WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Militzer v. Gregg Smitherman
Case No. D2011-0365
1. The Parties
The Complainant is Michael Militzer of Hof, Germany, represented by Rödl & Partner, Germany.
The Respondent is Gregg Smitherman of Lubbock, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <xvid.com> is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 6, 2011. 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 Complainant is the founder of the Xvid project which is marketed over the Internet and is also the managing director of Xvid Solutions GmbH established in 2006. The Complainant founded the Xvid project in 2001, registered his domain name <xvid.org> on October 1, 2001 and operated and marketed his software project under the trademark XVID.
The Complainant has registered and owns many trademarks for XVID in Germany, the European Union and the United States of America since at least 2003 for the earliest one and also in several other countries while each trademark registration is in association with wares in class 9, including computer software and downloadable software for recording, transmitting and reproducing digital audio and video data. Some registrations also cover classes 16, 35, 38 and/or 42. The Complainant’s United States trademark registration for XVID was filed on August 26, 2005 and obtained on April 15, 2008 under number 3,411,787 (hereinafter the XVID Trademark).
The XVID software is a video codec for personal computer which is a program to encode and decode digital video in that said video codec permits compressing and decompressing digital video in order to reduce the bandwidth of video data for transmission over computer networks or efficient storage on CDs or DVDs.
The XVID Codec or Software is a free software which is released under the GNU GPL license. A feature of the XVID software is that the source code thereof is publically available, can be modified by programmers and its redistribution is permitted, however only under the terms of the GPL license.
The disputed domain name <xvid.com> was apparently first created on January 13, 2000 by Domains by Proxy Inc., an anonymization service but was not actively used initially. The date of its first use is unknown.
It is subsequent to receiving complaints by some users, two in January 2011 and one in February 2011, that the Complainant noticed the actual use of the disputed domain name (Annex 15).
According to the evidence adduced by the Complainant, which evidence is elaborate and detailed in 44 annexes and remains unchallenged, the Respondent operates at the website address corresponding to the disputed domain name, a “faked” site where Internet users get the impression of being on the official homepage of the XVID Codec in that there are many references to the XVID Codec, similar appearances to the website and many texts similar to those of the Complainant used on its official homepage at “www.xvid.org” along with imitations of pictograms and graphical elements used by the Complainant on his website.
On the disputed domain name-associated website, Internet visitors have access to a download link for the XVID Codec. However, contrary to their understanding or expectation, the Internet users do not download the XVID Codec of the Complainant but a malicious program named “Xvid Setup.exe”. The antivirus software Avira Antivirus identifies the program “XvidSetup.exe” as a virus naming it “ADSPY/AdSpy.Gen2”. It has also been classified as being Spyware. This Spyware was identified and characterized by Microsoft antivirus software, qualified as “malware” and is listed as “Adware: Win32/ClickPotato”.
The disputed domain name was created on January 13, 2000 and registered in the name of Domains by Proxy Inc. and was transferred to the Respondent on January 13, 2010.
5. Parties’ Contentions
The Complainant represents that the disputed domain name incorporates the whole of its XVID Trademark with the only difference being the addition of the gTLD “.com”, which addition should be disregarded in assessing confusing similarity with a trademark. See Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550. On this basis, the Complainant represents that the disputed domain name is identical to its XVID Trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name in that it has not authorized the Respondent to use the term “xvid” or its Trademark in the disputed domain name. According to the Complainant, “xvid” is not the Respondent’s name or derives from it and the former has no obvious association with the Respondent as recorded in the latter’s address in registering the disputed domain name.
The Complainant further contends that the Respondent does not carry any of the activities mentioned in paragraph 4(c)(iii) of the Policy and that the said paragraph does not apply since the disputed domain name is used to offer software for downloading activities named as “Xvid codec”, but which is in fact a spyware and not the real XVID codec of the Complainant. The Complainant further contends that the disputed domain name is not a common or descriptive term nor a term that would naturally be associated with a website of this kind and this supports a conclusion that the term “xvid” has been adopted because of its attraction and association with the business of the Complainant who owns trademark rights in the term, not the Respondent.
