RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov
Case No. D2010-0696
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 N/A Maxim Tvortsov of Sankt-Petersburg, Leningradskaya oblast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <rapidbay.net> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2010. On May 4, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 May 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on June 9, 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.
RapidShare is the registered proprietor of Community Trademark No. 004753828, consisting of the word RAPIDSHARE, having a priority date of November 21, 2005 (“RapidShare's mark”). RapidShare's mark 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, the second-named Complainant and this individual are the same person, and that person has licensed the use of the United States mark to RapidShare.
The Respondent and the Domain Name
The Domain Name was registered on September 22, 2009.
According to the Complaint, the Domain Name resolves to a search engine website (“the Respondent's Website”), designed to allow searching of files held on a number of third party file-hosting websites, including the Complainant's website. The Complainants did not produce a copy of the Respondent's website. RapidShare and some of its competitors were said to be referred to specifically on the Respondent's website, including in a “Disclaimer”, which disclaimed any affiliation with RapidShare.
The Panel attempted to visit the Respondent's website on June 18, 2010. An error report prevented him from doing so, but he was able to access a (Google) cached copy of the Respondent's website as it stood at June 17, 2010.
The Respondent's website as it stood on June 17, 2010 provided a search engine designed to search files held at various file-sharing host websites. The Complainant's website was one of those referred to, along with file-hosting websites operated by some of RapidShare's competitors. Under a heading “What other people are Searching”, there were listed a number of click-on search terms. Clicking on such a term took the site visitor to a webpage which provided details of the particular hosting site on which the relevant file was held. A column containing a date beside each “hit”, was headed “sponsored link”.
The Respondent's website contained a “Disclaimer”, in the following terms:
“Disclaimer
Rapidshare search engine Rapidbay.net does not host any of the files and/or software displayed on this site. Rapidbay.net ONLY indexes these files which are located on remote servers, which Rapidbay.net have no connection with/control of/association with.
This site does not affiliate with Rapidshare.com or other RapidShare site with different tld. Rpaidbay.net is a Rapidshare search engine search on sites, forums, message boards for Rapidshare file links.”
1. The Domain Name is confusingly similar to RapidShare's mark. It consists of RapidShare's mark, switching out the element “share” for the element “bay”. The deletion of the element “share” and the addition of the element “bay” does nothing to distinguish the Domain Name from RapidShare's mark (citing Yahoo! Inc. v C.P.I.C. NET and Syed Hussain,
WIPO Case No. D2001-0195).
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 non-commercial or fair use of the Domain Name.
(ii) The Respondent uses the Domain Name to drive Internet traffic to the Respondent's website, where he advertises a “Rapidshare Search Engine” designed to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents online. Illegal use of another's trademark cannot be considered a bona fide or fair use of the Domain Name.
(iii) 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 RapidShare's mark.
3. The Domain Name was registered in bad faith, and has been used in bad faith. The Complainants rely on the following matters:
(i) There are direct references to RapidShare on the Respondent's website which show that the Respondent had actual knowledge of RapidShare.
(ii) More generally, the totality of the circumstances show that the Respondent knew of RapidShare at the time of registration of the Domain Name. The Domain Name is nearly identical to RapidShare's mark, and is being used in conjunction with related services (citing Facebook Inc. v Privacy Limited Disclosed Agent for YOLAPT,
WIPO Case No. D2007-1193).
(iii) The services which have been provided by the Respondent through the Respondent's website are identical to some of the services set forth in the specification for RapidShare's mark, namely “presentation of goods and services”. And the Respondent's search engine services are related to the balance of the services set out in that specification. Use of a confusingly similar domain name to conduct identical and related services, while repeatedly making reference to RapidShare and RapidShare's mark on the Respondent's website, 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. Such a use in violation of established public policy is a bad faith use of the Domain Name (citing Hoffman La-Roche Inc v Domain Ownership Ltd,
WIPO Case No. D2007-0891).
(v) The use of the Disclaimer on the Respondent's website shows that the Respondent knew that his use of the Domain Name would cause confusion with RapidShare's mark. But the Disclaimer is ineffective, since it is the unauthorized use that brought the consumer to the Respondent's website in the first place (citing ISL Worldwide and the Federal Internationale de Football Association v Western States Ticket Service,
WIPO Case No. D2001-0070).
(i) Respondent
The Respondent did not reply to the Complainant's contentions.
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
(iii) 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 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 Complaint fails at this point.
The Complainants have not proved that they have any trademark or service mark rights in the expression “rapid bay”, or in the word “rapid”. The only relevant right they have proved is a right in the expression “rapidshare”. The issue is whether the use of the word “rapid” in both RapidShare's mark and the Domain Name, is enough to get the Complainants over the line on the “confusingly similar” issue. On balance, the Panel is not satisfied that it is.
The considerations pointing against a finding of confusingly similarity are as follows. First, “rapid” is common word in the English language, and the Panel has little doubt that it must be used in thousands of business names around the world, none of which have any connection with the Complainants. It is an obvious descriptor to use for any business operator who wishes to convey the impression that it provides a fast, or “express”, service. On its own, the word does not convey the idea of anything being shared, and of course it is the concept of sharing (in particular the sharing of computer files) which is both at the core of RapidShare's business and the principal idea conveyed by RapidShare's mark.
