WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov

Case No. D2010-1105

1. The Parties

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

1.2 The Respondent is Ilya, Ilya Efimov of Murmansk, Russian Federation.

2. The Domain Name and Registrar

2.1 The disputed domain name <rapid.org> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 5, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On July 8, 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. 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”).

3.2 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 July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. The Response was filed with the Center on July 28, 2010.

3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 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.

3.4 On August 5, 2010 the Complainant filed a supplemental submission in reply to the Respondent’s Response. The admissibility of this document is addressed later in this decision.

4. Factual Background

4.1 The First Complainant, RapidShare AG, is a Swiss Corporation and the Second Complainant is an individual who gives an address in Switzerland. The First Complainant was founded in 2006 and supplies file sharing services from the website “www.rapidshare.com”. It claims to be “one of the biggest and fastest one-click hosts in the world” and the “twelfth most visited homepage in the world”.

4.2 The Complainants are the owners of various trade marks that comprise or incorporate the words “Rapid” together with “Share”. They include:

(1) United States registered trade mark no. 3313895 in class 42 for the word mark RAPID SHARE in the name of the Second Complainant and filed on September 21, 2005; and

(2) Community Trade Mark no. 004753828 in classes 25 and 35 for the word mark RAPIDSHARE in the name of the First Complainant and filed on November 21, 2005.

4.3 The Second Complainant has licensed the First Complainant to use his marks.

4.4 The Respondent would appear to be an individual located in the Russian Federation.

4.5 Publically available WhoIs details for the Domain Name record that the Domain Name was initially registered on September 10, 2003.

4.6 Prior to the filing of the Complaint in these proceedings a website operated from the Domain Name that had the appearance of a link sharing forum, with links leading to various content including movies, music and television shows. The website also contained a notice soliciting donations to fund its servers.

4.7 The Complaint appears to be one in a series of domain name complaints recently brought by the Complainant. Decisions published to date of which the Panel is aware are:

- RapidShare AG, Christian Schmid v. PrivacyProtect.org / N/A, ivanov yura, Yura Bilyk, WIPO Case No. D2010-0568 (<music-rapidshare.com>)

- RapidShare AG, Christian Schmid v. ivano yura / PrivacyProtect.org, WIPO Case No. D2010-0569 (<rapidshareprime.net>)

- RapidShare AG , Christian Schmid v. Bashkov Andrey Olegovish / PrivacyProtect.org, WIPO Case No. D2010-0570 (<rapidshare-catalog.com>)

- RapidShare AG and Christian Schmid v. PrivacyProtect.org / Bashkov Andrey Olegovish ([email protected]), WIPO Case No. D2010-0571 (<full-rapidshare.com>)

- RapidShare AG , Christian Schmid v. Asad / PrivacyProtect.org, WIPO Case No. D2010-0572 (<easyrapidsharedownloads.com>)

- RapidShare AG, Christian Schmid v. Pieter Jan Peetermans, PJP Projects, WIPO Case No. D2010-0578 (<rapidsharese.com>)

- RapidShare AG, Christian Schmid v. Ladder Group, WIPO Case No. D2010-0588 (<rapidshare-provider.com>)

- RapidShare AG, Christian Schmid v. PrivacyProtect.org, Bashkov Andrey Olegovish, WIPO Case No. D2010-0590 (<rapidshare-free-download.com>)

- RapidShare AG, Christian Schmid v. Private Registrations Aktien Gesellschaft Domain Admin, WIPO Case No. D2010-0591 (<rapidshare-premium.com>)

- RapidShare AG, Christian Schmid v. Rapidfind, WIPO Case No. D2010-0595 (<whatsrapidshare.com>)

- RapidShare AG and Christian Schmid v. The holder of the domain name rapidshare.net, WIPO Case No. D2010-0598 (<rapidshare.net>)

- RapidShare AG, Christian Schmid v. Andrey Polev N/A, WIPO Case No. D2010-0599 (<rapidshare-deposit.com>)

- RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao, WIPO Case No. D2010-0600 (<rapidshare-accounts.net>)

- RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608 (<atrapidshare.com>)

- RapidShare AG v. Mir Zack N/A, WIPO Case No. D2010-0609 (<rapidsharepremiumaccounts.com>)

- RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610 (<rapidsharedownload.org>)

- RapidShare AG, Christian Schmid v. rapidsharefreedownload.net, WIPO Case No. D2010-0611 (<rapidsharefreedownload.net>)

- RapidShare AG and Christian Schmid v. Sviatlana Astashenka, WIPO Case No. D2010-0612 (<rapidsharetop.com>)

- RapidShare AG, Christian Schmid v. Omer Ozkon Web, WIPO Case No. D2010-0613 (<rapidsharelink.com>)

- RapidShare AG, Christian Schmid v. Liao Fei, WIPO Case No. D2010-0614 (<all-rapidshare.com>)

- RapidShare AG and Christian Schmid v. Rapidshare Search, WIPO Case No. D2010-0615 (<rapidshare123.com>)

- RapidShare AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616 (<rapidsharedvd.com>)

- RapidShare AG and Christian Schmid v. Tim Keyser, WIPO Case No. D2010-0621 (<rapidshareking.com>)

- RapidShare AG, Christian Schmid v. Johan Domonji, WIPO Case No. D2010-0622 (<rapidsharetang.com> and <rapidshare4movies.com>)

- RapidShare AG v. AMStudio, WIPO Case No. D2010-0624 (<rapidshare-warez.net>)

- RapidShare AG and Christian Schmid v. Yaroslav N Andropov, WIPO Case No. D2010-0626 (<rapidsharetvlinks.com>)

- RapidShare AG, Christian Schmid v. zuo xingyu, WIPO Case No. D2010-0627 (<links-rapidshare.com>)

- RapidShare AG and Christian Schmid v. TheLeech, McMohan Kumar, WIPO Case No. D2010-0628 (<rapidsharetools.com>)

- RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696 (<rapidbay.net>)

- RapidShare AG, Christian Schmid v. na, Sunny Lal/WhoisGuard, WIPO Case No. D2010-0890 (<rapidsharepremiumlinkgenerator.com>)

- RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089 (<rapidpiracy.com>)

4.8 There are also other proceedings that remain ongoing. The Complaints have been successful in almost, but not quite, all of these proceedings in which a decision has been given to date.

5. Parties’ Contentions

A. Complainant

5.1 The Complainants contend that the Domain Name is confusingly similar or identical to their trade marks. The Domain Name is said to incorporate the Complainants’ marks with the “share” element removed and leaving the “dominant element” “Rapid”. It cites in this respect Sol Moscot, Inc. v Web Master, WIPO Case No. D2007-0036.

5.2 The Complainants deny that the Respondent is operating any bona fide or legitimate business. They claim that the Respondent is using the Domain Name to drive Internet traffic to a linksharing forum that, despite protestations to be lawful, in reality “celebrates copyright piracy”. They also contend that the Respondent is not known by the <rapid.org> name.

5.3 On the question of bad faith the Complainants claim that since the Respondent’s registrar is located in the United States (“US”) it thereby has actual or constructive notice of the Complainants’ US trade mark (citing XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467). It also contends that the Complainants’ trade mark rights “pre-exist the registration date of the [D]omain [N]ame” and that the “totality of the circumstances indicate the Respondent knew of [the] Complainant at the time of registration”.

5.4 The Complainants contend that the Respondent is using the Domain Name to promote copyright infringement of third-party-owned copyright materials. They cite RapidShare AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616, which is said to be authority for the proposition that the use of a domain name that is similar to a trade mark to draw Internet users to a website engaged in such activity is use in bad faith. Lastly, the Complainants claim that the Respondent’s request for donations means that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy.

B. Respondent

5.5 The Respondent claims that on the issue of similarity the Sol Moscot, Inc. v Web Master case does not provide authority for the Complainants’ claim that the Domain Name can be read as comprising the dominant element of the Complainants’ mark. She claims, inter alia, that in contrast to the position in Sol Moscot, Inc. the relevant element of the Complainants' mark is an ordinary English word, i.e. “rapid”. It also cites RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696 which is said to be “substantially identical” to the present case and in which the panel rejected a finding of confusing similarity where the only common feature between the Complainant’s mark and the relevant domain name was the word “rapid”.

