The Complainant is RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Rapidfind of Toronto, Ontario, Canada.
The disputed domain name <whatsrapidshare.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 19, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed David Perkins as the sole panelist in this matter on May 27, 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.A.1 The First Complainant, RapidShare AG, is a Swiss company which was founded in 2006. It provides one-click hosting of data and is currently the twelfth most visited homepage in the world. It has a storage capacity of several petabytes (a petabyte is a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously.
4.A.2 The First Respondent operates a file sharing service. It operates as a pay service, allowing any member to upload files of up to 100 megabytes. The user is then supplied with a unique download URL, which locates the file and enables anyone with whom the uploader shares it to download the file.
4.A.3 The First Respondent also provides a reporting system for copyright owners to notify the Company if it believes that a user is violating his copyrights or is using RapidShare to publish illegal contents.
4.A.4 The Second Complainant is the registrant of the United States registered trademarks RAPID SHARE (detailed below), which he has licensed to the First Complainant. He was also the founder of the First Complainant.
4.A.5 The RAPID SHARE trademarks
The Complainants are the owners of the following registered trademarks.
|
Country |
Reg. No. |
Mark |
Class(es) |
Dates of Application and Registration |
|
United States of America |
3,313,895 |
RAPID SHARE |
42 |
Filed: September 21, 2005 Registered: October 16, 2007 First Used in commerce: November 1, 2006 |
|
European Union CTM |
004753836 |
RAPID SHARE THE EASY WAY TO SHARE YOUR FILES and design |
25 & 35 |
Filed: November 21, 2005 Registered: September 25, 2008 |
|
European Union CTM |
00473828 |
Rapid Share |
25 & 35 |
Filed: November 21, 2005 Registered: September 25, 2008 |
4.A.6 Both CTM registrations were opposed on August 14, 2006 by RAPIDware Gesellschaft fur Informationsverarbeitung mbH but, as noted above, proceeded to registration on September 25, 2008.
4.B.1 In the absence of a response from the Respondent, all that is known about the Respondent is what is set out in the Complaint. Annexed to the Complaint are two print outs from the website to which the disputed domain name resolves. That website offers pay-per-click advertising pages where various goods and services are offered, principally movies. The Complainant characterises this as being
“... designed to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents on line.”
4.B.2 The Respondent also uses the disputed domain name to provide details regarding the use of the First Complainant's RAPID SHARE services. The text appearing on the Respondent's website reads as follows:
“What is Rapidshare? How to use Rapidshare and how to get everything you ever wanted.
If you're looking to learn about Rapidshare <www.rapidshare.com> and file sharing you have come to the right place.
…
So, let's begin. Rapidshare is basically a German one-click hosting site that operates from Switzerland and is financed by the subscription of paying users.
More simply all this means is that Rapidshare has a bunch of these servers; these servers are loaded with anything and everything you could ever think of. Every game, every program/application, every movie, every song, every e-book, literally anything that can be stored on a hard drive, you can find on the Rapidshare servers. Basically anything you're looking for your guaranteed to find. Missed an episode of your favorite TV series?, no worries you can download that episode right away. Need some expensive computer software, you got it! You can even download e-books on pretty much anything you can think of. But that's not all, it gets better; Rapidshare is extremely fast when it comes to downloads. I'm talking downloading full DVD quality movies in a matter of 10-12 minutes. You are not capped, you can download as fast as your internet can possibly go.
…
You will never ever buy another program, game, or music album ever again.”
5.A.1 The Complainants say that the disputed domain name is confusingly similar to their RAPID SHARE trademarks for two reasons. First, the trademark has been used in its entirety with the addition of the generic descriptive suffix “whats”. The addition of that word does nothing, the Complainant says to distinguish the disputed domain name from the RAPID SHARE trademark. In that respect, the Complainant cites the Decisions in Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409 and F Hoffmann-La Roche A.G. v. Rudiger Meissner, WIPO Case No. D2009-1127. Second, the disputed domain name combines the words RAPID and SHARE into a single word “rapidshare” in the same way as CTM004753828, RAPIDSHARE.
5.A.2 The Complainants say that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. This is because the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a non-commercial or fair use of that name.
5.A.3 The Complainants say that, because they have neither licensed nor otherwise authorised the Respondent to use the RAPID SHARE trademark, use of the trademark by the Respondent cannot be considered a bona fide or fair use. The Complainants cite in support of that contention, the Decision in Viacom International, Inc & Others v. TVdot.net, Inc., WIPO Case No. D2000-1253.
5.A.4 The Complainants further say that use of a domain name consisting of a party's registered trademark for a website with pay-per-click third party advertising is not a bona fide offering of goods or services where the disputed domain name has been chosen by the Respondent to capitalize on the Complainant's well known trademark. The Complainants cite in this respect the Decision in Philip Morris USA Inc v. Prophet Partners, Inc., WIPO Case No. D2007-1614.
