RapidShare AG and Christian Schmid v. rapidsharedvd
Case No. D2010-0616
1. The Parties
The Complainants are RapidShare AG and Christian Schmid, of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is rapidsharedvd of El Wardian, Mina El Basal, Alexandria, Egypt.
2. The Domain Name and Registrar
The disputed domain name <rapidsharedvd.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. On April 20, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On April 20, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an Amended Complaint on May 3, 2010. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010.
On May 10, 2010, the Center received by email an informal Response to the Complaint. The Response (from the administrative and technical contact for the Domain Name, and sent from the Respondent's email address as indicated in the WhoIs particulars for the Domain Name) was unsigned and did not contain the certificate as to accuracy which the Rules require. In response to an email from the Center enquiring if the May 10, 2010 email was to be regarded as the Respondent's complete Response, the administrative/technical contact advised on May 23, 2010: “yes, that's all I have so far”.
The Center acknowledged receipt of the informal emails received (apparently) on behalf of the Respondent and it notified the Respondent's default on May 26, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on June 1, 2010. 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
The Complainant RapidShare AG (“RapidShare”) is a corporation established in 2006, with its headquarters in Switzerland. RapidShare operates an online file sharing service through its principal website at “www.rapidshare.com” (“the Complainant's website”). Briefly, users of RapidShare's services can distribute Internet files by uploading the files to the platform at the Complainant's website, and emailing a download link to the intended recipients of the computer file. According to the Complaint, the home page at the Complainant's website has become the twelfth most visited home page in the world.
The Complainants state (and the Respondent does not deny) that RapidShare is the registered proprietor of the Community Trademark No. 004753828 RAPIDSHARE, having a priority date of November 21, 2005 (The relevant printout for this trademark was omitted from the Complaint, but the Panel's online check of the OHIM register of Community Trademarks confirms that those details are correct.) The Community Trademark registration covers, inter alia, “online advertising on a computer network”, and marketing, including on digital networks. It also covers “advertising”, including on the Internet and “presentation of goods and services”.
A person having the same name as the second-named Complainant, but said to be resident in Germany, is the proprietor of the mark RAPID SHARE in the United States. According to the Complaint, this individual is the second-named Complainant, and he has licensed the use of the United States mark to RapidShare.
The Respondent and the Domain Name
The Domain Name was registered on November 10, 2008.
The Complainant produced a copy of the Respondent's website, printed on April 18, 2010. It was prominently headed “Rapidshare Downloads – Rapidshare DvD.com”, and it provided links to third party websites, at which DVDs and other materials (which were presumably subject to copyright protection) could be downloaded. The Respondent's website was in the English language, and it contained a copyright claim (2008 – 2010) by “rapidshareDvD.com”.
In accordance with normal practice, the Panel has visited the Respondent's website. The Panel's site visit took place on June 6, 2010. The Respondent's website appeared to be in the same general format as that described in the Complaint. There was a registration/log in facility, and registering on the Respondent's website was said to allow the registrant to be a “full-fledged participant”. The registrant could then add news to the site, leave comments, see hidden text, download files, and much more.”
The Respondent's website appears to operate generally as follows. Individual “authors” (registered as members of the community of users of the Respondent's website) post basic information about a movie, game, television show, etc, with a click-through link to a third party hosting website where a copy of the work in question can be downloaded. “One –click hosting” websites such as that operated by RapidShare, and those at “www.megauplift.com” and “www.hotfile.com”, are apparently utilized in providing this file sharing service. A number of these hosting sites appear to generate revenue by offering a “premium” download service where, for a fee, users can obtain a faster service.
Under the copyright claim on the home page of the Respondent's website, the Panel noted a disclaimer in the following terms:
“None of the files shown here are hosted or transmitted by this server. The links are provided solely by this site's users. The administrator of this site (RapidshareDvD.com) cannot be held responsible for what its users post or any other actions of its users. You may not use this site to distribute or download any material when you do not have the legal rights to do so. It is your own responsibility to adhere to these terms.”
This disclaimer appears to have been added to the Respondent's website very recently: the disclaimer which appeared immediately below the copyright claim on April 18, 2010 simply said:
“Disclaimer: This website does not host any files or links on its server.”
At the foot of the home page on the Respondent's website, the following words appeared:
“Rapidshare Links, Rapidshare Forums, Rapidshare Downloads, Megaupload and Hotfile Downloads.”
