{
    "case_number": "CAC-ADREU-006813",
    "time_of_filling": null,
    "domain_names": [
        "divxstage.eu"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Daniel Schatz (DivX, LLC, San Diego Calif., US)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Jan Schwarz"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant (formerly known as DivXNetworks, Inc. and DivX, Inc.) is a company headquartered in San Diego, California, with offices across Europe and Asia. \r\n\r\nThe Complainant has a number of European subsidiaries including MainConcept GmbH, based in Elisabethstraße 1, 52062 Aachen, Germany, which is joining the complaint as Co-Complainant.\r\n \r\nMainConcept GmbH is a wholly owned subsidiary of the Complainant and has been fully authorized to use the DivX® trademark and to license the Complainant’s DivX® products within Europe.\r\n\r\nThe Complainant owns a comprehensive portfolio of trademarks for its DIVX® branded products and licensing services, including, but not limited to, the following trademark registrations (hereinafter referred to as “Trademarks”): \r\nCommunity Trademark, 2252385, word: DIVX registered on April 7, 2004 for goods and services in classes 9, 35 and 42; \r\nCommunity Trademark 3924149, a figurative mark with a DIVX device, registered on July 8, 2004 for goods and services in classes 9, 35, 38 and 42; \r\nUS Trademark 76188096, word: DIVX registered on September 21, 2005 for on-line downloadable computer software for broadband video transfer and licensing of computer software. \r\nCommunity Trademark 5382478, word: STAGE6 registered on May 22, 2008 for goods and services in classes 9, 35, 38, 41 and 42. \r\n\r\nThe disputed domain name <divxstage.eu> was registered on April 8, 2011.\r\n\r\nThe Complainant requests that the disputed domain name be transferred to its said wholly owned subsidiary and co-Complainant MainConcept GmbH.",
    "other_legal_proceedings": "",
    "discussion_and_findings": "Procedural Issue\r\nThis Panel notes that the Complainant is established in the United States of America and is therefore not an \"undertaking having its registered office, central administration or principal place of business within the Community (Regulation 733\/2002). The \"Overview of CAC panel views on several questions of the alternative dispute resolution for .eu domain name disputes\" published by the Czech Arbitration Court states at page 22 that the consensus view is that \"a]ccording to Art 22(1) PPR and Paragraph B 1 (a) of the ADR Rules, any person or entity can start and ADR proceeding. Therefore non-EU-entities have standing in ADR .eu proceedings. However, those entities cannot request a transfer of the domain name, but only revocation [...] The Panels have usually accepted joint complaints filed by non-EU-right holders and their EU subsidiaries or other related entities. If transfer was requested to the EU entity it was usually granted.\"\r\n\r\nIn the interest of consistency of the decisions within this ADR process this Panel has decided that it is appropriate to follow the consensus view and for reasons given below has decided to direct transfer of the disputed domain name to the wholly owned subsidiary of the Complainant which is established in Germany, has been granted licensee rights by the Complainant rights holder and  has joined in these proceedings as a co-Complainant. \r\n\r\nSubstantive Issues\r\nArticle 21 of Regulation 874\/2004 and Rule B 11 of the ADR Rules require that the Complainant must prove that \r\n\r\ni. the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and\/or Community Law and \r\n\r\nii. the domain name has been registered by the Respondent without rights or legitimate interest in the name; or \r\n\r\niii. that the domain name has been registered or is being used in bad faith. \r\n\r\nComplainant's Rights\r\nThe Complainant has provided evidence that it has rights in the DIVX and STAGE6 marks recognised in national law and Community law through the above-listed Community Trademark registrations. \r\n\r\nThe Complainant's subsidiary company MainConcept GmbH, based in Elisabethstraße 1, 52062 Aachen, Germany, which joins as Co-Complainant in these proceedings is a wholly owned subsidiary of the Complainant and has been fully authorized to use the DivX® trademark and to license the Complainant’s DivX®  products within Europe. In such circumstances MainConcept GmbH also has rights as authorised licensee in said trademarks recognised in national law and Community law and is an organisation established within the Community for the purposes of Article 4.2(b)(ii) of Regulation 733\/2002.\r\n\r\nConfusing Similarity\r\nThis Panel accepts the Complainant’s submissions that the disputed domain name <divxstage.eu> is confusingly similar with the Complainant’s DIVX mark and accepts that the <.eu> TLD extension may be ignored for the purposes of comparison in this case. The letters DIVX are the dominant element in the disputed domain name and the additional element “stage” does not serve to distinguish it as it is a descriptive term in the circumstances of the present case.\r\n\r\nIt is not necessary to consider whether the disputed domain name is confusingly similar to the Complainants’ “STAGE6” mark. \r\n\r\nThis Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and\/or Community Law and has therefore succeeded in the first element of the test in Article 21 of Regulation 874\/2004 and Rule B 11 of the ADR Rules.\r\n\r\nRights or Legitimate Interest\r\nThe Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the owner of the DIVX mark and it has not authorized, licensed, or permitted the Respondent to register or use the Complainant’s trademarks as a domain name nor in any other way. Furthermore the Complainant’s evidence is that the company named DivxStage + Ltd. purportedly registered in the Seychelles does not exist; and furthermore that the Respondent is using the disputed domain name as the address of a website to provide illegal services.