Hoyts Cinemas Corporation v. Rage
Warehouse
Claim Number: FA0202000105209
PARTIES
The
Complainant is Hoyts Cinemas Corporation,
Boston, MA (“Complainant”) represented by R.
David Hosp, of Goodwin Procter LLP. The Respondent is Rage Warehouse, Pawtucket, RI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <hoytsusa.com> and <hoyts-usa.com>, registered with Dotster, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to the
best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on February 27, 2002; the Forum received a hard copy of the
Complaint on March 1, 2002.
On
March 5, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain
names <hoytsusa.com> and <hoyts-usa.com> are registered with Dotster, Inc. and that
the Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent
is bound by the Dotster, 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 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 26,
2002 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@hoytsusa.com and postmaster@hoyts-usa.com by
e-mail.
A
timely Response was received and determined to be complete on March 25, 2002.
On March 27, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain names be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is Australia’s oldest and largest theatre chain with over 2,500 screens in
Australia, Europe, and North and South America. Hoyts is a leading exhibitor of motion pictures in the northeast
United States. Hoyts currently operates
103 locations with 917 screens in twelve U.S. states and has continuously,
actively and effectively marketed its goods and services in the United States
using the HOYTS name since at least 1986 under the marks described as the
“Hoyts Marks.”
Complainant
spent over $5,000,000.00 on advertising during each of the last two years. Complainant has developed goodwill, consumer
recognition and distinctiveness in the Hoyts Marks which are essential to its
business. Complainant utilizes a wide
variety of media outlets to publicize the Hoyts Marks in the United States,
including newspapers, circulars, magazines, radio commercials, television
commercials, direct mailings and on the Internet.
Complainant
operates a number of Internet websites, including www.hoyts.com.au, www.hoyts.com.nz, and www.hoyts.com. The website for the United States is www.hoyts.com. It is an interactive sales device and key component of
Complainant’s business plan.
Complainant
owns trademark registrations in the name HOYTS with registration date of
January 21, 1997 and HOYTS CINEMAS—WHERE YOU’RE THE STAR registered October 12,
1999.
Respondent
is a small, independent film company based in Rhode Island that specializes in
short movies. Respondent’s website is a
platform for various film and other projects.
Christian
Miller, one of Respondent’s principals, is a former Assistant Manager at Hoyts’
Providence Place theatre and has a project entitled “Hoyts-USA.” The project consists of two websites, www.hoytsusa.com and www.hoyts-usa.com, each with identical
content, that have been set up to divert traffic from www.hoyts.com. Miller registered the disputed domain names, without the
permission or knowledge of Complainant, on April 20, 2001. Thereafter, Miller quit his job with Hoyts
and the domain names were used to voice complaints about the Hoyts Providence
Place theatre and solicit complaints from others. Miller contacted Complainant on November 26, 2001 and stated that
he did not really want the domain names if Complainant wanted to make him an
offer. Complainant attempted to contact
Miller by telephone, letter and e-mail but no contact was established.
Respondent
deliberately registered domain names confusingly similar to Complainant’s
established service marks.
Respondent
has no legitimate rights to use disputed domain names. Miller registered the domain names with the
express purpose of establishing a United States Web presence for Complainant
while Miller was an employee of Complainant.
Respondent
registered and used the domain names in bad faith since Miller had no
authorization to register the names and has now offered to sell the names to
Complainant for consideration in excess of out-of-pocket costs. It is further evidence of bad faith that
Miller had actual knowledge of Complainant’s marks and breached its
registration contract by stating that, to his knowledge, the registrations did
not infringe upon the legal rights of a third party, in this case Complainant.
B.
Respondent
The
Respondent, Rage Warehouse, (referred to herein as “Chris Miller”) registered
the domain names <hoytsusa.com> and <hoyts-usa.com>
on April 20, 2001 while employed with the Hoyts Cinemas Corporation (referred
to herein as “Hoyts”) with the intention of creating a web page for the company
and transferring it free of charge to Complainant. The only expectation was to be a good employee. Respondent immediately informed Complainant
of the purchase and his intentions, but was told that Complainant already had a
web page in progress and Respondent gave up on the idea of creating a web page
for Complainant because Complainant had a much better one done by professionals.
Respondent
made repeated attempts to transfer the domain names to Complainant at no cost
but the effort was a failure.
In
November of 2001 Complainant informed Respondent that Hoyts was looking into
legal action against him for owning the domain names. Respondent told Complainant that if Complainant wanted the domain
names he would transfer ownership at no cost and requested that Complainant
contact him.
Later
in November Respondent put up a web page for the hoytsusa domain names, with
and without a hyphen, and informed Complainant by e-mail. The site offered a service not then
performed by Hoyts, a way for people to contact Hoyts management about their
movie going experience online.
In
mid-November, Respondent again tried to transfer the domain names to
Complainant.
On
November 26, 2001, Respondent called Complainant and left a voice mail stating
his wish to transfer the domain names, this time he asked Hoyts to make an
offer on the domain names so that he could cover the $29.90 in out of pocket expenses,
but he was never contacted.