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to RapidShare's RAPIDSHARE Community Trademark. That mark has been included in its entirety in the Domain Name, and the Respondent has only added the generic element “dvd”. The addition of that generic element does nothing to distinguish the Domain Name from RapidShare's mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has never operated any bona fide or legitimate business under the Domain Name, nor made any protected noncommercial or fair use of the Domain Name.
(ii) While the Respondent claims to be known as “rapidsharedvd” in the Whois records for the Domain Name, there is no such person or party known to the Complainants, and any such use of RapidShare's RAPIDSHARE mark in a business name would be an infringing use.
(iii) The Respondent's use of RapidShare's RAPIDSHARE mark is illegal, and as such cannot be considered a bona fide use of the Domain Name.
(iv) The Complainants have not granted the Respondent any license, permission or authorization to own or use any domain name registration which is confusingly similar to any of the Complainants' marks.
3. The Domain Name was registered in bad faith, and has been used in bad faith. The Complainants rely on the following matters:
(i) The totality of the circumstances show that the Respondent knew of the Complainants at the time of registration of the Domain Name. The Domain Name is nearly identical to RapidShare's RAPIDSHARE mark, and is being used in conjunction with related services.
(ii) The Respondent uses a registrar who is located in a jurisdiction in which the Complainants have trademark rights which pre-date the registration of the Domain Name. The Respondent had actual, or at least constructive, notice of the Complainants' well-known mark.
(iii) The services provided by the Respondent through the Respondent's website can be seen by some as showing a degree of similarity to some of the services set forth in the specification for RapidShare's RAPIDSHARE Community Trademark, namely “presentation of goods and services”. And the Respondent's search engine and links services are related to the balance of the services set out in that specification. Use of a nearly identical domain name to conduct an identical or related service shows opportunistic bad faith on the part of the Respondent.
(iv) The Respondent is using the Domain Name to enable copyright infringement of copyright materials owned by third parties. That is a bad faith use of the Domain Name.
(v) The Respondent is using the Domain Name for commercial gain, derived from the provision on the Respondent's website of advertisements for third party websites.
B. Respondent
The Respondent failed to file any formal, certified Response as required by the Rules, and the email dated May 10, 2010 sent on the Respondent's behalf was obviously written by someone with only a limited command of the English language. Nevertheless, the Panel was able to discern the following arguments from the email:
(i) The Complainants should not be able to complain that the Domain Name is similar to their trademark. By way of analogy, someone can lawfully obtain a telephone number which might differ by only one digit from someone else's telephone number, and that other person has to accept that similarity.
(ii) The Respondent has proof of ownership of the Respondent's website.
(i) The Complainants are not entitled to claim a monopoly in public property. The Complainant's website does not match the Domain Name in words or in substance. The Complainants' mark is made up of two ordinary English words – “rapid”, and “share” – and the Complainants are not the inventors of the English language. The Respondent was entitled to register the combination of “rapid” + “share” + “dvd”.
(iv) The Complainant's website was established in 2002, and took the names “rapid” and “share”. In so doing, all the Complainant did was take the name of a website registered in 1994 (www.share.com) and add the word “rapid”.
6. Discussion and Findings
A. What the Complainant must prove under the Policy – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(ii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainants have proved this part of the Complaint. RapidShare's Community Trademark RAPIDSHARE has been incorporated in full in the Domain Name, and all that has been added is the generic expression “dvd”. The addition of that generic expression does nothing to remove the confusing similarity caused by the inclusion in the Domain Name of RapidShare's mark (to similar effect, see the very recent panel decision in RapidShare AG and Christian Schmid v. Private RegistrationsAktien Gesellschaft Domain Admin,
WIPO Case No. D2010-0591, in which the panel held that the domain name <rapidshare-premium.com> was confusingly similar to RapidShare's RAPIDSHARE mark).
The Respondent's argument that RapidShare's mark consists only of two dictionary words, and that no-one should be able to claim monopoly rights in such a combination, is misconceived. The consensus view of Panels deciding cases under the Policy is that if a complainant owns a registered trademark, it satisfies the threshold requirement of paragraph 4(a)(i) of the Policy of having “trademark rights” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.1). In this case, RapidShare has satisfied the European Community Trademark registration authority that it is entitled to register the RAPIDSHARE mark, and it is not for the Panel to second guess that decision.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to RapidShare's mark, and the uncontested evidence is that RapidShare has not authorized the Respondent to use its mark, whether in a domain name or otherwise. The Complainants have asserted that there is no person or entity known as “rapidsharedvd”, and the informal email response dated May 10, 2010, sent by the individual who is the administrative and technical contact for the Domain Name, does not challenge that assertion. There is therefore no sufficient basis in the evidence for a claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The Respondent has elected not to file a proper Response to the Complaint, and in the informal email submitted on its behalf it has failed to explain either its reason for choosing the Domain Name or its reason (commercial or otherwise) for creating and maintaining the Respondent's website.
