The Complainant is RapidShare AG, Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is WhoisGuard, Hyperweb / Sunny Lal of Westchester, California, United States of America and Mississauga, Canada, respectively.
The disputed domain name <free-rapidshare-premium-accounts.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 2, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2010, eNom, Inc. 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 June 7, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant indicated on the same day that it decided not 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 June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Response was filed with the Center on June 29, 2010.
In light of the Respondent's apparent offer to settle the dispute, on June 30, 2010, the Center sent an communication to the Complainant (copying the Respondent) noting that the Complainant may wish to suspend the proceedings to explore a possible settlement, and that if no suspension request was received by July 3, 2010 the Center would proceed to appoint the Panel. On July 7, 2010, the Complainant sent an email to the Center requesting it to proceed to appoint the Panel.
The Center appointed James A. Barker as the sole panelist in this matter on July 13, 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 has decided to proceed against the privacy protection service (WhoisGuard, Hyperweb) only. The facts of this case are somewhat similar to recent cases involving the Complainant: RapidShare AG and Christian Schmid v. PrivacyProtect.org / Bashkov Andrey Olegovish (firstname.lastname@example.org), WIPO Case No. D2010-0571. In that case the panelist treated both the privacy service and the underlying registrant as “the Respondent” for the purpose of the proceedings, following the “pragmatic” approach of the panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. The Panel in this case proceeds on a similar basis.
The Complainant (together, RapidShare AG and Christian Schmid) has been a Complainant in various other recent proceedings under the Policy. Those include e.g. RapidShare AG, Christian Schmid v. Liao Fei, WIPO Case No. D2010-0614; RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao, WIPO Case No. D2010-0600; RapidShare AG, Christian Schmid v. Ladder Group, WIPO Case No. D2010-0588; RapidShare AG, Christian Schmid v. na, Sunny Lal/WhoisGuard, WIPO Case No. D2010-0890. Those past proceedings adopted similar facts, as set out in the Complaint. For consistency, the Panel in this case similarly adopts the following as the factual background in this case.
The Complainant (RapidShare AG) is a Swiss company which was founded in 2006. It provides one-click hosting of data and is currently the twelfth most visited homepage in the world. It has a storage capacity of several petabytes (a petabyte is a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously.
The Complainant operates a file sharing service. It operates as a pay service, allowing any member to upload files of up to 100 megabytes. The user is then supplied with a unique download URL which locates the file and enables anyone with whom the uploader shares it to download the file.
The Complainant also provides a reporting system for copyright owners to notify the Company if it believes that a user is violating his copyrights or is using RapidShare to publish illegal content.
The Complainant, Christian Schmid, is the registrant of the United States registered trademarks RAPID SHARE, which is licensed to the Complainant, RapidShare AG. Christian Schmid was also the founder of the Complainant, RapidShare AG.
The Complainant uses the trade mark RAPID SHARE in connection with its services and is the owner of the following trade mark registrations for RAPID SHARE (registered in the United States with a priority date of September 21, 2005); RAPID SHARE THE EASY WAY TO SHARE YOUR FILES, and RAPIDSHARE (registered in the European Union, with a priority date of November 21, 2005).
The services to which the above registrations relate include “web hosting, computer, presentation of goods and services, and research in databases”.
The Complainant operates a website at “www.rapidshare.com” which it claims has risen to the twelfth most popular website in the world.
The Respondent registered the disputed domain name on September 29, 2006 (to the extent that the registration date is equivalent to the “creation date” in the WhoIs record). The Complainant provides evidence of the Respondent's website as at May 28, 2010. On that day, the disputed domain name reverted to a website with the heading “Rapidshare Premium-Pack” and the statement “Limited Time Offer!” with a button inviting the visitor to “Join Premium Pack”.
The Complainant says that the disputed domain name is identical or confusingly similar to its marks, as the domain name consists of the RAPID SHARE mark in its entirety and adds only the generic elements “free” and “premium-accounts”. Those elements do nothing to distinguish the domain name from any of the Complainant's marks.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected non-commercial or fair use of it.
The Complainant says that the Respondent uses the disputed domain name to divert Internet traffic to the Respondent's website, which advertises a membership designed to assist web users who wish to violate the copyright of others by locating and sharing copyright protected documents online. An illegal use of another's trademark cannot be considered a bona fide or fair use. The Complainant has not granted the Respondent any license or permission to register or use the disputed domain name and the Respondent is not commonly known by that domain name.
The Complainant claims that the disputed domain name was registered and has been used in bad faith. In this connection, the Complainant says that the Respondent had actual or at least constructive notice of its well-known mark. The totality of the circumstances indicate that the Respondent knew of the Complainant at the time of registration of the disputed domain name, since the domain name is nearly identical to the Complainant's RAPID SHARE mark and is being used in conjunction with related services.
