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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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IMDb, Inc. v. Seventh Summit Ventures

Claim No. FA0503000436735 (NAF April 25, 2005)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel rejects complainant IMDb's claim that Seven Summit Venture's registration and use of the domain name Indb.com runs afoul of complainant's rights under the UDRP.  The Panel reached this result because the domain name Indb.com is neither identical nor sufficiently similar to complainant's mark to entitle complainant to relief.

Complainant IMDb, Inc. operates the Internet Movie Database at the domain Imdb.com.  One of the web's most popular sites, Imdb's database contains extensive information about movies.  Complainant has been using the Imdb mark in connection with its operations since in or about 1995.  It obtained a US trademark registration for its mark in or about 2000.

Respondent registered the domain Indb.com in August 1997.  Described by the panel as a "cybersquatter" it presently operates a website at the indb.com domain which contains advertisements for various products which ads can be reviewed via a search engine.  On opening the site, a user will initially see ads for DVRs.  Subsequent searches for additional items will reveal additional ads for those items.  Respondent did not reply to IMDb's complaint.

Nonetheless, the Panel refused to grant IMDb relief under the UDRP.  To be entitled to such relief, a complainant must make a three part showing:

(1) the domain name registered by respondent is identical or confusingly similar to Wal-Mart's service mark;

(2) respondent has no legitimate interests in the domain; and

(3) the domain was registered and is being used in bad faith.

The Panel held that IMDb did not show that respondent was using a domain identical or confusingly similar to that of IMDb, and hence denied relief.  Importantly, the one letter difference between the two domains, Imdb.com and indb.com, was sufficient in the context of these domains to prevent such confusion.  Said the panel:

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.

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