DECISION

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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