5.6 So far as rights and legitimate interests is concerned, the Respondent claims that her website has 90,000 unique visitors daily, and upwards of 1000 registered members online at any time. She claims she is providing “a bona fide/legitimate service that can best be described as the discussion and posting of user generated content for consumption by the end user”. So far as the allegations of copyright infringement are concerned, the Respondent does not appear to deny that she provides links to copyright protected content but asserts “it would be unwise to suggest a service provider such as ourselves is not protected by the safe harbors afforded to us under [Digital Millennium Copyright Act]”. She admits that she seeks donations to cover the cost of her service but maintains that hers is in essence a noncommercial operation.

5.7 On the issue of bad faith the Respondent asserts;

“The Respondent firstly refutes the implied date of registration by the Complainant of the domain <rapid.org>, and asserts that the registration of the said domain pre-dates even the registration of the Complainants <rapidshare.com> domain (which was first registered, to the best of Respondents knowledge at some point in January 2002) or the filing for trademark of 'RapidShare THE EASY WAY TO SHARE YOUR FILES' on November 11, 2005 or the date of registration for said trademark of September 21, 2008. The registration date of the Disputed Domain <rapid.org> domain was in fact in July of 2001. Whois and the trademark documents provided by the Complainant naturally reflect these dates”.

5.8 The Respondent cites various cases which are said to be authority for the proposition that when a domain name is registered before a trade mark right is established, the registration of the domain name is not normally considered to have been in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

6. Discussion and Findings

6.1 The Complainants must make out their case in all respects under paragraph 4(a) of the Policy. Namely the Complainants must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.2 For the reasons discussed below, in this case the Panel need only address the issues of similarity and bad faith. Before doing so it is necessary to address the procedural issue of the admissibility of the Complainants’ supplemental submission.

A. Admissibility

6.3 Supplemental filings will rarely be admitted by panels under the Policy, except in certain limited circumstances, such as to present the panel with genuinely new evidence unavailable at the time of initial filing, respond to a matter or issue raised by the other party that could not have been reasonable anticipated, unless or the specific facts or circumstances of the case dictate otherwise. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780, the panel stated as follows:

“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”

6.4 The Complainants’ supplemental submission comprises further argument and evidence as to why it claims there is confusing similarity due to the common use of the term “Rapid” in the Complainants’ marks and Domain Name. In substance they are submissions that could have been made in the Complainant. Further and in any event, given the Panel’s findings in this case, even if taken into account, they would not have made a difference to the outcome of the case. In the circumstances, having considered them, the Panel declines to admit those submissions in these proceedings.

B. Identical or Confusingly Similar

6.5 The present case is, with two exceptions, very different from the various other cases commenced with the Center and that have been decided to date. As is apparent from the list set out earlier in this decision, all but two of those cases involved domain names that in one way or another incorporated the term “rapidshare”. The first exception is RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696. In that case the domain name in issue was <rapidbay.com> and the learned panelist concluded that the fact that the domain name shared the word “rapid” with the Complainants’ marks was insufficient for a finding of confusing similarity. The second exception was a decision by this Panel in RapidShare AG, Christian Schmid v. majeed randi, WIPO Case No. D2010-1089. In that case the domain name in issue was <rapidpiracy.com> and the Panel found notwithstanding the <rapidbay.com> case that there was “confusing similarity” with the Complainants’ marks in that matter.

6.6 In RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov case the learned panelist stated as follows:

“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.

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 theYahoo! 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. […]

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 she acted in bad faith. It may well be that she 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.’

6.7 In broad terms the Panel agrees with this analysis¹ and similarly no evidence has been brought before the Panel in this case “that RapidShare is frequently (or even sometimes) referred to as ‘Rapid’”. In this Panel’s view, this is fatal to the Complainants’ case.