\r\n\r\nIn the circumstances the burden of proof rests with the Respondent to rebut this evidence. The Respondent has failed to furnish a response and has therefore failed to discharge the burden.\r\n\r\nThis Panel finds that on the balance of probabilities the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name and the Complainant has therefore succeeded in the second element of the test in Article 21 of Regulation 874\/2004 and Rule B 11 of the ADR Rules.\r\n\r\nBad Faith Registration and Use\r\nOn the evidence, the disputed domain name appears to be a combination of two of the Complainant’s registered trademarks. The Complainant’s DIVX mark is particularly distinctive and is the first and dominant element of the disputed domain name. The Respondent did not deliver a Response or other explanation of the disputed domain name was selected and registered. This Panel takes the view that on the balance of probabilities the disputed domain name was registered because of its similarity with the Complainant’s mark and with the intention of taking predatory advantage of the Complainant’s reputation and goodwill by creating the impression among Internet users that the website to which the disputed domain name resolves is endorsed, sponsored or operated by the Complainant and thereby cause confusion with the Complainant’s trademarks.\r\n\r\nThe Respondent has not denied or challenged in any way that the Respondent is using the disputed domain name as the address of a website to provide illegal downloads.\r\n\r\nFurthermore this Panel finds that on the balance of probabilities the registrant has provided false details of its identity and address which in itself would allow this Panel to make a finding of bad faith registration and use of the disputed domain name.\r\n\r\nThis Panel finds therefore that on the balance of probabilities the disputed domain name has been both registered and is being used in bad faith and the Complainant has therefore succeeded in the third and final element of the test in Article 21 of Regulation 874\/2004 and Rule B 11 of the ADR Rules and is entitled to the relief sought in the Complaint.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain name DIVXSTAGE be transferred to MainConcept GmbH",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2014-11-26 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: DIVXSTAGE\r\n\r\nII.     Country of the Complainant: USA and Federal Republic of Germany, country of the Respondent: Spain\r\n\r\nIII.    Date of registration of the domain name: 8 April 2011\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n1. Community Trademark 2252385, DIVX registered on April 7, 2004 for goods and services in classes 9, 35 and 42; \r\n2. Community Trademark 3924149, a figurative mark with a DIVX device, registered on July 8, 2004 for goods and services in classes 9, 35, 38 and 42; \r\n3 Community Trademark 5382478,STAGE6, registered on May 22, 2008 for goods and services in classes 9, 35, 38, 41 and 42. \r\n\r\nV.    Response submitted: None\r\n\r\nVI.   Domain name is confusingly similar to the protected right\/s of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. Respondent has no rights or legitimate interests in the disputed domain name.\r\n        2. Complainant made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Complainant is the owner of the confusingly similar trademark DIVX and has not granted the Respondent any rights to use the trademark as a domain name or otherwise. Respondent failed to file a Response and so has not discharged its burden of proof.\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes, the disputed domain name was registered and is being used in bad faith.\r\n        2. Respondent chose, has registered and is using the disputed domain name which is confusingly similar to the Complainant's registered trademark as the address of a website providing media content. On the balance of probabilities the domain name was chosen, registered and is being used to take predatory advantage of the Complainant's goodwill in the name.\r\n\r\nIX.   Other substantial facts the Panel considers relevant: \r\n\r\nX.    Dispute Result: [Transfer of the disputed domain name to MainConcept GmbH, based in Elisabethstraße 1, 52062 Aachen, Federal Republic of Germany.\r\n\r\nXI.   Procedural factors the Panel considers relevant: This Panel notes that the Complainant is established in the United States of America and is therefore not an \"undertaking having its registered office, central administration or principal place of business within the Community (Regulation 733\/2002). The \"Overview of CAC panel views on several questions of the alternative dispute resolution for .eu domain name disputes\" published by the Czech Arbitration Court states at page 22 that the consensus view is that \"a]ccording to Art 22(1) PPR and Paragraph B 1 (a) of the ADR Rules, any person or entity can start and ADR proceeding. Therefore non-EU-entities have standing in ADR .eu proceedings. However, those entities cannot request a transfer of the domain name, but only revocation [...] The Panels have usually accepted joint complaints filed by non-EU-right holders and their EU subsidiaries or other related entities. If transfer was requested to the EU entity it was usually granted.\"\r\n\r\nIn the interest of consistency of the decisions within this ADR process this Panel has decided that it is appropriate to follow the consensus view and for reasons given below has decided to direct transfer of the disputed domain name to the wholly owned subsidiary of the Complainant which is established in Germany, has been granted licensee rights by the Complainant rights holder and  has joined in these proceedings as a co-Complainant. \r\n\r\nXII.  [If transfer to Complainant] Is Complainant eligible? The Complainant is not established in the EU. It is joined as a co-Complainant by its wholly owned subsidiary and authorised licensee MainConcept GmbH, Aachen which has licensee rights in the name and an undertaking established within the Community for the purposes of Article 4.2(b)(ii) of Regulation 733\/2002.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}