Secondly, the word “bay” neither looks nor sounds like the word “share”, and the Complainants have not suggested that “bay” has some special meaning which might cause an Internet user to make a mental link between the Domain Name and RapidShare (or the concept of “sharing”). The words “share”and “bay” are not obvious synonyms.
Thirdly, the decision relied upon by the Complainants in support of their argument under the “Identical or Confusingly Similar” heading, does nothing to advance their case in the particular circumstances here. The Complainants referred to the decision in Yahoo! Inc. v CPIC NET and Syed Hussain,
WIPO Case No. D2001-0195, where two of the at-issue domain names were <yahoobay.org> and <yahoobay.net>. The panel in that case accepted that the complainant's YAHOO! mark was famous, and held that the relevant domain names were confusingly similar to the mark because the mark had been incorporated in its entirety in the domain names (relying on McCarthy on Trademarks & Unfair Competition, 4th ed 1998, at para 23:50: a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it). In this case, only part of RapidShare's mark (the word “rapid”) has been used in the Domain Name, and on its own that part is not distinctive, let alone famous as a mark – it is no more than a common English adjective. The panel's decision in the Yahoo! Inc. case turned on the use of the complainant's mark virtually in full, coupled with the fact that the word “bay” added nothing distinctive.
Considerations pointing to a possible finding of confusing similarity, begin with the fact that the word “rapid” is not often applied in ordinary English usage to describe or qualify something called “bay”. For example, “rapid” hardly seems apposite to describe an indentation in a coastline, a leaf, or a “partitioned or marked area forming a unit” (eg “bomb bay”, “loading bay”, “sick bay”), to take three of the meanings of “bay” provided in the New Shorter Oxford dictionary. And while one might refer to the “baying” of a dog, or someone being “kept at bay”, “rapid” seems an unlikely qualifier for the word “bay” used in either of those senses. An Internet user following this train of thought might begin to think that one or both of the words were being used in a trademark sense, rather than in their generic or descriptive senses.
Further reflection might possibly cause that Internet user to wonder if the “rapid” might be an abbreviation of RapidShare's mark, and “bay” an abbreviated reference to “Ebay” (the Panel notes that the domain names at issue in the Yahoo! Inc. case included not only <yahoobay.net> and <yahoobay.org>, but also <yahooebay.org> and some other domain names formed by combining the YAHOO! and EBAY marks).
But there is nothing in the evidence which might suggest, for example, that RapidShare is frequently (or even sometimes) referred to as “Rapid”. Nor is there anything to suggest that when the Domain Name was registered, there was a proposed or pending merger between RapidShare and Ebay, or something of that sort, which might have led Internet users to believe that a website at the Domain Name would likely be operated or endorsed by both RapidShare and Ebay. There was no mention of Ebay in the Complaint at all.
In the absence of that sort of evidence, and in the absence of any argument from the Complainants that the Domain Name was intended to signal some sort of combined RapidShare/Ebay presence on the Internet, the Panel concludes that the Complainants have failed to discharge their burden of proof in this part of the Complaint. Any line of reasoning which would get to a finding of confusing similarity by assuming that a significant number of Internet users would (i) see beyond the deletion of an important part of RapidShare's name (when RapidShare itself appears to see the word “share” as a sufficiently important part of its branding that the word is joined with “rapid” in the company name and in RapidShare's mark, to form a single word), and (ii) see beyond the deletion of the “e” from “ebay” (arguably an important component of the EBAY mark) to identify a reference to Ebay in the Domain Name, and then (iii) assume the existence of some sort of commercial connection between RapidShare and Ebay, would, in the Panel's view, push the boundaries of the concept of confusing similarity out too far. Tellingly, the Complainants did not even invite the Panel to make those connections.
In some respects this case is not dissimilar to the recent three-member panel decision in Ville de Paris v Salient Properties LLC,
WIPO Case No. D2009-1279. There, the only common feature between the mark relied upon by the complainant and the disputed domain name, was the city name “Paris”. After noting that “thousands of traders no doubt find it necessary to describe their goods or services as coming from, or being offered in, Paris”, the panel held that the complainant had failed to establish confusing similarity. So here, the only common feature between the Domain Name and RapidShare's mark is a common descriptive word (“rapid”) which thousands of traders might use.
In finding that the Complainants have failed to establish confusing similarity between the Domain Name and RapidShare's mark, the Panel is saying nothing about the Respondent's motives in selecting the Domain Name, or whether or not he acted in bad faith. It may well be that he did. The difficulty faced by the Complainants is that before the Panel could consider such questions, the Complainants had to “get to first base” by making out their case under Paragraph 4(a)(i) of the Policy. The enquiry under Paragraph 4(a)(i) is conducted by comparing the disputed domain name with the mark relied upon, both visually and phonetically, and by comparing the respective meanings which each conveys. The limited nature of the exercise does not call for any consideration of extraneous material, such as what might appear on a website at the disputed domain name (see the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at para 1.2: “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity ...”).
Where a complainant's mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick Smith Sole Panelist
Dated: June 22, 2010
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