The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is rapidsharefreedownload.net of Novi Sad, Serbia.
The disputed Domain Name <rapidsharefreedownload.net> is registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On April 20, 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 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on May 14, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on May 20, 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 United States 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 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 <rapidsharefreedownload.net> was registered by the Respondent on June 10, 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 <rapidsharefreedownload.net> 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 generic terms “free” and “download” and of the top-level domain name suffix “.net”.
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 or fair use of the Domain Name, since the Respondent has been diverting Internet users to a website in which a search engine and numerous links were 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”.
With reference to the circumstances evidencing bad faith, the Complainants indicate that the Respondent's knowledge of the Complainants' Trademark is demonstrated by the adoption of a logo nearly identical to the Complainants' one and by the explicit references made by the Respondent to the Complainant on the web site corresponding to the Domain Name, with the indication, under the Section “Disclaimer”: “No files are actually hosted on this site. Files are hosted on Rapidshare, Megaupload, and other hosting sites…”.
As a circumstance evidencing bad faith in the use of the Domain Name, the Complainants highlight that the Respondent was using the Domain Name by redirecting it to a web site which provided services identical to some of the ones offered by the Complainants.
As further circumstances evidencing bad faith, the Complainants highlight that the Respondent adopted a logo nearly identical to the Complainants' one and that the fact that the Respondent has been enabling copyright infringements of third party-owned copyright materials on the web site 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 formally reply to the Complainant's contentions and is in default. It did however send an email on April 23, 2010 which reads in its entirety: “Oh, this is warez, I am susspend hosting. Thanks”.
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 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 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 and design, 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 descriptive terms “free” and “download” and the suffix TLD “.com”.
Pursuant to a number of prior decisions rendered under the Policy, in fact, the addition of descriptive terms 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).
More in particular, the addition of the words “free” and “download” is particularly apt to increase the likelihood of confusion between the Domain Name and the Complainant's Trademark since they describe the characteristics of some of the services provided by the Complainants. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500.
The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227, where the panel found that “the Domain Name <riverbellecasino.com> is almost identical, and is confusingly similar to Complainant's mark, RIVER BELLE, adding only a misspelling of the generic term ‘casino', which describes Complainant's services. The result is a Domain Name that is distinctly suggestive of Complainant's ‘casino' services, linked with Complainant's RIVER BELLE mark.”
In view of the above, the Panel finds that the Complainant has 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 Complainant 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 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 Respondent's rights or legitimate interests in respect of the 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 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 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. FA852581).
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, at the time of drafting the decision, the Domain Name is redirected to a web page in which it is indicated that “The Account has been suspended”. However, according to the printouts provided by the Complainants, the Domain Name was redirected, at the time of filing the Complaint, to a web site providing services similar to the Complainants' ones and enabling Internet users to download, through a search engine and several links, prima facie copyrighted material, including, e.g., music files, movies and videogames. 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, 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.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the prior domain name registration for <rapidshare.com> dated May 27, 2002, of the trademark registrations for RAPID SHARE, owned by the Complainants since 2005, and of the documents provided by the Complainants, evidencing that the Respondent was offering, on the web site “www.rapidsharefreedownload.net”, services similar to the ones provided by the Complainants and was also making explicit reference to the Complainants (with the indication “Files are hosted on Rapidshare”), the Respondent was aware of the Complainants' Trademark when decided to register the Domain Name.
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 at the time of the filing of the Complaint and described above, Internet users might have been misled on the source, sponsorship, affiliation, or endorsement of the Respondent's 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 <rapidsharefreedownload.net>, be transferred to the Complainant.
Dated: June 3, 2010