5.A.5 As to registration in bad faith, the Complainants put their case as follows. First, the Complainants' RAPID SHARE mark has been used since 2006 and was filed in 2005 in both the United States and Europe before the disputed domain name was created in April 2007. The Complainants say that it is difficult to imagine that – some 10 months after its services were first offered online in October 2006 – the Respondent's registration of an almost identical domain name is a mere coincidence, The fact that the Respondent's home page makes direct reference to the First Complainant and its website evidences actual knowledge of the Complainant and its RAPID SHARE trademark. In the circumstances, the Complainants say there is clear evidence of registration in bad faith. The Complainants cite in support of the Decision in Facebook Inc v. Privacy Ltd Disclosed Agent for YOLAPT , WIPO Case No. D2007-1193.
5.A.6 As to use in bad faith, the Complainants points to the use made of the disputed domain name, which is to offer services some of which are identical to those protected by the RAPID SHARE trademarks and which are provided by the First Complainant under that trademark. In that respect, the Complainant cites the Decision in Realtime Forex S.A. v. Rhone Consultants S.A., WIPO Case No. D2006-0089.
5.A.7 Furthermore, the Complainants say that the Respondent's use of the disputed domain name encourages infringement of third party copyright material, which cannot constitute a bona fide activity. It is, the Complainants say, contrary to public policy to encourage users to commit copyright infringement. In support of that contention the Complainants cite the decision in Hoffmann-La Roche Inc v. Domain Ownership Ltd., WIPO Case No. D2007-0891. In that case, the respondent was offering generic ACCUTAINE – a dermatological preparation for treatment of acne – online without prescription contrary to legislation in the United States of America.
5.A.8 Finally, the Complainant says that using the disputed domain name – which is confusingly similar to the RAPID SHARE trademark – to redirect Internet users to pay-per-click advertising pages where third party goods and services are offered constitutes bad faith use within paragraph 4b(iv) of the Policy. In support of that contention the Complainant cites a number of Decisions under the Policy including:
SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588.
The Claimant was a large credit union in California and the registered proprietor of the US trademark SAFE CREDIT UNION. The disputed domain name <safecreditunion.org> was directed to a pay-per-click website advertising competing and non-competing products and services .
RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Complainant was a leader in the online pharmacy industry and the proprietor of the RX AMERICA brand. The disputed domain name <rxamerica.org> was directed to a pay-per-click advertising site providing links to various pharmaceutical and drug related companies competing with the Complainant.
Lilly Icos LLC v. Andrew Riegel, WIPO Case No. D2006-1088.
The Complainant owned the rights to a well known pharmaceutical product marketed under the mark CIALIS. The disputed domain names incorporated the CIALIS marks and directed Internet users to a website advertising products that competed with the Complainant's CIALIS product.
and Bell South Intellectual Property Corporation v. Barbara Kayne, WIPO Case No. D2005-0875.
The Complainant telecoms company was the registered proprietor of the trademarks BELL and BELL SOUTH. The disputed domain names incorporated the BELL SOUTH mark and directed users to a pay-per-click search engine which provided, inter alia, pricing differences between the services offered by the Complainant and by its competitors.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainants have demonstrated that they have rights in the registered trademark RAPID SHARE.
6.6. The disputed domain name incorporates that trademark in its entirety. Addition of the generic descriptive prefix “whats” does not avoid confusing similarity with the Complainants' trademark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.8 In the absence of a Response and on the facts as presented, there is nothing to indicate that the Respondent could establish any of the circumstances set out in paragraph 4(c) of the Policy. Nor are there any other circumstances disclosed which could demonstrate the Respondent's rights to and legitimate interests in the disputed domain name. Certainly, it is neither a bona fide or fair use to make unauthorised use of the RAPID SHARE trademark for the purpose of offering a file sharing service comparable in certain respects to the very widely used website operated by the First Complainant. The Complaint satisfies paragraph 4(a)(ii) of the Policy.
6.9 Given the established use of the First Complainant's hosting / file sharing business and the use to which the disputed domain name is being put, it is inconceivable that the disputed domain name could have been registered in good faith. Moreover, it is being used to mimic the services provided by the First Complainant under its RAPID SHARE trademark and such use, which is not authorised by the Complainants, is plainly a bad faith use. That bad faith used is further illustrated by the use made of the disputed domain name to direct to a pay-per-click advertising site designed to attract Internet users by trading off the Complainants RAPID SHARE trademark and thereby associating with the First Complainant's highly successful hosting/file sharing business. These are precisely the circumstances set out in paragraph 4(b)(iv) of the Policy.
6.10 As to the suggestion that the Respondent's use is encouraging illegal activities which are contrary to public policy – namely, infringement of copyright – the Panel merely notes that the legality of file sharing has produced litigation in both Europe and the United States. The Complainant itself has not been immune from litigation in that area.
6.11 However, a finding as to the legality, or otherwise, of the Respondent's operations is not necessary for determination of this administrative proceeding. Bad faith registration and use are found for the reasons set out in paragraphs 6.8 and 6.9 above and, consequently, the Complaint satisfies the dual requirements of paragraph 4(a)(iii) of the Policy.
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 <whatsrapidshare.com> be transferred to the First Complainant.
David Perkins
Sole Panelist
Dated: June 9, 2010