According to the Complainant, his XVID codec software rapidly gained a substantial popularity by reason of its excellent picture quality and became the codec choice in exchanging digital video. In 2006, the leading British newspaper “The Independent” has picked the XVID project as one of the ten most influential open-source projects worldwide, reputation acknowledged by the four pages and links present on its Wikipedia entry. In 2009 the website of the Complainant served about two million page views and over 50 million hits for visitors from the United States alone. While a Google search for the term “xvid” yields more than 130 million search results, the top 8 are comprised of the Complainant’s homepage “
The Complainant represents that the Respondent intentionally attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with its Trademark as to the source and affiliation of his website and of the software he is offering on the disputed domain name.
The Complainant relies on the WIPO overview of WIPO Panel Views on Selected UDRP Questions in submitting that the transfer of the disputed domain name to the Respondent in January 2010, is the date at which the said domain name is taken to have been registered by the Respondent and at which date the bad faith registration is to be considered as he contends there was such bad faith.
In the case BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882, the three-member panel considered and decided this point in the following terms: “The ordinary rule on registration is that transfer to a new registrant constitutes “registration” for purposes of paragraph 4(a)(iii)’s determination of bad faith. Indeed it is a Consensus View that ‘[w]hile the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith.’ WIPO Overview, paragraph 3.7; emphasis added. Although that section of the WIPO Overview is addressed to the non-italicized portion of the quotation, panels have applied the transfer rule absent a showing that the transfer was pretextual or an attempt at cyberflight. E.g.,HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.”
According to the Complainant, the Respondent intentionally chose the disputed domain name to benefit from its identical resemblance to the Complainant’s Trademark and thereby, intended to reap financial benefit from the said domain name renown which is used to divert Internet users away from the Complainant’s website to its copycat website by reason of the confusion caused along with the injury caused to the Complainant.
The Complainant claims that the Respondent registered the disputed domain name with the intent of misappropriating and financially benefitting, to the detriment of the Complainant, from the goodwill inherent in its Trademark which enjoys significant notoriety and extensive consumer recognition pursuant to 10 years of intensive use. Such public acknowledgment is confirmed by the fact that the Respondent has paid USD 55,000 for acquiring the disputed domain name (annex 42). On May 18, 2010, the latter was offering the disputed domain name for sale asking a price of USD 225,000.
The Complainant thus concludes that the Respondent registered the disputed domain name in bad faith.
According to the Complainant, the Respondent deliberately creates confusion between the disputed domain name and its well-known Trademark in order to divert Internet users to its own website at the disputed domain name address and then to induce Internet users for the Complainant software to download his malware software which brings commercial benefits to the Respondent. This, according to the Complainant, is not an isolated case since the Respondent has engaged in other patterns of registering domain names that are confusingly similar with famous trademarks in order to commercially benefit from the confusion created amongst Internet users and the provision of adware/malware rather than the genuine software which the Internet users are looking for. Such other domain names owned and/or operated by the Respondent are <aresdownload.com>, <freefirefoxdownload.com>, <playervlc.com> and <openofficefree.com>. Finally the Respondent was also respondent in a similar case involving the registrations and use in bad faith of three domain names incorporating the trademark “kazaa”; see Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375.
As a consequence of these activities by the Respondent, the Complainant further claims that this caused serious damages to its Trademark reputation as shown by the three e-mails of complaints received from Internet visitors to the website at the disputed domain name address thinking they were visiting the Complainant’s website.
On the basis of these facts and representations, the Complainant contends that the disputed domain name has been used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has 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
The Complainant has conducted his Internet regular business activities from his website at the “www.xvid.org” address for the past decade and the said website incorporates the Trademark XVID which has been used regularly for promoting and offering his XVID computer software and downloadable software for recording, transmitting and reproducing digital audio and video data, amongst other wares and services and such use has also been declared and claimed in the United States as acknowledged by his Trademark application on August 26, 2005 and registration without any opposition on April 15, 2008.
The Panel finds that the Complainant has rights in the XVID Trademark.
The disputed domain incorporates the whole of the Trademark XVID to which the gTLD “.com” suffix has been added. It is well established in several UDRP decisions, such as Ticketmaster Corporation v. Dmitri Prem, supra, cited by the Complainant that such addition of this suffix is not to be taken into consideration for determining confusing similarity.
The Panel finds that the disputed domain name is confusingly similar with the Trademark XVID of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark.
