The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondents are PrivacyProtect.org, Domain Admin of Moergestel, The Netherlands, and n/a, Sergey Malgov, of Moscow, Russian Federation.
The disputed domain name <atrapidshare.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 20, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 21, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined 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 Respondents of the Complaint, and the proceedings commenced on April 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 18, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on May 21, 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.
The Complainants are RapidShare AG, a Swiss corporation providing hosting services through the web site “www.rapidshare.com”, and Mr. Christian Schmid, both based in Cham, Switzerland.
Mr. Christian Schmid is the owner of the U S Trademark Registration No. 3313895, for RAPID SHARE (hereinafter, also, “the Trademark”), filed on September 21, 2005, in International class 42, which has been licensed by Mr. Schmid to RapidShare AG.
RapidShare AG is the owner of the Community Trademark Registration No. 4753828 for RAPIDSHARE, filed on November 21, 2005, in classes 25 and 35, and of the Community Trademark Registration No. 4753836 for Rapid Share THE EASY WAY TO SHARE YOUR FILES and design, filed on November 21, 2005, in classes 25 and 35.
The domain name <rapidshare.com> owned by the Complainants was registered by Mr. Christian Schmid on May 27, 2002, while the Domain Name <atrapidshare.com> was registered by the Respondents on November 17, 2009.
The Complainants point out that RapidShare, which was founded in 2006, is “one of the biggest and fastest one-click file hosts in the world” and that the web site “www.rapidshare.com” is the twelfth most visited homepage in the world. The Complainants inform the Panel that, thanks to “a storage capacity of several petabytes (a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously, Complainant has the infrastructure required to meet high demands”.
The Complainants contend that the Domain Name <atrapidshare.com> is confusingly similar to the Trademark in which the Complainants have rights as it reproduces the trademark RAPID SHARE in its entirety, with the addition of the “generic element ‘at'”, and of the top-level domain name suffix “.com”.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainants state that the Respondents have never made and are not making a bona fide or fair use of the Domain Name, since the Respondents were diverting Internet users to a web site in which a “‘Rapidshare Search Engine' and numerous links” were provided, enabling Internet users to share copyright protected documents.
The Complainants underline that the Respondents have not been granted “any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant's marks” and that the Respondents are “not commonly known as ‘atrapidshare.com'”.
With reference to the circumstances evidencing bad faith, the Complainants indicate that, in light of the Complainants' prior trademark rights on the sign RAPID SHARE, based on the above-mentioned Community Trademark Registrations, which are valid also in The Netherlands, where the Respondent PrivacyProtect.org is based, “the Respondent, most likely, had actual knowledge” of the Complainants' Trademark.
The Complainants also state that the Respondents' knowledge of the Complainants' Trademark is demonstrated by the fact that the Domain Name was redirected to a web site in which services similar to the Complainants' ones were provided and in which it was made direct reference to the Complainants, stating “Atrapidshare.com searches sites, message boards, forums for Rapidshare file links and is not considered an affiliate of Rapidshare.com and other sites with different tld”. The Complainants underline that this disclaimer was ineffective since it was placed by the Respondents on a secondary page and, however, Internet users could have been diverted to the Respondents' web site by the misleading and unauthorized use of the Complainants' Trademark in the disputed domain name.
As further circumstances evidencing bad faith in the use of the Domain Name, the Complainants highlight that the Respondents were enabling copyright infringements by assisting Internet users in sharing third party-owned copyright materials on the web site corresponding to the Domain Name.
The Respondents did not reply to the Complainant's contentions and are in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainants' submissions, drawing such inferences from the Respondents' default that are considered appropriate according to paragraph 14(b) of the Rules.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
The Complainants have provided evidence of ownership of the U S Trademark Registration No. 3313895, for RAPID SHARE (hereinafter, also, “the Trademark”), filed on September 21, 2005, in International class 42; of the Community Trademark Registration No. 4753828 for RAPIDSHARE filed on November 21, 2005, in classes 25 and 35; and of the Community Trademark Registration No. 4753836 for Rapid Share THE EASY WAY TO SHARE YOUR FILES and design, filed on November 21, 2005, in classes 25 and 35.
The Panel finds that the Domain Name is confusingly similar to the registered Trademark owned by the Complainants since the addition of the prefix “at” and the tld suffix “.com” to the Trademark is certainly not sufficient to exclude the confusingly similarity.
See along these lines, amongst others, ITV plc, ITV Network Limited and ITV Consumer Limited v. NA, Luca Mueller, WIPO Case No. D2010-0253, concerning the domain name <itviplayer.com>, in which it was stated: “The disputed domain name also incorporates Complainants' ITV PLAY trademark, with the addition only of the letter ‘i' and the suffix ‘er'. In the opinion of the Panel internet users seeing the domain name would conclude that it was owned by, or associated with Complainants, and further, that it was associated with the service offered by Complainants under the trademark ITV PLAY and through its website at ‘www.itv.com/itvplayer'.”
In view of the above, the Panel finds that the Complainants have proven that the Domain Name is confusingly similar to the Trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainants must show that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Respondents may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondents' rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof on the respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainants' prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainants. The Respondents are not licensees of the Complainants, nor have the Respondents otherwise obtained an authorization to use the Complainants' Trademark. Furthermore, there is no indication before the Panel that the Respondents are commonly known by the Domain Name.
The Panel notes that the Domain Name is redirected, at the time of drafting the decision, to a web page in which only a banner appears allowing Internet users to listen to a music piece. However, according to the printout provided by the Complainants, the Domain Name was redirected, at the time of filing the Complaint, to a web site providing a search engine named “Rapidshare Search Engine” and several links prima facie enabling Internet users to download copyrighted material. Such use cannot be considered either a bona fide offering of goods or services, or a legitimate, non-commercial or fair use of the Domain Name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
Thus, on balance, and in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
As to bad faith at the time of the registration, the Panel notes that, in light of i) the prior domain name registration for <rapidshare.com> dated May 27, 2002, ii) the pre-existing trademark rights of the Complainants on the sign RAPID SHARE and iii) the fact that the Respondents were offering, on the web site “www.atrapidshare.com”, services similar to the ones provided by the Complainants at “www.rapidshare.com” and were also making explicit reference to the Complainants, the Respondents were more likely than not aware of the Complainants' Trademark when they decided to register the Domain Name in 2009.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089 “Since the disputed Domain Name is so obviously connected with the trademark and company name of the Complainant, its very use by someone with no connection with the Complainants suggests opportunistic bad faith”.
The Panel finds that, in light of the contents of the web page which was linked to the Domain Name and described above, Internet users might have been misled on the source, sponsorship, affiliation, or endorsement of the Respondents' website according to paragraph 4(b)(iv) of the Policy. See, i.a., eBay Inc. v. David Sach, WIPO Case No. D2009-1083, concerning the domain name <ebay-cz.com>, in which it was stated: “Respondent's use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant's EBAY mark as to source, sponsorship, affiliation, or endorsement”.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <atrapidshare.com>, be transferred to the Complainants.
Luca Barbero
Sole Panelist
Dated: June 4, 2010