WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG and Christian Schmid v. TheLeech, McMohan Kumar

Case No. D2010-0628

1. The Parties

The Complainants are RapidShare AG and Christian Schmid both of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is TheLeech, McMohan Kumar of Greece.

2. The Domain Name and Registrar

The Disputed Domain Name <rapidsharetools.com> (the “Disputed Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 21, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed 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 Respondent of the Complaint, and the proceedings commenced on April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2010.

The Center appointed Kar Liang Soh as the sole panelist in this matter on June 3, 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.

On June 18, 2010, the Center informed the Parties that due to exceptional circumstances, the due date for the Decision in this case was extended.

4. Factual Background

The Complainant was founded in 2006. It operates a popular file hosting service at their website “www.rapidshare.com” having a storage capacity of several petabytes and an Internet connection capable of transferring hundreds of gigabytes simultaneously.

The Complainant uses the trade mark RAPID SHARE on its services and is the owner of the following trade mark registrations:

Jurisdiction Trade Mark No. Priority Date Trade mark

United States 3313895 September 21, 2005 RAPID SHARE

European Union 004753836 November 21, 2005 RAPID SHARE THE EASY WAY TO SHARE YOUR FILES

European Union 004753828 November 21, 2005 RAPIDSHARE

The services to which the above registrations relate include web hosting, computer, presentation of goods and services, and research in databases. The Complainant also uses a logo comprising the trademark RAPIDSHARE and an arrow device.

The Respondent registered the Disputed Domain Name on October 24, 2006, about a year after the priority dates of the Complainant's trade mark registrations. The Respondent's website under the Disputed Domain Name acknowledges the Complainant as “a leading file-hoster” and “world's most popular file-hosting company”. The website links to and discusses the Complainant's services under the trade mark RAPID SHARE, as well as other file hosters and download tools.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark;

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name. The Complainant has not granted the Respondent any license, permission, or authorization to own or use any domain name which is confusingly similar to the Complainant's trade mark. The Respondent is not commonly known as “rapidsharetools” but “TheLeech”;

(c) The Disputed Domain Name was registered and is used in bad faith. The Complainant's trade mark RAPID SHARE is well-known (At this point, the Panel should pause to comment that the Complaint is unclear as to which of the Complainant's trade marks the Complainant claims to be well-known. From the context of the Complaint, the Panel understands the Complainant as referring to the words RAPID SHARE). The website at “www.rapidshare.com” had risen to the twelfth most popular website in the world. The Respondent operates a website under the Disputed Domain Name which provides links to the Complainant's competitors. The website also provides links to password crackers to gain unauthorized access to the Complainant's systems and encourage users to circumvent the Complainant's file size limitations in violation of the United States Computer Fraud and Abuse Act, exhibiting opportunistic bad faith. The Respondent is using the Disputed Domain Name for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Complainant must show the following in paragraph 4(a) of the Policy in order to succeed in this proceeding:

(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(3) The Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant's trade mark rights in the trade mark RAPID SHARE is established for purposes of these proceeding by the Complainant's trade mark registrations. The Disputed Domain Name incorporates the entire mark RAPID SHARE differing essentially by the suffix “tools” in the Disputed Domain Name. The key word in the Disputed Domain Name is clearly the word “rapidshare” and the suffix “tools” is merely descriptive of it.

The weight of authority and practice developed in past panel decisions is clear. A domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes and/or suffixes is considered confusingly similar to the trade mark (e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The suffix “tools” in the Disputed Domain Name is non-distinctive in the view of the Panel. Therefore, the Disputed Domain Name is confusingly similar to the Complainant's trade mark RAPID SHARE and the Complainant has satisfied the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Since the question of rights and legitimate interests depends on information usually only available to a respondent and not complainant, it is the consensus of past UDRP panel decisions that a complainant is only required to make out a prima facie case. The Complainant, being the owner of rights in the trade mark RAPID SHARE, has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. The Respondent also does not appear from the evidence to have any reason for selecting the Disputed Domain Name other than for the purpose of associating the Disputed Domain Name with the Complainant. Having regard to the content of the website under the Disputed Domain Name, it becomes patent that the Disputed Domain Name is intended to refer to the RAPIDSHARE files which the website purportedly provides comments and tools for.

