WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG, Christian Schmid v. WhoisGuard, WhoisGuard Protected / Marsonija Plast, Mario Ljubicic

Case No. D2010-0832

1. The Parties

The Complainant is RapidShare AG, Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is WhoisGuard, WhoisGuard Protected / Marsonija Plast, Mario Ljubicic of Westchester, California, United States of America and Sibinj, Croatia, respectively.

2. The Domain Name and Registrar

The disputed domain name <rapidshare-search-engine.com> (the “Domain Name”) is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2010. On May 25, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On May 26, 2010, eNom, 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 Center sent an email communication to the Complainant on May 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant indicated on May 28, 2010 by email that it had decided not to amend the Complaint. 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 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2010.

The Center appointed David Taylor as the sole panelist in this matter on July 2, 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that there was no Response filed.

The Complainant is a Swiss company. It has been using the trade mark RAPIDSHARE in commerce since 2006 in particular in connection with file hosting services. The Complainant operates the website “www.rapidshare.com”. Within a short time, the Complainant's website and services became more and more known worldwide.

The Complainant owns several trade mark registrations, covering mainly services of international class 35 in particular data storage and research in databases, including the following:

- US Trade Mark RAPID SHARE registered on October 16, 2007 with the USPTO under number 3313895;

- Community Trade Mark RAPIDSHARE registered on September 25, 2008 with the OHIM under number 4753828.

The Respondent registered the Domain Name on May 11, 2007. The Domain Name was registered via a domain privacy service. The registrar with which the Domain Name was registered disclosed the name and contact information for the registrant of the Domain Name.

The Domain Name resolves to a website offering a platform allowing the downloading of files from file sharing websites. This website provides a disclaimer of affiliation with the Complainant.

5. Parties' Contentions

A. Complainant

(i) The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's trade marks in the terms RAPIDSHARE and RAPID SHARE:

The Complainant asserts that the Domain Name reproduces its trade marks entirely and that the addition of the generic elements “search-engine” is not sufficient to differentiate the Domain Name from the trade marks.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant contends that the Respondent has not been commonly known by the Domain Name.

The Complainant contends that the Respondent uses the Domain Name to offer a search engine designed to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents online. According to the Complainant, this business should be regarded as “illegal use of another's trademark” and, therefore, cannot be considered a bona fide or fair use.

Furthermore, the Complainant claims that it has not granted the Respondent any licence, permission or authorisation by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant's marks.

(iii) The Complainant asserts that the Domain Name was registered and is being used in bad faith.

The Complainant noted that that the Respondent's website makes direct reference to the Complainant, thereby proving the Respondent's actual knowledge of the Complainant and its trade marks.

The Complainant contends that the services provided on the website at the Domain Name correspond to some of the services covered by the Community Trade Mark RAPIDSHARE, namely “presentation of goods and services”. The Complainant refers to WIPO Administrative Panel decisions considering that use of a nearly identical domain name to conduct identical or related services shows opportunistic bad faith on the part of the respondent.

According to the Complainant, the Respondent is using the Domain Name to enable copyright infringement of third parties' copyrighted material. According to the Complainant, such use in violation of established public policy cannot give rise to a claim of bona fide use and must therefore be a bad faith use of the Domain Name.

The Complainant submits that the fact that the Respondent posted a disclaimer of affiliation evidences that it knew that the visiting public would assume an affiliation or sponsorship between the parties. The Complainant asserts that the fact that the Respondent registered and used the Domain Name anyway shows blatant bad faith and intent to abuse the Complainant's trade mark.

For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.

In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

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

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

(iii) the Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

The first element that needs to be established is whether the Complainant has rights in the term RAPIDSHARE.

The Complainant submits evidence that it has registered trade marks in the terms RAPIDSHARE and RAPID SHARE.

Therefore, based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the terms RAPIDSHARE and RAPID SHARE.

The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term RAPIDSHARE or RAPID SHARE in which the Complainant has rights.

The Domain Name reproduces the Complainant's trade mark in the term RAPIDSHARE with the mere addition of the elements “search-engine” and the gTLD “.com”.

With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name.