6.8 In <rapidpiracy.com> the Panel reached a different conclusion on confusing similarity, but that was because it accepted that the addition of the word “piracy” meant there was sufficient conceptual allusion in the Domain Name to the Complainants’ marks that the Complainants managed to surmount the low threshold imposed by the confusing similarity requirement (referring to its earlier decision in Research in Motion Limited v. One Star GlobalLLC, WIPO Case No. D2009-0227).

6.9 No such distinguishing features exist in the present case. Insofar as there is similarity, it resides in the common use of the word “rapid” alone. On the evidence before the Panel, this is insufficient. The Complainants have failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.

C. Registered and Used in Bad Faith

6.10 The Panel’s finding in relation to similarity is sufficient to decide the case in the Respondent’s favour. For this reason, the Panel finds that it is uncessary to consider the Complainant’s contentions under paragraph 4(a)(ii) of the Policy. However, the Panel has also reached the conclusion that the Complaint fails on the question of bad faith, and feels that a discussion of this element is warranted under the circumstances, although not strictly necessary to the outcome of the case.

6.11 Historically, the Policy has always been understood as imposing upon a complainant the burden of showing bad faith registration and bad faith use. There has been much criticism of that requirement. It can in certain circumstances lead to results which have been seen as unfair to complainants. As a consequence, many other domain name dispute resolution policies have jettisoned this double requirement and adopted a bad faith registration or use test.

6.12 In most cases the dual pronged test of the Policy’s conjunctive requirement under paragraph 4(a)(iii) does not affect the ultimate outcome of the case. Matters are also helped in this respect by the fact that many panels have interpreted the definition of registration in a wide fashion so as to include the change of registration details into the name of a fresh entity. Indeed, this Panel has also gone as far to suggest that change of registration details into the name of a separate legal entity, even if the domain name remains under the control of the same person, constitutes a fresh registration under the Policy (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785). Nevertheless , there remain a small number of cases where the double requirement can make a difference to the outcome of the case.

6.13 In the circumstances, it is perhaps unsurprising that recently some panelists have suggested that the double requirement is not in fact mandated by the Policy. The reasoning that lies behind that suggested approach is set out in such cases as City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc, v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (“Octogen”).

6.14 Nevertheless, for the reasons given in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716, Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455, TRS Quality, Inc v. Namespro.ca Private WHOIS, WIPO Case No. D2010-0393, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470, and Editions Milan v. Secureplus, Inc.,WIPO Case No. D2010-0606, the Panel is unconvinced by the so-called Mummygold/Octogen analysis. Both bad faith registration and use must be shown.

6.15 In the present case the Complainants have failed to show that there was registration in bad faith. There appears to be some confusion as to dates. The Respondent claims that the Domain Name was registered in July 2001, but there is no evidence before the Panel to support this date and the WhoIs record suggests that the Domain Name was initially registered on September 10, 2003. Therefore, prima facie, this is the registration date at which the question of bad faith is to be judged.

6.16 For the reasons already described, if the Domain Name came into the hands of the Respondent at a later date, then bad faith might be judged from that date instead. However, there is simply no evidence before the Panel to this effect.

6.17 The Complainants do not point to a trade mark registration that pre-dates September 2003. In the circumstances, the Complainants’ apparent assertion that its trade mark rights pre-date the Domain Name registration appears to be simply false. Notwithstanding the claims of the Respondent to the contrary, that would not necessarily be fatal to the Complainant’s case. If the Complainant was able to show that it or a predecessor in business had used a term in which it subsequently obtained trade mark rights in a trade mark sense from some earlier date and it was with that use in mind that the Respondent registered its domain name, then a claim of bad faith registration might still succeed (see Body Accounting, Inc. v. Affinity Domains, Energy First, WIPO Case No. D2009-1419). However, again there is no evidence before the Panel to this effect. The Complainants (notwithstanding the fact that the Respondent contended that the <rapidshare.com> domain name now used by the Complainants was first registered in January 2002) have not asserted any business activity prior to 2006.

6.18 In the circumstances, the claim of bad faith registration must fail and the Complainants have not made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Matthew S. Harris
Sole Panelist
Dated: August 17, 2010