Although the Respondent's website contains comments about the Complainant and the Complainant's services, it does not appear to be a noncommercial criticism website discussed at length by past UDRP decisions (see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477; Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190). The existence of advertisements, comments and links to download programmes, and comments about other file hosters on Respondent's website strongly suggests that there is a commercial purpose behind it. The comments regarding the Complainant are more likely that not supportive and incidental to such purpose. In any event, the Respondent has chosen not to canvass any position in this regard and with the lack of any useful evidence in this regard, it does not appear fruitful for the Panel to speculate on this issue.

In the circumstances, the Panel holds that a prima facie case has been established that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Further, the Respondent has chosen not to respond to the Complainant, further reinforcing the finding that the Respondent has no rights or legitimate interests to put forward.

C. Registered and Used in Bad Faith

This Panel accepts that for a website at “www.rapidshare.com” to be ranked the twelfth most visited website in the world, the trade mark associated with the domain name of that website must be well-known. This finding is corroborated by the fact that the Complainant's trade mark RAPID SHARE has also been incorporated in its entirety in other domain names which are concurrently the subject matter of other domain name disputes (RapidShare AG, Christian Schmid v. PrivacyProtect.org / N/A, ivanov yura, Yura Bilyk, WIPO Case No. D2010-0568; RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao, WIPO Case No. D2010-0600; RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610; AG, Christian Schmid v. Liao Fei, WIPO Case No. D2010-0614). Although each case should be determined on its own merits, the circumstances are such that the Complainant's trade mark RAPID SHARE seems to be an attractive choice for being registered as a domain name prefixed or suffixed with other generic words. Therefore, the suggestion that the Complainant's trade mark is well-known cannot be discounted and a prima facie finding is established.

In any event, the Respondent has not disputed to the reputation of the Complainant as a corollary, the Complainant's trade mark RAPID SHARE. There is no reason to hold that the Complainant's trade mark is other than well-known. The selection of the Disputed Domain Name by the Respondent clearly speaks of a deliberate intent to create an impression of an association with the Complainant and indicate opportunistic bad faith registration and use of the Disputed Domain Name (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089).

The Panel notes that the Respondent in registering the Disputed Domain Name has provided what appear to be fictitious contact details. All the address lines repeat the name “McMohan”. The office fax number provided starts with “+1”. Judicial notice is taken of the fact that “+1” is the international country calling code of inter alia the United States of America. The code for Greece is “+30”. Such conduct puts the Respondent in a suspicious light and further corroborates the finding of bad faith registration and use of the Disputed Domain Name.

Further, the Complainant seeks to rely on the prior decision of Weyerhaueuser Company v Skinner, WIPO Case No. D2007-1545 as an authority that use of a domain name to provide users with links to competitors of a complainant is evidence of bad faith registration and use. It should be highlighted that this case and its previous line of cases (e.g., Maruti Udyog Ltd. v. maruti.com, WIPO Case No. D2003-0073; Burberry Limited v. Startelecom, WIPO Case No. D2005-1114) deal with parking sites. The Respondent's website does not appear to be a parking site. The existence of advertisements on the Respondent's website under the Disputed Domain Name suggests that the Respondent may be receiving commercial gain. In any event, since the Panel has already decided above that the Disputed Domain Name was registered and used in bad faith, it is tempting but unnecessary to consider whether the principle in these cases could be extended to the present circumstances.

In addition, whether the activities of the Respondent amount to a violation of the United States Computer Fraud and Abuse Act is beyond the purview of this Panel. Regardless, it is unnecessary to deliberate on this further as bad faith registration and use has already been established above.

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 <rapidsharetools.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist

Dated: June 30, 2010