The Complainant is DivX, LLC, United States of America (“United States”), represented by IPLA, United States.
The Respondents are Stan Wojcik, Serbia (the “First Respondent”) / Stan Wojcik, divxcrawler.com, Serbia (the “Second Respondent”) and Roger Komorowski, STAROG Roger Komorowski, Poland (the “Third Respondent”). 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The disputed domain names The disputed domain name The disputed domain names listed above are collectively referred to as the (“Domain Names”) and the Registrars listed above are collectively referred to as the (“Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 28, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On April 29, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 6 and May 7, 2020. The Center verified that the Complaint together with the amended Complaint (hereafter “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 Respondents of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 5, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on June 10, 2020. 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 a United States company that has since 1999 provided video codec software which allows for the compression and decompression of digital video files. The Complainant is the owner of trademark registrations for a mark containing the letters DIVX (the “DIVX Mark”), the earliest of which is a United States trademark with an application date of December 28, 2000, (registration number 2671143, registered on January 7, 2003) for goods in class 9 being online downloadable computer software for broadband video transfer and services in class 35, being licensing of computer software. The Domain Name The Domain Name The Complainant makes the following contentions: (i) that the Domain Names are identical or confusingly similar to the Complainant’s DIVX Mark; (ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith. The Complainant is the owner of the DIVX Mark, having registered the DIVX Mark in the United States as early as 2000 (with a first use in 1999). Each of Domain Names reproduces the DIVX Mark in its entirety (along with a Generic Top-Level Domain (“gTLD”) and some descriptive words) which does not distinguish any of the Domain Names from the DIVX Mark. There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names, nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial fair use of the Domain Names. Rather the Respondents are either not using the Domain Names or are using them to redirect to a website that offers unauthorised links to Complainant’s software products along with pirated entertainment material. The Domain Names were registered and are being used in bad faith. The Domain Names are either inactive or redirect to the Respondent’s Website where the Respondent offers unauthorised links to Complainant’s software products along with pirated entertainment material for commercial gain. Such conduct amounts to registration and use of the Domain Names in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Consolidation of Respondents As identified in section 2 above there are three named registrants of the Domain Names. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The First Respondent and the Second Respondent are clearly the same individual and share identical contact details. Prior to the commencement of the proceeding the Active Domain Names owned by the First and Second Respondents redirected to the Respondent’s Website at the “divxcrawler.media” Domain Name, which is owned by the Third Respondent. Following the commencement of the proceeding each of the Active Domain Names, including the Finally, the Panel notes that none of the Respondents have denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent. 6.2. Substantive Matters A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the DIVX Mark, having registrations for DIVX as a trademark in the United States. Disregarding the gTLD as a necessary element of a domain name, each of the Domain Names is confusingly similar to the DIVX Mark as each domain name reproduces the DIVX mark along with one or more dictionary words. The addition of a dictionary term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004‑0056. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s DIVX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the DIVX Mark or a mark similar to the DIVX Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use. Indeed the Inactive Domain Names do not resolve and on the evidence before the Panel have never resolved to active websites. The Active Domain Names presently resolve to the Complainant’s website but prior to the commencement of the proceeding resolved to a site offering unauthorized download links to Complainant’s software along with pirated entertainment products. The use of a series of a domain names containing the Complainant’s The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the DIVX Mark at the time the Domain Names were acquired. The Active Domain Names redirect or have redirected to websites that make direct reference to the Complainant. Furthermore, although the The Respondent has used the Active Domain Names to redirect to a website offering unauthorised download links to Complainant’s software and pirated entertainment products. The use of a series of Domain Names incorporating Complainant’s DIVX Mark to redirect to a third party site offering pirated content is use in bad faith under the Policy, see LEGO Juris A/S v. Jyotirmoy Biswas;WIPO Case No. D2018-0032. Furthermore the Panel is prepared to infer that the Inactive Domain Names are being used in bad faith as they are most likely being passively held for future use in the same manner as the Active Domain Names, namely for websites (or to redirect to websites) that will misleadingly create an association with the Complainant for commercial gain. As such Panel finds that the passive holding of Inactive Domain Names does not prevent a finding of use in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith 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 Domain Names, Nicholas Smith
(ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities,
(iii) relevant IP addresses, name servers, or webhost(s),
(iv) the content or layout of websites corresponding to the disputed domain names,
(v) the nature of the marks at issue (e.g., where a registrant targets a specific sector),
(vi) any naming patterns in the disputed domain names (e.g.,
(vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue,
(viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s),
(ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behaviour, or
(xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
trademark to redirect to a commercial site facilitating copyright infringement is not a bona fide offering of goods or services.
Sole Panelist
Date: June 12, 2020
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