Volume II

Issue : 4: February 19, 2004

• FCC Decides Against Regulation of VoIP But Decides to Regulate Provision of Internet Access by Public Utilities
• Canadian Recording Industry Taking Action against Individual "Uploaders"
• U.S. Court of Appeals Reverses Application of Safe Harbour Liability Limitation for Copyright Infringement by AOL
• CIRA Transfers "mtv.ca" to MTV Television in Latest .Ca Domain Name Dispute Decision
• U.S. Federal Appeals Court Upholds Wine Ban
• U.S. - Australia Free Trade Agreement Strengthens Australian Copyright Laws
• Court Upholds Jury Award of $20 Million for Copyright Infringement in Newsletter Case
• Alberta Court Finds Online Defamation Warrants Increased Damage Award
• eBay Not Liable for Negative Feedback Posted by its Users

Home > Volume II > Issue 4: February 19, 2004 > CIRA Transfers "mtv.ca" to MTV Television in Latest .Ca Domain Name Dispute Decision

CIRA Transfers "mtv.ca" to MTV Television in Latest .Ca Domain Name Dispute Decision

In a recent decision, a dispute resolution panel under the Domain Name Dispute Resolution Policy (CDRP) of the Canadian Internet Registration Authority (CIRA) has ordered the transfer of the domain name "mtv.ca" from the registrant, Harvey Ross Enterprises, Ltd., to the complainant, Viacom International Inc., which owns MTV Networks. In reaching its decision, the CIRA panel applied a three-part test in which the complainant must: 1) prove, on a balance of probabilities, that the domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights, 2) provide some evidence that the registrant has no legitimate interest in the domain name, and 3) prove, on a balance of probabilities, that the registrant registered the domain name in bad faith.

The CIRA panel found that the first requirement was fulfilled because the complainant is the owner of trademarks containing or comprising "MTV", which were registered in Canada before the domain name was registered. Despite the registrant's argument that the complainant's "MTV" mark was not distinctive, the panel held that the registration of the mark in the Canadian Intellectual Property Office is sufficient in and of itself.

With respect to the second requirement, the evidentiary burden is on the complainant to provide some 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 a balance of probabilities that the registrant has a legitimate interest in the domain name. The panel held that the complainant had met its evidentiary burden by providing evidence that there was no use of the domain name by the registrant before it had received notice from the complainant of its objection to the registration. On the other hand, the panel held that the registrant was unable to prove that it had a legitimate interest. It rejected the registrant's argument that it intended to use the domain name in the future, stating that the evidence necessary to demonstrate a bona fide intention must, at a minimum, show that the registrant has taken steps with a view to commence operation of the website and explain the delay in doing so at the time of the complaint.

The CIRA panel also found that the third requirement had been met. The registrant was the owner of sixty-eight domain name registrations, twelve of which contained or comprised trademarks that are either registered in Canada or the subject of Canadian applications for registration. The panel was unconvinced by the registrant's arguments that the registration of the domain name was in connection with its "MT Vacations" business and that "MT" Vacations is a play on words. Rather, the panel held that the registration of the domain name was done in bad faith with a view to preventing the complainant from registering its trademarks as a domain name.

For a copy of the decision, visit:
http://www.cira.ca/en/dpr-decisions/00015-mtv.ca.pdf