The Complainant is RapidShare AG, Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is PrivacyProtect.org / N/A, ivanov yura, Yura Bilyk of Anaheim, California, United States and Kiev, Ukraine.
The disputed domain name <music-rapidshare.com> (the “Disputed Domain Name”) 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 14, 2010. On April 15, 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 16, 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 the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 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.
The Complainant was founded in 2006. It is a popular file host having a storage capacity of several petabytes and an Internet connection capable of transferring hundreds of gigabytes simulatenously.
The Complainant uses the trade mark RAPID SHARE on its services and is the owner of the following trade mark registrations:
Jurisdiction Trade Mark No. Priority Date Trade mark
United States 3313895 September 21, 2005 RAPID SHARE
European Union 4753836 November 21, 2005 RAPID SHARE THE EASY WAY TO SHARE YOUR
European Union 4753828 Novovember 21, 2005 RAPIDSHARE
The services to which the above registrations relate include web hosting, computer, presentation of goods and services, and research in databases.
The Respondent registered the Disputed Domain Name on August 7, 2008, some years after the priority dates of the Complainant's trade mark registrations.
The Complainant contends that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name. The Complainant has not granted the Respondent any license, permission, or authorization to own or use any domain name which is confusingly similar to the Complainant's trade mark. The Respondent is not commonly known as <music-rapidshare.com>, but “PrivacyProtect.org Domain Admin”;
(c) The Disputed Domain Name was registered and used in bad faith. The Complainant's trade mark RAPID SHARE is well-known (At this point, the Panel should pause to comment that the Complaint is unclear as to which of the Complainant's trade marks the Complainant claims to be well-known. From the context of the Complaint, the Panel understands the Complainant as referring to the words RAPID SHARE). The Respondent is located in the same jurisdiction as the Complainant and most likely has actual knowledge of the Complainant's trade mark RAPID SHARE. The Respondent is using the Disputed Domain Name to provide search engine services under the Complainant's trade mark RAPID SHARE, which are services covered by the Complainant's trade mark registrations, exhibiting opportunistic bad faith. The Respondent is using the Disputed Domain Name to enable copyright infringement.
The Respondent did not reply to the Complainant's contentions.
The Complainant must show the following in paragraph 4(a) of the Policy in order to succeed in this proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant's trade mark rights in the trade mark RAPID SHARE are established for purposes of these proceeding by the Complainant's trade mark registrations. The Disputed Domain Name incorporates the entire mark RAPID SHARE differing essentially by the prefix “music” in the Disputed Domain Name. The word “music” is patently descriptive of the type of files that may be hosted by a file hosting service, including one operated under the Complainant's trade mark RAPID SHARE.
The weight of authority and practice developed in past panel decisions is clear. A domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes and/or suffixes is considered confusingly similar to the trade mark (e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The prefix “music” in the Disputed Domain Name is non-distinctive in the view of the Panel. Therefore, the Disputed Domain Name is confusingly similar to the Complainant's trade mark RAPID SHARE and the Complainant has satisfied the first limb of paragraph 4(a) of the Policy.
Since the question of rights and legitimate interests depends on information usually only available to a respondent and not complainant, it is the consensus of past UDRP panel decisions that a complainant is only required to make out a prima facie case under the second limb of paragraph 4(a) of the Policy. The Complainant, being the owner of rights in the trade mark RAPID SHARE, has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. The Respondent also does not appear from the evidence to have any legitimate reason for selecting the Disputed Domain Name. The Panel agrees with the earlier panel decision of Trimble Navigation Limitied v. Davide Erba, WIPO Case No. D2009-0881 that a bare claim on a website under a disputed domain name stating that it is operating on a non-profit basis does not imbue a respondent with rights or legitimate interest.
In the circumstances, the Panel holds that a prima facie case has been established. Further, the Respondent has chosen not to respond to the Complainant, further reinforcing the finding that the Respondent has no rights or legitimate interests to put forward.
In view of the Complainant's trade mark rights in the United States and the possibility of the Respondent being within United States jurisdiction, there may be a potential issue of whether the Respondent's activities under the Disputed Domain Name amount to infringement of the Complainant's trade mark rights as alleged by the Complainant. However, it is not the function of the Policy to make such determination. It is also unnecessary having regard to the finding above. The Panel therefore refrains from forming any conclusion in this respect.
This Panel accepts that for a website at “www.rapidshare.com” to be ranked the twelfth most visited website in the world, the trade mark associated with the domain name of that website must be well-known. This finding is corroborated by the fact that the Complainant's trade mark RAPID SHARE has also been incorporated in its entirety in other domain names which are concurrently the subject matter of other domain name disputes (RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao, WIPO Case No. D2010-0600; RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610; RapidShare AG, Christian Schmid v. Liao Fei, WIPO Case No. D2010-0614; RapidShare AG and Christian Schmid v. TheLeech, McMohan Kumar, WIPO Case No. D2010-0628). Although each case should be determined on its own merits, the circumstances are such that the Complainant's trade mark RAPID SHARE seems to be an attractive choice for being registered as a domain name prefixed or suffixed with other generic words. Therefore, the suggestion that the Complainant's trade mark is well-known cannot be discounted and a prima facie finding is established. Since a Response was not filed, the prima facie finding remains.
In view of the above, it is likely that the Respondent had prior knowledge of the Complainant's trade mark rights. The Complainant registered its trade mark RAPID SHARE in 2005 and has been using it for a few years before the Disputed Domain Name was registered by the Respondent. The selection of the Disputed Domain Name by the Respondent is unlikely to be coincidental, particularly when it is noted that the Respondent's services, whether or not for profit, are related to the services for which the trade mark RAPID SHARE has been registered by the Complainant.
The use of a well-known trade mark as a domain name in connection with a website creates an impression of an association with the trade mark owner. Such use indicates opportunistic bad faith registration and use (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089). In the present case, the Respondent has indeed used the Complainant's well-known mark RAPID SHARE in connection with the Respondent's website which enables visitors to access file downloading resources to create an impression of association between the Respondent's website and the Complainant. In the absence of any evidence controverting the above, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
As for the Complainant's allegation that the Respondent is using the Disputed Domain Name to infringe the copyrights of others, the Panel is of the view that there is insufficient evidence for consideration. In any event, in view of the determination above, it is unnecessary to consider this issue any further.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <music-rapidshare.com> be transferred to the Complainant.
Kar Liang Soh
Dated: June 30, 2010