Concerning the addition of the elements “search-engine”, the Panel finds that the dominant element of the Domain Name is the word “rapidshare” which is identical to the Complainant's trade mark. The Panel is of the view that generally confusing similarity may not be avoided where a domain name reproduces the entire mark of a third party with the mere addition of descriptive or non-distinctive terms. The words “search” and “engine” are not capable of reducing the risk of confusing similarity. Numerous prior Administrative Panels have also held that if a domain name incorporates a Complainant's trade mark in its entirety this is enough to establish confusing similarity, despite the addition of additional characters, see for example PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, where over seventy domain names all containing the trade mark PEPSI and a generic term were found to be confusingly similar to the Complainant's trade mark PEPSI.

The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:

“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 [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent's] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent] ha[s] acquired no trademark or service trademark rights; or

(iii) [Respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service trademark at issue.”

There is nothing to suggest that the Respondent could satisfy any of the requirements of paragraph 4(c) of the Policy.

There is no evidence that the Respondent obtained any license or authorisation to use the trade marks of the Complainant in the term RAPIDSHARE or RAPID SHARE nor that the Respondent is commonly known by the Domain Name.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the Domain Name. As a result of its default in filing a Response, the Respondent has failed to rebut that evidence.

Although the Respondent has used the Domain Name to offer its services prior to the commencement of this proceeding, it has not shown, as required by the Policy, that it used “the domain name in connection with a bona fide offering of goods or services”. The Panel's conclusion that the Respondent is infringing the Complainant's trade mark rights precludes a finding that the Respondent is acting in good faith, which also precludes a finding that the Respondent was making a “bona fide offering of goods or services”.

Finally, the Panel considers that the Respondent's failure to respond to this Complaint is a further element suggesting the lack of rights and legitimate interests in the Domain Name.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of registration and use of a domain name in bad faith, as follows:

“For the purposes of [p]aragraph 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 [Respondent] ha[s] registered or [Respondent] ha[s] 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 trademark or service trademark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent] ha[s] registered the domain name in order to prevent the owner of the trademark or service trademark from reflecting the trademark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct; or

(iii) [Respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] website or other on-line location, by creating a likelihood of confusion with the [C]omplainant's [trade] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] website or location or of a product or service on [Respondent's] website or location.”

The Complainant regards the website to which the Domain Name points as allowing copyright infringement of third parties' copyrighted materials. However, the Complainant does not provide evidence to the effect of showing that the Respondent promotes or encourages the sharing or downloading of protected files.

Nevertheless, it is the Panel's view that the Respondent knew of the Complainant and the Complainant's rights in the term RAPIDSHARE at the time of registration of the Domain Name. Firstly, the Respondent carries out its activities in an industry connected to the Complainant's, as it provides a platform allowing the downloading of files from file sharing websites and the Complainant is specialised in file hosting services. Secondly, on its website, the Respondent acknowledges, through a disclaimer, that the trade mark RAPIDSHARE belongs to the Complainant and that the Respondent is not affiliated with the Complainant. These two factors clearly show that the Respondent was well-aware, at the time of registration of the Domain Name, of the existence of the trade mark RAPIDSHARE and has registered the Domain Name in bad faith.

The Panel is of the view that the Respondent knew of the Complainant and its services and trade marks in the terms RAPIDSHARE and RAPID SHARE and only registered the Domain Name to benefit from the goodwill or reputation of the term RAPIDSHARE.

The Panel finds another suggestion of bad faith in the fact that the Respondent used a domain privacy service. Whilst such services can serve legitimate and useful purposes, such services can and seem to be increasingly used in order to disguise the true identity of the registrant with a view to evading the enforcement of legitimate third party rights, which the Panel believes was the case in the present instance.

The Respondent's use of a disclaimer on its website is insufficient to avoid a finding of bad faith. In fact, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the Panel expressly rejected the respondent's argument that its use of a disclaimer on its website precluded a finding that the respondent intentionally sought to attract users to its website based on confusion with the complainant's mark. In so ruling, the Panel reasoned that:

“First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from [r]espondent's actions. Such confusion is a basis for finding a violation of [c]omplainant's rights.” Id. (citing Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d. 1036 (9th Cir. 1999)). See also The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding a disclaimer used by the respondent to be “ineffective and disingenuous”).

Finally, the Respondent's failure to rebut any of the Complainant's arguments is a further element from which the Panel infers bad faith on the Respondent's part.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) 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 <rapidshare-search-engine.com> be transferred to the Complainant.

David Taylor
Sole Panelist

Date: July 19, 2010