DECISION

American Multi-Cinema, Inc. v. Jesse Ruffin d/b/a Hartford a/k/a Ruffin Enterprises

Claim Number: FA0209000125264

PARTIES

Complainant is American Multi-Cinema, Inc., Kansas City, MO (“Complainant”) represented by David V. Clark, of Lathrop & Gage, LC.  Respondent is Jesse Ruffin d/b/a Hartford a/k/a Ruffin Enterprises, Dallas, TX (“Respondent”) represented by Stephen L. Anderson, of Anderson & Associates.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <moviewatchers.com>, registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 17, 2002; the Forum received a hard copy of the Complaint on September 18, 2002.

On September 17, 2002, Intercosmos Media Group, Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <moviewatchers.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a directNIC.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a directNIC.com 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 September 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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@moviewatchers.com by e-mail.

A timely Response was received and determined to be complete on October 8, 2002.

Complainant filed a timely Additional Submission on October 13, 2002.

On October 30, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant American Multi-Cinema, Inc. (“Complainant” or “AMC”) states that it currently owns two federal service mark registrations for MOVIEWATCHER formative marks.  The registration for the MOVIEWATCHER mark claims dates of first use of February 21, 1990.  According to Complainant, this word mark became incontestable in 1996.   The registration for the AMC MOVIEWATCHER and related design mark claims dates of first use of May 2, 1994.  AMC also owns Internet domain names for <amcmoviewatcher.com> and <moviewatcher.com>, both of which became effective on October 2, 1995.  AMC uses both of its registered service marks on the <moviewatcher.com> website, and has been advertising and promoting its movie theater services and frequent-user discounts and rewards program on this website since its inception.   According to Complainant, the services provided under the marks are delivered via the Internet and onsite at AMC theaters across the country.  Complainant states that the MovieWatcherÒ program is advertised and promoted on the Internet at both <moviewatcher.com> and <amctheaters.com>, as well as through onsite and other advertising.   Complainant contends that Respondent’s <moviewatchers.com> domain name is virtually identical to, and thus, clearly confusingly similar to, Complainant’s MOVIEWATCHER mark.   Complainant further contends that Respondent’s use of the <moviewatchers.com> domain name has not been in connection with a bona fide offering of goods or services.   Furthermore, Complainant asserts that no evidence exists suggesting that Respondent, Jesse Ruffin d/b/a Ruffin Enterprises, has been commonly known by the <moviewatchers.com> domain name. Accordingly, Complainant asserts that Respondent’s <moviewatchers.com> domain name must be considered as having been registered and used in bad faith particularly because, according to Complainant, Respondent has offered on its website (prior to receiving the cease and desist letter from AMC) to sell the <moviewatchers.com> domain name registration.   

B. Respondent

Respondent Jesse Ruffin d/b/a Hartford a/k/a Ruffin Enterprises claims to have registered the domain name in question more than five years ago, in August 1997.  Respondent states that he was not aware that Complainant had ever used either the phrase “MOVIE WATCHER” or its MOVIEWATCHER logo as a trademark, domain name or otherwise, and at the time he registered the mark, he did so without Complainant in mind.   Respondent contends that as applied to online information, goods and services related to the movie industry and persons who enjoy watching movies, the term MOVIE WATCHERS is purely generic as well as indicative of Respondent’s website contents and its target audience.

 

Respondent contends that for nearly five years before being contacted by Complainant, Respondent had initially used the <moviewatchers.com> domain name to host a website which has featured “raw real home movies.”  Moreover, Respondent argues that for years, Respondent’s <moviewatchers.com> site has contained links to web pages for various movie studios (e.g., DreamWorks, Walt Disney Pictures, Columbia, etc.), and links to other sites.  Furthermore, Respondent contends that the disputed domain name, before any notice to Respondent by Complainant, contained a link to a “shopping cart” that takes a user to a ‘Movie Store’ page which offers, among other things, the Moviewatchers Membership Card, and Moviewatchers t-shirts, caps and other apparel. 

 

Finally, according to Respondent, at no time did Respondent ever engage in any bad faith or other conduct which would tarnish the reputation of Complainant or which would confuse potential visitors to his own site.  Respondent states that to further avoid any potentially unwanted legal entanglements, and to minimize any potential confusion which might occur, he posted several disclaimers throughout his site which stated: “(we are not AMC).”

C. Additional Submissions

Complainant contends that Respondent did not register the <moviewatchers.com> domain name until sometime after September 24, 2001.  Thus, Complainant contends that Respondent had actual knowledge of AMC’s MOVIEWATCHER mark at the time he registered <moviewatchers.com> and had the domain name registration transferred into his name.  Complainant points out that Mr. Ruffin admits he joined AMC’s MovieWatcher® Club prior to September 2001 and therefore, according to Complainant, presumably had knowledge of Complainant’s marks. 

