc, which owns MTV Networks.
In reaching its decision, the panel applied a three-prong test in which the complainant must show:
- that the domain name is confusingly similar to a mark in which the complainant had rights before the registration date of the domain name and continues to have such rights;
- that the registrant has no legitimate interest in the domain name; and
- that the domain name was registered in bad faith.
The panel found that the first requirement was fulfilled because Viacom is the owner of trademarks that (i) contain 'MTV', and (ii) were registered in Canada before the registration of the disputed domain name. Although Ross argued that the MTV mark was not distinctive, the panel held that the registration of the mark with the Canadian Intellectual Property Office was sufficient to prove its distinctiveness.
For the second requirement, the burden lies on the complainant to provide evidence that the registrant has no legitimate interest in the domain name. If the complainant is able to do so, the onus shifts to the registrant to prove, on the balance of probabilities, that he/she has a legitimate interest in the domain name. The panel found that Viacom provided sufficient evidence that Ross had not used the domain name before being informed of Viacom's objection to the registration. The panel also held that Ross could not prove that it had a legitimate interest in the domain name, and rejected Ross's argument that it intended to use the domain name in the future - the panel stated that in order to show a bona fide intention, the registrant must (i) have taken steps with a view to commencing use of the name, and (ii) be able to explain the delay in doing so.
Finally, the panel found that Ross had registered the domain name in bad faith. Ross owned 68 domain registrations, 12 of which involved trademarks that were either registered in Canada or were the subject of current applications. Ross argued that it had registered the domain name for use in connection with its MT Vacations business, but the panel rejected this argument and held that the domain was registered in bad faith to prevent Viacom registering its trademarks as a domain name.
Javad Heydary, Heydary Hamilton LLP, Toronto
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