ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Regal Entertainment Group, Regal Cinemas, Inc. v. Hew Soon Lee, Domain Admin, Privacy Protect LLC PrivacyProtect org Case No. D2024-1176 1. The Parties The Complainants are Regal Entertainment Group (the” Complainant No 1”) and Regal Cinemas, Inc. (the “Complainant No 2”), United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States. The Respondents are Hew Soon Lee, Malaysia and Domain Admin, Privacy Protect LLC PrivacyProtect org, United States. 2. The Domain Names and Registrars The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain names and are registered with GMO Internet Group, Inc. d/b/a Onamae.com. PDR Ltd. d/b/a PublicDomainRegistry.com and GMO Internet Group, Inc. d/b/a Onamae.com are hereinafter collectively referred to as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2024. On March 19, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 20 and March 22, 2024, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unidentified Domain Name Registrant) and contact information in the Complaint. On April 2, 2024, the Center informed the Parties in Japanese and English, that the language of the registration agreement for the disputed domain names and is Japanese. On April 5, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.
page 2 The Center sent an email communication to the Complainant on April 2, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on April 5, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2024. The Center appointed Masato Dogauchi as the sole panelist in this matter on May 17, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainants are two companies. The Complainant No1 is a Delaware corporation and the Complainant No 2 is a Tennessee corporation. The Complainants, formed in 1989, operate at present movie theatre circuits consisting of over 450 theatres in more than 42 states and territories at least in the United States. The Complainant No 1 has registered trademarks such as: - United States Registration for REGAL No 3,889,100, registered on December 14, 2010; - United States Registration for the mark consisting of the letter “R” inside a heptagon next to the word “REGAL” No 6,001,723, registered on March 3, 2020; The Complainant No 2 has registered trademarks such as: - United States Registration for REGAL CINEMAS No 1,887,534, registered on April 4, 1995; - United States Registration for REGAL CINEMAS No 1,893,390, registered on May 9, 1995. The Complainants have owned the domain names and since 1996 and 2002, respectively, and these domain names resolve to the Complainants’ official website. There are three disputed domain names in this case. One of the disputed domain names was registered December 21, 2023, and two others and were registered on January 14, 2024. The websites resolved by these disputed domain names impersonate the Complainants’ authentic website to deceive and steal from the public by requesting them to provide personal information, including their name, phone number, email address, and a unique password.
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Consolidation of Multiple Domain Name Cases The amended Complaint was filed in relation to different domain name registrants. The Complainants allege that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainants request, pursuant to paragraph 10(e) of the Rules, that the proceedings on their claims regarding three disputed domain names , , and should be consolidated. As stated above, the Respondent did not submit any statement on all matters including on this matter. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. It is found that the registrant of the disputed domain name , Hew Soon Lee, is a person whose address is reportedly in Kuala Lumpur, Malaysia and the registrants of the disputed domain names and have only been disclosed by the Registrar as Domain Admin, Privacy Protect LLC. Therefore, the registrants of these two disputed domain names appear to be those of a privacy service. However, according to the precedents of the WIPO Jurisprudence of UDRP decisions, where the following two conditions are to be met, the consolidation may be allowed: (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that the design and contents of the websites to which the disputed domain names resolve are almost the same or similar to each other, and all the websites show, at the top of the first page, the letter “R” inside a heptagon, which is a part of one of the trademarks of Complainant’s No 1 (United States registered trademark No 6,001,723). In addition, it should be noted that two of the disputed domain names were registered on the same date. The Panel considers that these facts are enough to conclude that these three disputed domain names are controlled by the same person or entity. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party in this case from which the Respondent is absent. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Preliminary Issue: Language of Proceedings In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the
page 4 registration agreement. However, the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In the present case, the Registrar has confirmed that the language of the Registration Agreement with regard to the disputed domain names and is Japanese. The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds: - the Complainants’ request to that effect; - the Respondent did not reply to the Center’s Language of Proceedings email or Notification of Complaint in English and Japanese; - the disputed domain name is in Latin script and not in Japanese script; and - the use of Japanese language would produce undue burden on the Complainants in consideration of the absence of a Response from the Respondent. 6.3. Substantive Matters In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainants’ contentions and other evidence submitted by the Complainants. In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainants must prove each of the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In addition, the Complainants has operated the domain name since 2002, which resolve to Complainants’ official website. First, as regards the disputed domain name , the comparison between the term “rg” by itself and the Complainant’s REGAL or REGAL CINEMAS trademarks may not be enough to satisfy the condition of similarity. However, the term “movie” is synonym of the term “cinema” which represents the business field of the Complainants and is included in the Complainant No 2’s REGAL CINEMAS trademark. The Panel finds that the combination of “rg” and “movie” shows confusing similarity to REGAL CINEMAS trademark. On the other hand, the Panel finds that this disputed domain name is by itself confusingly similar to the Complainants’ domain name . Second, as regards the disputed domain name , the letters before the term “.com” which is one of the generic Top-Level Domains can be divided into “rg”, “my”, and “movie”. Since the term “my” is a possessive adjective, the above discussion applies to this disputed domain name.
page 5 Third, as regards the disputed domain name , the letters “thergmovie” can be divided into “the”, “rg”, and “movie”. Since the term “the” is a definite article, the above discussion also applies to this disputed domain name. In addition, the Panel notes the fact that the websites resolved by the disputed domain names clearly show an attempt to impersonate the Complainants’ authentic website. Also, the Panel notes the decision in Regal Cinemas, Inc. v. Hew Soon Lee, WIPO Case No. D2023-5238, in which the panel held that the domain name in that proceeding, , is confusing similar to the REGAL CINEMAS trademark. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, in consideration of the fact that the Complainants have been doing business in movie theatre circuits throughout the United States for years, it is highly unlikely that the Respondent could have been unaware of the Complainants’ trademarks at the time of registration of the disputed domain names on December 21, 2023, and on January 14, 2024. Given the use of the disputed domain names for websites impersonating the Complainant, such knowledge appears evident. Therefore, it is found that the Respondent registered the disputed domain names in bad faith. With regard to the requirement that the Respondent is using the disputed domain name in bad faith, Panels have held that the use of a domain name for illegal activity constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s use of the disputed domain names constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 6 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , and be transferred to the Complainants. /Masato Dogauchi/ Masato Dogauchi Sole Panelist Date: May 31, 2024
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