The Complainant is DivX, LLC, United States of America (the “United States”), represented by IPLA, LLP, United States.
The Respondent is Direct Privacy, Savvy Investments, LLC Privacy ID# 14313590, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 2019, the Registrar 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2019.
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 July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed William F. Hamilton as the sole panelist in this matter on August 27, 2019. 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 develops software products that compress video files into smaller sizes while maintaining high visual quality. The Complainant owns over 198 trademark registrations for DIVX and DIVX-formative trademarks (collectively, the “Mark”) for use with a wide variety of computer, electronic, and software-related goods and services. The original registration with the United States Patent and Trademark Office (USPTO) for the DIVX trademark, under registration number 2671143, shows a first use date of 1999. The Complainant operates the website “” where it promotes itself as an innovative “digital video pioneer”. The Complainant also owns and operates multiple Internet domain names incorporating the Mark.
The Respondent registered the disputed domain name on October 12, 2018. The disputed domain name was registered by the Respondent on March 17, 2015. The latter disputed domain name currently resolves to the former. The Respondent’s website appears to sell downloads of various popular movies and offers a “DivX Crawler Premium Membership -Instant Access -Thousands of Movies – Daily Updates”. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s Mark because the disputed domain names entirely incorporate the Mark. The Complainant asserts that the words “crawler” and “club” used as suffixes in the disputed domain names are mere generic expressions and that the disputed domain names’ Top Level Domains (“.club” and “.tv”) do not dispel confusingly similarity. The Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain names because, prior to registering the disputed domain names, the Respondent did not conduct any bona fide business using the DIVX Mark. The Complainant disavows providing the Respondent with any permission or authority to use the DIVX Mark. Finally, the Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith to lure unsuspecting Internet users to its website where the Respondent offers pirated movies for sale. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds the disputed domain names are confusingly similar to the Complainant’s Mark because the disputed domain names wholly incorporate the Complainant’s DIVX trademark and only attach to this mark descriptive suffixes. The Top Level Domains of the disputed domain names are immaterial to the analysis of confusingly similarity. See generally WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sections 1.7 and 1.11.1.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondent does not have any rights or interests in the disputed domain names. Other than the illicit activities the Respondent is conducting at its website, there is not apparent prior use by the Respondent of the Mark or the disputed domain names. The Complainant has not consented to the Respondent’s use of the Mark or the disputed domain names. Moreover, the use of the disputed domain names to trafficking in purloined movies in violation of various copyright laws cannot establish rights or legitimate interests in the disputed domain names. Also noting the nature of the disputed domain names, the Panel finds that their composition cannot constitute fair use as they effectively impersonate or suggest sponsorship or endorsement by the Complainant, see WIPO Overview 3.0 at section 2.5.1.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and used in bad faith. The Complainant’s business and the Mark was known by the Respondent prior to the registration of the disputed domain names as demonstrated by the prominent use of the Complainant’s Mark on the Respondent’s website. SIEMENS AG v. Omur Topkan,WIPO Case No. D2013-1318. The obvious bad faith purpose of the Respondent’s salient use of the Complainant’s Mark is to entice unsuspecting Internet users to purchase movies otherwise subject to copyright protection. RapidShare AG, Christian Schmid v. ivano yura / PrivacyP,WIPO Case No. D2010-0569 (bad faith found where respondent provided an online platform for illegally sharing digital works subject to copyright protection); Lime Wire LLC v. David Da Silva,WIPO Case No. D2007-1168 (offering of unauthorized downloads of the complainant’s software is evidence of bad faith). The Panel also finds that the nature of the disputed domain names carry a risk of implied affiliation.
The Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy. 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 Complainant.
William F. Hamilton
Sole Panelist
Date: September 10, 2019
Full & Egal Universal Law Academy