The evidence adduced by the Complainant clearly shows that the Respondent is using the disputed domain name he acquired at high costs in January 2010 to attract Internet visitors to his website pursuant to confusion created by the disputed domain name and then induces said visitors to download not the XVID codec of the Complainant but his spyware. This activity combined to the fact that the disputed domain name is not a common or descriptive term which would naturally be associated to a website, establish that the disputed domain name is not used to provide a bona fide offering of goods and services but constitute a commercial activity conducted with the intention of misleading and diverting consumers for commercial gain and thus tarnish the Trademark of the Complainant, therefore clearly not an activity contemplated in paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
According to the unrebutted evidence, the Respondent acquired the disputed domain name registration on January 23, 2010 from a previous registrant who used a front when the disputed domain name was registered in the year 2000, but had no active use thereof by the registrant during an unknown period. It is established again in UDRP decisions that it is the latest date of acquisition by the present Respondent that is taken into consideration to determine if the registration was made or obtain in bad faith. The Panel adopts the views and holding made by the panel in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, supra.
According to the evidence, the Complainant has been using its Trademark XVID in its domain name <xvid.org> for at least a decade in association with its software promoted and freely available on the website corresponding to this domain name address.
By January 2010, considerable goodwill and reputation has already been associated with the Complainant’s Trademark and website as it is demonstrated by the price of USD 55,000 that the Respondent paid for his acquisition of the disputed domain name which corresponds to and incorporates the well-known Trademark of the Complainant used for a decade by that time. In considering the fact that XVID is not a generic or descriptive term nor associated with the Respondent’s name but a coined term or expression, this Panel sees no plausible reason to consider or think that the Respondent was not aware of this Trademark in January 2010. To the contrary, first the payment of such a huge sum and the use thereof made by the Respondent and second the number of similarities in the website of the Respondent compared with the website of the Complainant confirm not only the knowledge and reputation and use of the Trademark made by the Complainant at the time of acquisition of the disputed domain name in early 2010 but also the awareness of the contents structure and features of the Complainant’s website, and these elements are other factors which supports the bad faith attitude or behavior of the Respondent upon acquiring the disputed domain name and using it thereafter.
Although these activities by the Respondent appeared highly suspect as they were to this Panel, this is not a surprise when one considers the facts in an earlier decision involving the same Respondent; see Sharman License Holdings, Limited v. Gregg Smitherman, supra. In this case, the panel found that the domain names <kazaalikteplus.net>, <kazaalite.tv>, <shazaa.com> had been held by the panel to be confusingly similar to the trademark KAZAA of the complainant and were registered and used in bad faith. As in the present case, the panel concluded that “the mark (Kazaa) is a non-generic and fictitious term which was acquired some fame and might explain why the Respondent chose this word as a domain name… also finds that the Respondent does use the Domain names to intentionally attempt, to attract, for commercial gains, Internet users to its website”. Despite the six year gap, the similarity between the present case and this earlier one, in this Panel’s view, demonstrates a pattern of bad faith conduct by the Respondent.
The Panel finds that the disputed domain name registration’s acquisition by the Respondent was done in bad faith.
The Respondent has created a website at the address corresponding to the disputed domain name and according to the evidence this website deliberately included a number of distinctive elements from the website of the Complainant, such as similar appearance, same textual structure and imitations of pictograms and graphical elements as revealed in a comparison of Annexes 6 and 16 in evidence, so that Internet visitors would be confused and believe that they had reached the Complainant’s website and be an easy prey for accepting invitation or suggestion of the Respondent resulting in the downloading of the malware software provided by the Respondent which facts were, as this Panel finds, were well established in the Complainant’s evidence.
Again as established by the evidence from the Complainant relating to the Pinball Corp. company with which the Respondent has a business relationship, the said Pinball company provides a server and a website at the address “www.preview.licensingacquisition.org”, an address present on the website of the Respondent which redirects visitors to “www.originics.clickpotato.tv” where the malware mentioned herein is actually hosted (Annexes 21, 22, 23, 24 and 25). These activities were generating a commercial benefit for the Respondent and caused serious damages to the reputation of the Complainant or the goodwill attached to its Trademark as shown by the three e-mails of complaint received by the Complainant in January and February 2011.
Finally the Complainant has shown by his evidence that while the Respondent acquired the disputed domain name for USD 55,000 in January 2010, he was offering same for sale on May 18, 2010 for a very high sum of money, USD 225,000 (Annex 44) which is considerably higher than the registration costs, therefore, having acquired the said domain name primarily in order to make a profit in using and/or selling it.
The Panel finds that the disputed domain name is used in bad faith by the Respondent.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <xvid.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <xvid.com> be transferred to the Complainant.
J. Nelson Landry
Dated: April 19, 2011