In
December, Respondent tried again to transfer the domain names to Complainant.
Respondent
requests that the Panel issue a decision that the domain names be transferred
to Hoyts.
C.
Additional Submissions
None.
FINDINGS
1. Complainant operates a major chain of
theatres in Australia, the United States, and other countries.
2. Complainant operates the theatres under
the name HOYTS.
3. Complainant holds trademark registration
for the name HOYTS.
4. Complainant has developed goodwill,
consumer recognition and distinctiveness on the HOYTS marks through
media advertising, use of the marks, and protection of its trademark in the HOYTS
name.
5. Complainant has rights and interests in
the name HOYTS.
6. Respondent registered the domain names,
<hoytsusa.com> and <hoyts-usa.com> on April
20, 2001, while an employee of Complainant for the admitted purpose of the
domain names being used for the benefit of Complainant.
7. Respondent registered the domain names
without the authorization or consent of Complainant.
8. Shortly after registering the domain
names, Respondent reported their registration to agents of Complainant and was
told Complainant did not wish to utilize the domain names in Complainant’s
business.
9. Respondent has made repeated attempts to
transfer the domain names to Complainant free of charge.
10. Respondent did put the domain names to
use on November 8, 2001, with the stated purpose of the web page “to give Hoyts
theater customers a way to comment on their movie going experience.” The web site states that the domain names
were purchased for the purpose of creating a web presence for the United States
portion of the Hoyts theater chain but that since creating the web page, Hoyts
has made a web site of their own identified as <hoyts.com>
11. Respondent has no legitimate rights or
interests in the disputed domain names, nor does Respondent profess to have any
such rights.
12. The evidence does not suggest that
Respondent registered the domain names in bad faith nor does the evidence prove
that Respondent used the domain names in bad faith.
13. However, Respondent concedes all points
normally at issue in a domain name dispute proceeding by requesting that the
Panel issue a decision that the domain names at issue be transferred to
Complainant.
14. Respondent has failed to defend and
Complainant is entitled to a decision in its favor.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the 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
Respondent concedes that he registered
the domain names in dispute while an employee of Complainant, with full
knowledge of Complainant’s rights in the mark, HOYTS, for the sole purpose of the domain names
being used by Complainant as its domain names for the United States segment of
Complainant’s operations. The domain
names are identical or confusingly similar to Complainant’s mark because they
were chosen by Respondent to be identical. The domain names hoytsusa.com and
hoyts-usa.com are confusingly similar to Complainant’s HOYTS service
mark. See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000); See
Also Net2pphone Inc. v. Netcall SAGL., D2000-0666 (WIPO Sept. 26,
2000); See Also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 19,
2000).
Rights or Legitimate Interests
Respondent
concedes that neither he nor his organization has legitimate rights or
interests in the disputed domain names.
Respondent is required under Rule 5 of the Rules for Uniform Domain Name
Dispute Resolution Policy, to state in the Response “all bases for the
Respondent (domain-name holder) to retain registration and use of the disputed
domain name.” Respondent makes no such
showing. There is nothing in dispute. “If a Party does not comply with any
provision of, or requirement under, these Rules…the Panel shall draw such
inferences therefrom as it considers appropriate.” see Rule 14.
A panel
must decide a complaint on the basis of the statements and documents submitted
and in accordance with any principles of law that it deems applicable. See
Rule 15.
The
following principles of law are found to apply in this proceeding. When a
party to a legal dispute fails to defend Complainant’s case, then Complainant
is entitled to judgment. See Rule 55 of the Federal Rules of Civil
Procedure. When there is no issue
of any material fact in opposition to Complainant’s case, then Complainant is
entitled to prevail. See Rule 56 of the Federal Rules of Civil Procedure. Respondent
failed to defend Complainant’s case and there is no material fact to be decided
in opposition to Complainant’s case.
Complainant succeeds on this issue.
Registration and Use in Bad Faith
The
evidence presented in this case does not clearly illustrate that Respondent
acted in bad faith in registering and using the domain names in question. Had Respondent contested this point,
Respondent might have prevailed.
However, Respondent elected not to contest the issue. Respondent requests this panel to transfer
the name to Complainant. To find an
absence of bad faith would frustrate Respondent’s intention. This case is one where both Complainant and
Respondent request the same result. As
a general principle of law such a situation would result in a consent judgment
where both parties have agreed upon the result and request the court to enter
judgment accordingly.
That general principle will be applied in
this case. A panel must decide a
complaint “on the basis of the statements…submitted.” see Rule 15, Rules for
Uniform Domain Name Dispute Resolution Policy.
The statements submitted in this domain dispute proceeding demand a
finding that the domain names be transferred to Complainant.
DECISION
It is the decision of this Panel that the
domain names, <hoytsusa.com> and <hoyts-usa.com>, now
registered to Respondent, Rage Warehouse, be Transferred to Complainant,
Hoyts Cinemas Corporation.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 5, 2002
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