Complainant has received several e-mail inquiries which, according to Complainant, reflect that actual confusion exists among consumers regarding whether or not Respondent’s <moviewatchers.com> website is operated, sponsored, endorsed by or otherwise affiliated with AMC and its MovieWatcher® Club.  These e-mails reflect, according to Complainant, that AMC customers have visited Respondent’s site thinking it to be part of AMC’s MovieWatcher® Club, and in some instances, have even made payments on their credit cards to Respondent thinking that they were joining AMC’s MovieWatcher® Club.

FINDINGS

The record reflects that Complainant’s MOVIEWATCHER mark has become well-known and famous.  The MovieWatcherÒ program has grown from 463,651 members in 1992 to more than 3.9 million members today.  During the fiscal year 2002, attendance by MovieWatcherÒ members was 19,795,602 or 13.2% of AMC’s total audience, and MovieWatcherÒ members accounted for 25% of all AMC tickets sold via the Internet.

AMC currently owns the following federal service mark registrations for MOVIEWATCHER formative marks:

Mark Title	Reg. #	Reg. Date	Class	Goods
MOVIEWATCHER	1,635,775	02-19-1991	041	Movie theater services featuring frequent-user discounts
AMC MOVIE WATCHER AND DESIGN	2,105,183	10-14-1997	041	Movie theater services featuring frequent-user discounts

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’s <moviewatchers.com> domain name is virtually identical to Complainant’s MOVIEWATCHER mark.  While Respondent’s <moviewatchers.com> domain name contains an “s,” that minor difference is not significant enough to distinguish the domain name from Complainant’s MOVIEWATCHER word mark.   See InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, No. D2000-0069 (WIPO April 3, 2000) (<infospaces.com> found confusingly similar to the mark INFOSPACE).  Similarly, the fact that Respondent’s domain name contains the “.com” top-level domain does not affect the inquiry as to whether it is confusingly similar to the MOVIEWATCHER word mark.  See Rollerblade, Inc. v. McCrady, No. D2000-0429 (WIPO June 25, 2000)(finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). 

Respondent seeks to answer this argument with the contention that the term “Movie Watchers” has become generic.  There is a split of authority on the question of whether ICANN panels are authorized to consider a respondent’s defense that the complainant’s registered trademark has become generic.  R. Badgley,  Domain Name Disputes § 7.11 n. 160 (2002).  Although it is possible that a mark that was distinctive can become generic, it will become so only if the “relevant public ceases to identify a trademark with a particular source of product or service but instead identifies the mark with a class of products or services regardless of source.”  Creative Gifts, Inc. v. UFO, [2000] USCA10 353; 235 F.3d 540, 544 (10^th Cir. 2000).

The Panel concludes, however, that it need not reach this issue because Complainant has demonstrated, without rebuttal from Respondent, that its mark has become incontestable.  Although the incontestable nature of the mark may not be questioned, the “strength” of the mark may be questioned.  Thus, for example, if Respondent was using the mark in a totally unrelated industry, the incontestability of the mark might not be relevant.  Because, however, Respondent is using the mark in a domain name where he offers goods and services similar to those offered by Complainant, the Panel concludes that the incontestability of the mark constitutes a defense to Respondent’s contention that the term “Movie Watchers” has become generic.

Rights or Legitimate Interests

Respondent contends that he has a legitimate interest in the disputed domain name because he has “aptly and fairly” used the name for more than five years in connection with a bona fide offering of movies and related services.   Thus, Respondent contends that he meets the requirement of Policy 4(c)(i)—before notice of the dispute, he used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  

Although Policy paragraph 4(c) sets forth three circumstances that can demonstrate a respondent’s rights or legitimate interests, there is a line of authority indicating that an infringement by a respondent in connection with a complainant’s rights in its mark conclusively demonstrates that a respondent has no rights in the domain name.  E.g., AutoNation, Inc. v. Sticky Web, Inc., D2001-0442 (WIPO June 18, 2001); The Chase Manhattan Corp. v. Whitely, D2000-0346 (June 12, 2000).  Complainant has made the requisite showing of infringement thus establishing that Respondent can have no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

Complainant contends that Respondent has registered the <moviewatchers.com> domain name primarily for the purpose of disrupting the business of AMC, thereby evidencing bad faith under Policy ¶ 4(b)(iii).  The record reflects that Respondent is competing with Complaint by providing movie reviews, a card and membership to his <moviewatchers.com> website, and updates on the latest movies and a newsletter for his members. 

There is also evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s MOVIEWATCHER mark.  Indeed, the record contains several e-mail inquiries reflecting that actual confusion exists among consumers regarding whether or not Respondent’s <moviewatchers.com> website is operated, sponsored, endorsed by or otherwise affiliated with AMC and its MovieWatcher® Club.  These e-mails reflect that Complainant’s customers have visited Respondent’s website thinking it to be part of Complainant’s MovieWatcher® Club, and in some instances, have even made payments on their credit cards to Respondent thinking that they were joining Complainant’s MovieWatcher® Club in doing so.  This evidence supports Complainant’s contention of bad faith.

DECISION

It is ordered that the domain name <moviewatchers.com> be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist
Dated: November 13, 2002

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