The Complainants are RapidShare AG and Christian Schmid, of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is AMStudio of Donetsk, Ukraine.
The disputed domain name <rapidshare-warez.net> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. On April 21, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on June 2, 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.
In the absence of any Response, the Panel has checked the record to ensure that the Complaint was notified to the Respondent in accordance with the Rules. The Panel is satisfied that it was.
The Complainant RapidShare AG (“RapidShare”) is a corporation established in 2006, with its headquarters in Switzerland. RapidShare operates an online file sharing service through its principal website at “www.rapidshare.com” (“the Complainant's website”). Briefly, users of RapidShare's services can distribute Internet files by uploading the files to the platform at the Complainant's website, and emailing a download link to the intended recipients of the computer file. According to the Complaint, the home page at the Complainant's website has become the twelfth most visited home page in the world.
RapidShare is the registered proprietor of Community Trademark No. 004753828, consisting of the words RAPIDSHARE, having a priority date of November 21, 2005 (“RapidShare's mark”). RapidShare's mark covers, inter alia, “online advertising on a computer network”, and marketing, including on digital networks. It also covers “advertising”, including on the Internet and “presentation of goods and services”.
A person having the same name as the second-named Complainant, but said to be resident in Germany, is the proprietor of the mark RAPID SHARE in the United States. According to the Complaint, the second-named Complainant and this individual are the same person, and that person has licensed the use of the United States mark to RapidShare.
The Domain Name was registered on November 20, 2008. According to the Complaint, the Domain Name was inactive at the time the Complaint was filed. However it has in the past pointed to a website (“the Respondent's website”) which provided a search engine and numerous links, organized by date and category, at which Internet users could download goods and services. Some of the links were to websites which the Complainants describe as “Sponsor” websites. The Complainants say that the downloading involved copyright infringement of third party-owned copyright materials, and that the Respondent has enabled such activities by providing the links on the Respondent's website.
The Complainant produced a copy of a cached version of the Respondent's website, as it stood on April 20, 2010. It was prominently headed “RapidShare Downloads”, with the words “Rapid” and “Share” run together as they appear in RapidShare's mark. The printed pages appeared to provide links to third party websites at which a site visitor could download DVDs, and other materials which were presumably subject to copyright protection. The Respondent's website was written in the English language.
In accordance with normal practice, the Panel has attempted to visit the Respondent's website. That took place on June 14, 2010. The Panel was unable to access any website at the Domain Name.
The Panel notes that the expression “warez” refers primarily to copyrighted works which are traded in violation of copyright law.1
The Complainant contends:
1. The Domain Name is confusingly similar to RapidShare's mark. RapidShare's mark has been included in its entirety in the Domain Name, and the Respondent has only added the generic element “-warez” and the top-level domain name suffix “.net”. Neither the addition of that generic element nor the addition of the domain name suffix distinguishes the Domain Name from RapidShare's mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has never operated any bona fide or legitimate business under the Domain Name, nor made any protected noncommercial or fair use of the Domain Name.
(ii) The Respondent uses the Domain Name to drive Internet traffic to the Respondent's website, which consists of links, organized by category and date, that assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents online. Illegal use of another's trademark cannot be considered a bona fide or fair use of the Domain Name.
(iii) The Complainants have not granted the Respondent any license, permission or authorization to own or use any domain name registration which is confusingly similar to RapidShare's mark.
3. The Domain Name was registered in bad faith, and has been used in bad faith. The Complainants rely on the following matters:
(i) The totality of the circumstances show that the Respondent knew of RapidShare at the time of registration of the Domain Name. The Domain Name is nearly identical to RapidShare's mark, and is being used in conjunction with related services (citing Facebook Inc. v. Privacy Limited Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).
(ii) The services which have been provided by the Respondent through the Respondent's website could be seen by some as sharing a degree of similarity to some of the services set forth in the specification for RapidShare's mark, namely “presentation of goods and services”. And the Respondent's search engine services are related to the balance of the services set out in that specification. Use of a nearly identical domain name to conduct an identical and related service shows opportunistic bad faith on the part of the Respondent.
