WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DivX, LLC v. DivxStage+LTD, Janos Puldaver / DivxStage LTD, Janos Puldaver / DivxStage LTD, George Labano
Case No. D2015-0105
1. The Parties
The Complainant is DivX, LLC of San Diego, California, United States of America, represented by Boehmert & Boehmert, Germany.
The Respondents named in the Complaint are DivxStage+LTD, Janos Puldaver / DivxStage LTD, Janos Puldaver / DivxStage LTD, George Labano of Victoria, Seychelles.
2. The Domain Names and Registrars
The disputed domain names <divxstage.ag>, <divxstage.ec> and <divxstage.me> are registered with 1API GmbH. The disputed domain names <divxstage.co> and <divxstage.net> are registered with EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 23, 2015 and on January 26, 2015, EuroDNS S.A. and 1API GmbH respectively transmitted by email to the Center its verification response confirming the Respondents 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 Respondents of the Complaint, and the proceeding commenced on February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 23, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on March 6, 2015. 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. Preliminary: Identity of the Respondents
The Complainant has named three Respondents alleging that they are all under the control of one person. It claims that the first Respondent’s WhoIs address in the Seychelles does not exist since there is no “Main Avenue” in Victoria, Seychelles. The second and third Respondents so named are the same, i.e., DivxStage Ltd, but have different individuals named in association with that company.
Because all the disputed domain names revert to a website at “www.divxstage.to”, the Complainant sought WhoIs information from the registrar for that domain which advised that the registrant for that domain name was George Puliver of DivxStage Ltd at the allegedly fictitious address in the Seychelles. “Janos Puldaver DivxStage Ltd” is the registrant for <divxstage.co> and <divxstage.net> and “George Lebano DivxStage Ltd” for <divxstage.me>. “Janos Puldaver DivxStage+LTD” is the registrant for <divxstage.ec> and <divxstage.ag>.
The domain name <divx.eu> was ordered to be transferred to the Complainant by a Czech Administrative Panel. The respondent in that proceeding had been “Jan Schwarz” of Madrid, Spain. The Complainant believes this was a false identity because of the requirement that “.eu” domain names can be registered only by European Union residents. The ADR.EU of the Czech Arbitration Court sent a copy of the complaint in the Czech proceeding to this supposed respondent but the letter was returned as undeliverable.
Where a common person appears to hold an interest in several domain names, previous panels have held that a complainant may bring a complaint under the Policy and name several respondents as was done by the Complainant here.
The Panel adopts the decision and reasoning of the Panel In Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345. The following quotation from that decision is appropriate:
“Another instance of the situation where the ‘holder’ of the disputed domain name includes someone other than the registrant of record is where the registrant is in some way under the control of another person. In that situation, it seems appropriate to consider the other (i.e. the controlling person as a holder of the disputed domain name. A number of panels deciding cases under the Policy have permitted a single complaint in respect of multiple domain names for which the registrants were not the same person, where the circumstances suggested that the registrants (being the named respondents) were controlled by a single entity — see, e.g., Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492 (different registrants/respondents ‘related and under common control’); and Dr. Ing h.c.F. Porsche AG v. Kentech, Inc a.k.a Helois Lab a.k.a. Orion Web a.k.a Panda Ventures a.k.a Spiral Matrix and Domain Purchase, NOLDC, Inc, WIPO Case No. D2005-0890 (different domain names/respondents ‘controlled by the same entity’).
Also, it must be recognised that it is possible for the different registrants of record to be in fact, one and the same entity — i.e. the different registrant names are simply aliases for a single entity. In such a situation, a “holder” of the disputed domain names includes the single entity for which the names of the registrants of record are aliases. Panels have found such a situation to exist where the different registrants have the same contact information — such as the same postal address and telephone number (America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918), the same postal and email address (Deutsche Telekom AG v. Tyson Rukash/Jonson, WIPO Case No. D2005-1023), or the same office phone number and website (Société des Hotels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196).
It seems to this Panel that the common feature of the various situations identified above is that, while the registrant of record has apparent control over the domain name, some other person has practical control over the domain name. In this Panel’s view, both persons should be considered to be a ‘holder’ of the dispute domain name. Thus, at least for the purposes of determining if a single complain has been properly brought in respect of multiple domain names, a ‘holder’ of a dispute domain name is any person who has such an interest in the domain name that provides it with apparent or actual control over the domain name. It follows that a single complaint will be properly brought in respect of multiple domain names where there is a common person holding an interest in those domain names.
Applying this principle to the facts of this case, this Panel finds that there is a common person holding an Interest in the dispute domain names. Then disputed domain names are almost identical, and the contact details of the two registrants are the same. The Complainant asserted that these circumstances establish that the registrants of record are aliases for a single entity. In the absence of any contest from the Respondents on this assertion, this Panel is willing to find that there is a single entity that has practical control over the disputed domain names — that being the entity for whom the names of the registrants of record are aliases. Accordingly, this Panel finds that this single Complain is properly brought against both of the dispute domain names, despite the fact that the registrant of record for each domain name is different.”
It appears from the Complaint (and it has not been challenged by any Respondent), that there is a common person holding an interest in all the disputed domain names. Accordingly, the Complaint is allowed against the three named Respondents who will be referred to collectively as “the Respondent”.