The Complainant says that the disputed domain name is being used to direct users, under the Complainant's RAPID SHARE trademark, to a website that advertises certain membership services for a fee. Some of those services are identical to some of the services in relation to which the Complainant's marks are registered. As the Respondent is also using the disputed domain name to enable copyright infringement of third party materials, such a use cannot be bona fide. Finally, the Complainant says that the Respondent is using the disputed domain name for commercial gain.
The Response was filed on June 29, 2010. The substance of the Response is reproduced as follows:
“The domain name is not identical to the trademarked name ‘Rapid Share AG' and although similar, not confusingly so.”
“The original reason for the purchase of this domain name has been to participate in a program advertised by Rapid Share AG on several forums regarding the giving away of free rapidshare premium accounts, by participating in file upload competitions. These programs were not advertised on their website (rapidshare.com) however, many internet users on several forums have attested to receiving free rapidshare premium accounts directly from Rapid Share AG as a result of participating in this program.”
“Because the program was inconspicouos (sic), I was unable to complete the development of the site and hence, the domain name in question has been parked. I, the Respondent, am located in Canada, not the United States as submitted in the complaint. The domain name is in no way being used to enable copyright infringement of third party own copyright materials, nor is there any evidence to show such usage. There is no commercial gain from the usage of this domain name. There is a membership affiliate/sponsor link for a porn related website, that is not related to ‘Rapidshare AG' or ‘rapidshare.com' in any way. In spite of the above points, I am not prepared nor can I afford an attorney for any further litigation and as such I am willing to settle the matter by giving up ownership of the domain name and avoid further complaint or liability.”
Under 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.”
To succeed under paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Each of these elements are addressed in turn below, immediately following a discussion of the implications of the Respondent's apparent consent to transfer the disputed domain name.
The approach to be adopted when a respondent consents to transfer has been discussed e.g. in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. This Panel takes a similar approach: namely, that the terms of the Policy and Rules suggest that the Panel should proceed to consider whether each of the elements in paragraph 4(a) of the Policy are satisfied regardless of an apparent consent. This is particularly so as, in this case, there is “nothing before the Panel to merit a finding that the Respondent concedes that he has acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.” (Research In Motion, supra). No such concession has been made in this case.
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it “has rights” in a mark. The Complainant's evidence of its registered rights is clearly sufficient for this purpose.
The Complainant must next establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The disputed domain name is self-evidently not identical to the Complainant's registered marks outlined above. The Panel however finds that the disputed domain name is, at least, confusingly similar to the Complainant's RAPID SHARE mark, for reasons to those outlined in relation to somewhat similar circumstances by the panel in RapidShare AG, Christian Schmid v. Andrey Polev N/A, WIPO Case No. D2010-0599. In particular, the disputed domain name wholly incorporates the Complainant's RAPID SHARE mark with the addition of the descriptive terms “free” and “premium-accounts”.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The Complainant's case against the Respondent in this respect is that the Respondent's website is designed to enable copyright infringement. That case is not strongly made out. The evidence which the Complainant provides to relevantly support its case – a copy of the Respondent's homepage – does not self-evidently demonstrate the Complainant's claims. The Panel is also aware that the Complainant's marks have been the subject of a very recent number of procedures filed by the Complainant, some of which are referred to above. The timing of these proceedings might suggest that other Internet users have been encouraged to register domain names incorporating the Complainant's mark, and the Panel can only speculate as to whether those registrations were motivated by the “program” to which the Respondent in this case refers.
However, there is little evidence in this respect and the Respondent has not clearly articulated or provided evidence to support the claim that he was motivated to register the disputed domain name by a program advertised by the Complainant. Ultimately, rights or legitimate interests are a matter for the Respondent to demonstrate once the Complainant has made a prima facie case.
There is otherwise little evidence that the Respondent has rights or legitimate interests in the disputed domain name. The Panel also has regard to the Respondent's apparent consent to transfer the disputed domain name.
Having regard to these matters, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The Respondent suggests that he was motivated to register the disputed domain name because of a program advertised by the Complainant. This suggests that the Respondent was aware of the Complainant's mark when he registered the disputed domain name and intended to exploit it in some connection with the Complainant's mark. Such a practice, in the circumstances of this case, is indicative of bad faith.
In addition, the Complainant's mark appears to be well-known, and the Respondent may equally have been aware of it for that reason. The plethora of recent UDRP decisions involving the Complainant is some demonstration of general reputation of the Complainant's mark. A recent panel decision in relation to the Complainant's RAPID SHARE mark found that “Given the very established use of the First Complainant's hosting / file sharing business and the use to which the disputed domain name is being put, it is inconceivable that the disputed domain name could have been registered in good faith.”
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <free-rapidshare-premium-accounts.com>, be transferred to the Complainant.
James A. Barker
Date: July 27, 2010