WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG, Christian Schmid v. “Rapid Share”

Case No. D2010-0892

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 “Rapid Share” of Palo Alto, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rapidshare8.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 2, 2010, GoDaddy.com, Inc. 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 June 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 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 RAPID SHARE 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:

- U.S. 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 December 12, 2008. At the date of this Decision, the Domain Name resolves to a website offering a search engine designed to search files in various file sharing and uploading sites.

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 term RAPIDSHARE:

The Complainant asserts that the Domain Name reproduces its trade mark entirely and that the addition of the generic element “8” is not sufficient to differentiate the Domain Name from the trade mark.

(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 an “Unlimited Rapidshare 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 “the Respondent's website home page makes direct reference to the Complainant … stating ‘RapidShare8.com isn't affiliated with Rapidshare.com, Rapidshare.de or any other Rapidshare site with different tld”, thereby proving the Respondent's actual knowledge of the Complainant and its trade marks. However, the Panel notes that the screen capture of the page referred to by the Complainant to prove this point makes no reference whatsoever to such disclaimer.

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 UDRP 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 Respondent makes little attempt on its website to discourage such copyright infringement as it only makes reference to the U.S. Digital Millennium Copyright Act and explains how to notify the Respondent of any copyright infringement. According to the Complainant, despite this “lip service to concerns with copyright violations”, the Respondent's website provides links to numerous copyrighted products.

Finally, the Complainant asserts that the Respondent is using the Domain Name for commercial gain as it contains advertisements to other websites and such use qualifies as evidence of registration and use in bad faith.

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, and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 10 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, Rule 14 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 term “RapidShare” in the United States, the Respondent's country of residence according to the WhoIs record of the Domain Name.

Therefore, based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the term “RapidShare”.

The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term “RapidShare” 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 element “8” 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 element “8”, 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 figure “8” is not capable of reducing the risk of confusing similarity. Numerous prior panelists 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service trademark rights; or

(iii) you are 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.

Although the Respondent's name is indicated as being “Rapid Share” in the WhoIs report, there is no evidence that the Respondent is commonly known by the Domain Name nor that the Respondent obtained any license or authorisation to use the trade marks of the Complainant in the term “RapidShare”.

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 paragraph 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 you have registered or you have 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) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site 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, and in any event questions of alleged copyright infringement are beyond the scope of the Panel's task under the Policy, which is concerned with trademarks.

Nevertheless, in view of the fact that the term “RapidShare” was registered as a trade mark by the Complainant in the U.S., and that the Complainant's trade marks have acquired goodwill, it is highly unlikely that the Respondent would not have been aware of the Complainant's business and trade marks at the time of the Domain Name registration.

The Panel is of the opinion that the Respondent would in all likeliness have been fully aware that the registration and use of the Domain Name would infringe the Complainant's rights in the RAPIDSHARE trade marks.

Furthermore, the content of the website to which the Domain Name points is mainly targeting services which are similar to the Complainant's services. The Panel is therefore of the opinion that the Respondent would in all likeliness have been fully aware that the registration and use of the Domain Name would infringe the Complainant's rights in the RAPIDSHARE trade marks.

The Complainant makes reference to paragraph 4(b)(iv) but does not produce any evidence to this effect, only supposition. However, on the basis of the evidence actually put forward by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants' trade mark as to the source, sponsorship, affiliation, or endorsement of its website or of a service on its website.

The Panel believes that the use made of the Domain Name is likely to lead to initial interest confusion (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie, v. Unasi, Inc,WIPO Case No. D2005-0623, “However, even where internet users realize when they view the [r]espondent's web page that it is not connected with the owner of the mark, the [r]espondent is liable to profit from their initial confusion, since they may still be tempted to click on the sponsored links”), which is a further suggestion of the Respondent's bad faith.

Finally, the Respondent's failure to rebut any of the Complainant's arguments is a further element showing the Respondent's bad faith.

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, <rapidshare8.com> be transferred to the Complainant.

David Taylor
Sole Panelist

Dated: July 19, 2010