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Viacom International Inc. v. Harvey Ross Enterprises, Ltd., British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00015 - by Eric Macramalla

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Domain Name: mtv.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: Patrick Flaherty, Derry Millar, and James Redmond, Q.C.

(Gowlings acted on behalf of the Complainant in these proceedings)

The Complainant, through its division MTV Networks, operated several television programming services in Canada, and was the owner of numerous trade-mark registrations in Canada for marks containing, or comprised of, MTV.

The Respondent alleged that it was in the business of providing accommodation services. At the time of the Complaint, the impugned domain name resolved to a modest website displaying the headline MT Vacations.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), Complainants must establish three elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.

The Panel held that the impugned domain name was confusingly similar to the Complainant's MTV trade-marks.

In finding bad faith registration, the three-member Panel held that the Registrant had engaged in a pattern of registering domain names containing third party marks to which it had no entitlement, including the domain name muchmusic.ca. In all, the Complainant identified at least twelve domain names that the Respondent did not have rights to. Reinforcing a finding of bad faith registration was the fact that mtv.ca had been inactive for over two years.

In dismissing the Respondent's legitimate interest claim, the Panel did not accept the Registrant's position that "MT Vacations" stood for "Melanie and Todd's Vacations". The Panel concluded that this argument was "nonsensical".

Accordingly, the domain name was ordered transferred.

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