(iii) The Respondent is using the Domain Name to enable copyright infringement of copyright materials owned by third parties. Such a use in violation of established public policy is a bad faith use of the Domain Name (citing Hoffman La-Roche Inc v. Domain Ownership Ltd, WIPO Case No. D2007-0891).
(iv) The Respondent is using the Domain Name for commercial gain, derived from the identification of “sponsor” websites on the Respondent's website, and the provision of links to those “sponsor” websites (citing Playboy Enters Int'l Inc v. Tonya Flynt Foundation, WIPO Case No. D2001-1002).
The Respondent did not reply to the Complainant's contentions.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Complainants have proved this part of the Complaint. RapidShare's mark is registered in the European Union, and it has been incorporated in full in the Domain Name. All that has been added is an expression, “-warez”, which the Panel is satisfied has become generic. In the Panel's view, the addition of that generic expression does nothing to remove the confusing similarity caused by the inclusion in the Domain Name of RapidShare's mark.
The generic suffix “.net” is not taken into account in the comparison which is required under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to RapidShare's mark, and RapidShare has not authorized the Respondent to use RapidShare's mark, whether in a domain name or otherwise. There is nothing in the record to suggest that the Respondent (or any business operated by it) is commonly known by the Domain Name, and therefore no possibility of the Respondent having a right or legitimate interest under paragraph 4(c)(ii) of the Policy. The provision of links on the Respondent's website suggests that there has been a commercial element in the Respondent's use of the Domain Name, so that the Respondent could not have brought itself within the concept of legitimate noncommercial use referred to at paragraph 4(c)(iii) of the Policy.
Those factors are, in combination with the evidence and arguments submitted by the Complainants, sufficient to establish a prima facie case of “no right or legitimate interest”. The evidentiary burden on this part of the Complaint therefore shifts to the Respondent.
The Respondent, not having filed any Response, has failed to discharge that burden. The Complainants therefore succeed on this part of their Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Complainants have also proved this part of the Complaint.
In the absence of any response, the Panel concludes that the Respondent was aware of RapidShare and RapidShare's mark when the Respondent registered the Domain Name. Indeed, it is apparent when one looks at the Complainants' April 20, 2010 screen shot of the pages from the Respondent's website, that the Respondent was aware of RapidShare. The pages were prominently headed “RapidShare Warez Downloads”, and the first click-on link was “RapidShare Warez/Actual RapidShare Warez Downloads”. The use of the expression “rapidshare” as a single word, which is how the expression appears in RapidShare's mark, confirm that the Respondent has been using the expression in a trademark sense, as a reference to RapidShare and its services.
The use of Rapid Share's mark in the Domain Name could only have been calculated to attract to the Respondent's website Internet users who were aware of RapidShare's standing as a leader in the file hosting field, and who would be attracted to websites which were (or might be) affiliated with RapidShare. The links to “Sponsor” websites suggest a commercial element in the Respondent's use of the Domain Name, and the Panel concludes that it is more likely than not that the Respondent has been deriving some revenue by providing such links to third party commercial websites.
The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with RapidShare's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Even if the Respondent had been operating the Respondent's website without intent for commercial gain, the Panel's finding of bad faith registration and use would still stand. The use of a complainant's mark to generate increased Internet traffic to a website (with which that complainant has no connection) which is used to facilitate unlawful activity is, in the Panel's view, sufficient to constitute bad faith registration and use, even if the circumstances might not fall exactly within any of the examples of bad faith registration and use which are provided at paragraph 4(b) of the Policy. In this case, the use of the expression “warez” makes it fairly clear (at least in the absence of any Response to the Complaint) that the Respondent was well aware that the file sharing which the Respondent's website has facilitated would, in many if not all instances, involve copyright infringement.
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-warez.net>, be transferred to the Complainants.
Dated: June 15, 2010
1 According to the relevant Wikipedia entry, the term is intended as a plural of “ware”, being an abbreviation for “computer software”. The Wikipedia entry states that the term generally refers to illegal releases by organised groups, as opposed to file sharing between friends, and it usually does not refer to commercial for-profit software counterfeiting. The Wikipedia author notes that the term was initially coined by members of the various computer underground circles, but has since become common place among Internet users and the mass media.