The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is Andrey Polev N/A of Solnechnogorsk, Moskovskaya oblast, Russian Federation.
The disputed domain name <rapidshare-deposit.com> (the “Domain Name”) is registered with DomainContext, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2010. On April 19, 2010, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 2010, DomainContext, 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 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 19, 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 website “www.rapidshare.com”, and Mr. Christian Schmid, both based in Cham, Switzerland.
Mr. Christian Schmid is the owner of the US 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 RAPID SHARE, 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 (figurative mark), 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 <rapidshare-deposit.com> was registered by the Respondent on December 21, 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 website “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 <rapidshare-deposit.com> is confusingly similar to the Trademark in which Complainants have rights as it reproduces the Trademark RAPID SHARE in its entirety, with the addition of the hyphen “-”, of the generic term “deposit”, 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 Respondent has never made and is not making a bona fide offering of goods or services under the Domain Name, nor making a legitimate or fair use of the Domain Name, since the Respondent is diverting Internet users to a website in which a search engine and numerous links are provided, enabling Internet users to share copyright-protected documents.
The Complainants underline that the Respondent has 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 Respondent is not commonly known as ‘rapidshare-deposit.com'”.
With reference to the circumstances evidencing bad faith, the Complainants indicate that the Respondent's knowledge of the Complainants' Trademark is demonstrated by the fact that the Domain Name is redirected by the Respondent to a website in which services similar to the Complainants' ones are provided and in which is made direct reference to the Complainants and their website “www.rapidshare.com”.
As a further circumstance evidencing bad faith in the use of the Domain Name, the Complainants highlight that the fact that the Respondent appears to be enabling copyright infringements of third party-owned, copyrighted materials on the website corresponding to the Domain Name cannot “give rise to a claim of bona fide use and must therefore be a bad faith use of the domain name”.
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's 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 Complainants have 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 US 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 RAPID SHARE 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, filed on November 21, 2005, in classes 25 and 35.
The Panel finds that the Domain Name is confusingly similar to the Trademark owned by the Complainants, since it entirely reproduces the Trademark of the Complainants with the mere addition of the hyphen “-” and of the descriptive term “deposit”.
Pursuant to a number of prior decisions rendered under the Policy, in fact, the addition of a descriptive term to a trademark is not a distinguishing feature. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
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 Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating, inter alia, any of the circumstances of paragraph 4(c) of the Policy.
It is well-established that the burden of proof lies on a complainant. However, satisfying the burden of proving a lack of a respondent's rights or legitimate interests in respect of a 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 prior UDRP precedent, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent then fails to demonstrate rights or legitimate interests in the 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 Respondent has 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 Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' Trademark. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name.
The Panel notes that the Domain Name is redirected, at the time of drafting the decision, to a website providing services apparently similar to the Complainants', and enabling Internet users to download, through a search engine and several links, prima facie apparently copyrighted material, including, e.g., software, music files and movies. Such use cannot be considered either a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the Domain Name.
Moreover, it has been repeatedly stated that, when a respondent does not avail itself of its 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 Respondent has 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 the Complainants' prior domain name registration for <rapidshare.com> dated May 27, 2002, of the trademark registrations for RAPID SHARE, filed by the Complainants in 2005, and of the fact that the Respondent's use of the website at “www.rapidshare-deposit.com” could be seen by some as sharing some degree of similarity to the services rendered by the Complainants and is also making explicit reference to the Complainants, the Respondent was more likely than not aware of the Complainants' Trademark when decided to register the Domain Name in 2009.
The Panel shares the view of a number of previous UDRP panels in finding “opportunistic bad faith” in the registration of domain names containing renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see 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 “[s]ince 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 paragraph 4(b)(iv) of the Policy is applicable in this case since, in light of the contents of the web page which is linked to the Domain Name as described above, Internet users might be misled as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. See, along these lines, 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 <rapidshare-deposit.com>, be transferred to the Complainants.
Dated: June 4, 2010