5. Factual Background
The Complainant is a company headquartered in San Diego, California, United States with offices across Europe and Asia. For over 15 years, it has created, distributed and licensed digital video technologies for domestic, computer and outdoor uses. Leading electronic manufacturers have shipped over one billion of the Complainant’s playback and recording devices including Blue-ray players, digital TVs, gambling consoles, mobile phones, and tablets. Consumer software products have been downloaded over a billion times.
The Complainant’s key products are video codecs distributed and developed under the brand name DivX. A video codec is software that enables compression or decompression of digital video. They are found in DVD systems and in all digital devices and software products with video recording or playing capacity, including movie players.
The Complainant owns numerous patents in many countries for the trademark DIVX and also for the trademark STAGE6. The Complainant’s registrations include ones in the European Community and the United States.
The Respondent is not in any way connected with or known to the Complainant who gave the Respondent no license or authority to reflect its trademarks in a domain name.
The Respondent registered the disputed domain names at various dates between January 2009 and July 2014. All these registrations took place well after the registration of the Complainant’s trademarks, the earliest of which was registered in 2004.
All the disputed domain names are directed to a website provided at the domain name <divxstage.to> which provides hosting services for video and music files. Registered users of this service may uplift such media files to the Respondent’s server. Anyone can access the respective media file by streaming or downloading. The links directing the media files hosted by the Respondent are published on multiple corresponding websites offering links to the newest movies, shortly after or even before Box Office release. As a result, anyone can watch the media files uploaded to the Respondent’s servers for free, without consent from the relevant copyright owner.
On August 6, 2004, the Complainant sent a warning letter to the Respondent (i.e., the company allegedly registered in the Seychelles) seeking to have the Respondent “cease and desist” from any further use of the Complainant’s trademark. The Respondent did not reply.
The Respondent already had registered the domain <divxstage.eu>. A panel with the Czech Arbitration Court ordered the transfer of that domain name. It was in respect of that particular proceeding that the Complainant alleges there was a false registrant under the name of Jan Schwarz.
6. Parties’ Contentions
The disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. Each domain name includes the whole of the Complainant’s trademark DIVX with the addition of a generic term “stage” which is likely to be a reference to the Complainant’s STAGE6 video products. It may also describe the kind of services offered on the Respondent’s website as being a stage for media files.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. None of the situations under paragraph 4(c) of the Policy apply to the Respondent who has not filed a response alleging any reliance upon paragraph 4(c). In no way can the imitation of the Complainant’s famous trademark and company name generate a legitimate interest in a domain name confusingly similar to the Complainant’s trademark. There is no confirmation that the first Respondent exists as a company in the Seychelles or anywhere else.
The disputed domain names are registered and are being used in bad faith. A simple Internet search would have revealed the existence of the Complainant and its famous trademarks.
The Respondent is using the disputed domain names principally for the purpose of attracting Internet users to the websites in order to generate income by selling premium accounts for high data transfer rates and positioning advertisements whose revenue depends on traffic volume and pay-per-click for advertising revenues.
By using the disputed domain names incorporating the Complainant’s famous marks, the Respondent intends to create an air of respectability and a pretence of legality for downloading movies in breach of copyright.
Accordingly, the Respondent registered the disputed domain names intentionally to attempt to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship affiliation or endorsement of the website (see Policy, paragraph 4(b)(iv)).
At the time of registration of the first disputed domain name in 2009 the Complainant’s trademarks had been registered for several years and its video codecs had become known all over the world.
The Respondent’s bad faith is further indicated by the fact that it did not respond to the Complainant’s attempt to contact it and also by the possibly false contact information.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant’s trademark DIVX, the confusion is even greater when it is known that the Complainant has a trademark for STAGE6.
The expression “DivX” is not a dictionary word. It clearly brands the Complainant and its services. The addition of the word “stage” to the trademark is, at best for the Respondent, a generic add-on which could well refer to a stage platform for the Respondent’s copyright breach activities.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority to reflect its trademark in any of the disputed domain names. The Respondent’s intentional choosing of the disputed domain name and the registrant company name to create a false relationship to the Complainant does not create a right or legitimate interest in the disputed domain names. In the absence of any response, that is sufficient to satisfy this limb of Policy under the circumstances.
The Respondent could have filed a response and could have alleged any one of the situations envisaged by paragraph 4(c) of the Policy but he has chosen not to do so.
Accordingly paragraph 4(a)(ii) of the Policy is proved.
C. Registered and Used in Bad Faith
This is a clear case of cybersquatting where the activities of the Respondent described earlier indicate that the Respondent must well have known of the Complainant and its worldwide activities when registering the disputed domain names.
The Respondent is breaching paragraph 4(b)(iv) of the Policy by attracting for commercial gain Internet users to the site and creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website.
It is obvious that the Respondent is using the disputed domain names primarily for the purpose of attracting Internet users to the website in order to generate income for itself by selling premium accounts for high data transfer rates in addition to receiving pay-per-click advertising revenue. It is hard not to disagree with the Complainant’s view that the Respondent is intending to create an air of respectability and legality for the downloading of movie files.
There is no doubt that the registration and use of the disputed domain names are in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <divxstage.ag>, <divxstage.co>, <divxstage.ec>, <divxstage.me> and <divxstage.net> be transferred to the Complainant.
Sir Ian Barker
Date: March 19, 2015