In combination with the evidence and arguments submitted by the Complainant, those matters are sufficient to establish a prima facie case of “no right or legitimate interest”, and the evidential burden shifts to the Respondent.
The Respondent has failed to discharge that burden. In the absence of any alternative explanation for the Respondent's choice of the Domain Name, the Panel infers that the use of the RAPIDSHARE mark in the Domain Name was intended to be understood by Internet users as a reference to RapidShare's file hosting services. That inference appears to be confirmed by the prominent use of RapidShare's mark on the Respondent's website – “Rapidshare” appears there as a single word (just as it is in the RAPIDSHARE mark), separated from the expression “DvD” – and by the fact that the services provided at the Respondent's website are very similar to those provided by RapidShare.
The Respondent's website appears to be little more than a platform designed to facilitate users engaging in file sharing activities, utilising the services available at the Complainant's website or at one of the sites of RapidShare's competitors. The use of RapidShare's mark in the Domain Name was clearly intended to attract to the Respondent's website Internet users who would assume that the website was associated in some way with RapidShare. Only on arrival at the Respondent's website would it be apparent to the site visitor that the Respondent's website is not connected with RapidShare. Such a use of the Domain Name, designed as it is to confuse Internet users into wrongly believing that the Respondent's website will likely be operated by (or at least endorsed or approved by) RapidShare, is not a use of the Domain Name in connection with a “bona fide offering of goods or services” (Policy, paragraph 4(c)(ii)), or a “legitimate noncommercial or fair use of the Domain Name (Policy, paragraph 4(c)(iii)).
The author of the May 10, 2010 email pointed to the fact that RapidShare's mark consists only of a combination of two dictionary words, and argued that no-one should be prevented from registering a domain name consisting of such a combination. But the Respondent does not appear to have been using “rapid share” as a descriptive English expression – the Respondent's use of the expression suggests that the Domain Name was chosen because of its similarity to RapidShare's RAPIDSHARE mark, and with a view to trading off the value of that mark (the running together of the words “rapid” and “share” on the Respondent's website, separated from the expression “DvD”, leaves little room for doubt that the Respondent was using “rapidshare” in a trademark sense, and not as a descriptive or generic expression).
No right or legitimate interest can be claimed in a disputed domain name consisting of a dictionary expression, where that domain name has been chosen not because of its generic or descriptive character, but for the purpose of trading off the complainant's goodwill in an identical or confusingly similar mark (see Mobile Communication Service Inc v. WebReg RN,
WIPO Case No. D2005-1304, mVisible Technologies Inc v. Navigation Catalyst Systems Inc,
WIPO Case No. D2007-1141, and Tata Communications International Pte Ltd v. Postmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois,
WIPO Case No. D2010-0217).
The Respondent not having raised any other matter which might constitute a right or legitimate interest, the Complainants succeed on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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.
The Complainants also succeed on this part of their Complaint, essentially for the reasons which are set out above in Section 6C of this decision. The Panel is satisfied that the Respondent has deliberately used RapidShare's mark for the purpose of attracting to the Respondent's website Internet users who are looking for websites operated by or associated with RapidShare. The Respondent has filed no Response, and the May 10, 2010 email sent on its behalf offered no reason for the choice of the Domain Name, nor any explanation for the decision to establish and operate the Respondent's website. In the absence of any such explanation, the Panel concludes that the Respondent's website is probably being operated for commercial gain of some sort, whether in the form of fees paid by those who register to use the Respondent's file sharing services, or (more likely) in the form of “referral revenue” paid by file hosting websites which are accessed from the Respondent's website. Those circumstances come within the category of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy.
Moreover, the uncontradicted evidence sufficiently shows that it has been set up and used to facilitate what (prima facie) appears to be large scale copyright infringement, using RapidShare's mark to attract additional prospective infringers to the Respondent's website. The Panel is satisfied that registration and use of the Domain Name for such purposes constitutes bad faith registration and use, even if the registration and use might not fit within any of the examples of bad faith registration and use which are set out at paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <rapidsharedvd.com>, be transferred to the Complainants.
Warwick Smith Sole Panelist
Dated: June 11, 2010
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