The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America (“USA”).
The Respondent is the holder of the domain name <rapidshare.net>, represented by Michael P Eddy, USA.
The disputed domain name <rapidshare.net> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2010, naming Contactprivacy.com as the respondent.
The Center transmitted its request for registrar verification to the Registrar on April 19, 2010. The Registrar replied on April 19, 2010, confirming that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name was on Registrar Lock and would remain locked during this proceeding subject to its scheduled expiration on April 19, 2012, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of the Registrar's principal office for court adjudication of disputes concerning or arising from the use of the Domain Name.
However, the Registrar stated that the respondent identified in the Complaint was not the registrant of the Domain Name and provided the full contact details on its WhoIs database in respect of the Domain Name. These identified the registrant as Domain Admin and provided an email address at hush.com under the headings “Admin Information” and “Billing Information”. The Registrar also stated that it had not received a copy of the Complaint. The Registrar did not answer the Center's question as to the date on which the current registrant registered or acquired the Domain Name.
The Center forwarded the contact details for the Domain Name provided by the Registrar to the Complainants by email on April 21, 2010, inviting the Complainants to amend the Complaint, but not treating the identification of the respondent in the Complaint as a formal deficiency. The Complainants replied by email of April 23, 2010, declining to amend the Complaint. The Registrar then wrote to the Center on April 27, 2010, emphasizing that it was not the registrant of the Domain Name and objecting to any implication that it should represent itself as the Respondent. The Registrar explained that the publicly available WhoIs data did not reveal the true identity of the registrant.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 27, 2010. By email of April 29, 2010, the Registrar acknowledged its receipt of the notification and repeated that the registrant of the Domain Name was Domain Admin, not Contactprivacy.
In accordance with paragraph 5(a) of the Rules, the due date for Response May 17, 2010. A Response was filed with the Center May 18, 2010. The Response identified the Respondent as Fantastic Investments Ltd. of Hong Kong with an email address at hush.com which was identical to that provided by the Registrar from its WhoIs database under the headings “Admin Information” and “Billing information”. The Response elected to have the dispute determined by a three-member Panel.
The Center appointed Jonathan Turner, Keiji Kondo and Tony Willoughby as panelists in this matter on June 25, 2010. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
In paragraph 1 of the Rules, the respondent is defined as “the holder of a domain-name registration against which a complaint is initiated”. In this case, it is not clear who is the holder of the domain name.
The Complainants identify the holder as “Contactprivacy.com”, in line with the information provided by the Registrar to the public. However, it appears that “Contactprivacy.com” is given by the Registrar in place of the name of the registrant where its privacy service is used.
The Registrar identifies the registrant as “Domain Admin” in accordance with the contact details held on its internal WhoIs database in respect of the Domain Name. However, many of those details are obviously false, such as the address “123 main st., Anytown, MA, US 502-153”.
The Response identifies the Respondent as “Fantastic Investments Ltd.” with a street address in Hong Kong. The only common factor between the details of the Respondent provided in the Response and those provided by the Registrar is the identical contact email address @hush.com. No documentary evidence is provided to confirm that Fantastic Investments Ltd. actually registered the Domain Name.
The Panel is not able to determine the true identity of the holder of the domain name from the information in the file. In these circumstances, the Panel considers that it is best to identify the Respondent simply as “the holder of the domain name <rapidshare.net>.”
The First Complainant was founded in 2006 and provides a high-volume, high-speed file hosting service through its website at rapidshare.com. Its home page is the twelfth most-visited in the world. RAPIDSHARE is used as a mark on its website and “RapidShare” has been registered by it as a Community trademark in the European Union. RAPID SHARE has also been registered as a mark in the USA by the Second Complainant under an application filed on September 21, 2005, with a claim to November 1, 2006 as the date of first use in commerce. The First Complainant prohibits copyright infringement through the use of its services and provides a reporting mechanism for complaints of infringement.
The current Domain Name record was created on April 19, 2005. The Domain Name is currently directed to a website which provides a search engine on its home page for locating websites relevant to the entered string from which files can be downloaded. The homepage also provides a series of links to other websites from which files can be downloaded under the heading “Hot Downloads”. A further page at “www.rapidshare.net/legal” states that “Rapidshare.net is an index of files available to download from file sharing sites such as Rapidshare.com”.
The Complainants contend that they have registered rights in the marks RAPIDSHARE and RAPID SHARE and that the Domain Name is identical or confusingly similar to these marks.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Domain Name. They maintain that the Respondent has never operated any bona fide or legitimate business under the Domain Name and is not making any protected non-commercial or fair use of the Domain Name. They accuse the Respondent of using the Domain Name to drive Internet traffic to its website where it advertises a search engine designed to assist web users who wish to violate third party copyrights. In the view of the Complainants such illegal use of their trademark is not bona fide or fair. The Complainants add that the Respondent is not commonly known as <rapidshare.net> and that the WhoIs record reveals that it is commonly known as “contactprivacy.com”.
The Complainants allege that the Domain Name was registered and is being used in bad faith. They draw attention to the statement on the Respondent's website “Rapidshare.net is an index of files available to download from file sharing sites such as Rapidshare.com”, which they describe as an admission that the Respondent has actual knowledge of the First Complainant. The Complainants further submit that even if not for this statement, it can be inferred that the Respondent must have known about the Complainants when the Domain Name was registered.
The Complainants point out that some of the services provided by the Respondent are identical to some of those in the First Complainant's Community trademark registration. They reiterate that the Respondent is using the Domain Name to enable infringement of third party copyrights and that this use is in bad faith. They also allege that the Respondent is using the Domain Name to raise money from visitors to its website and is therefore using the Domain Name intentionally to attract Internet users to the website for commercial gain by creating a likelihood of confusion with their mark.
The Complainants request a decision that the Domain Name be transferred to them.
The Respondent states that the Domain Name was registered on April 19, 2005, and used in conjunction with a website shortly thereafter. It points out that this was prior to the filing of the Complainants' trademark applications, the first use of the Complainants' mark in commerce and the formation of the First Complainant.
The Respondent contends that it has rights or legitimate interests in respect of the Domain Name. It states that it established a website in conjunction with the Domain Name well before notice of the Complainants' mark, providing search engine and bookmarking services. It says that the Complainants have failed to show that it misleadingly diverts consumers or attempts to tarnish the Complainant's mark. It maintains that it uses the Domain Name in connection with a bona fide offering of services not unlike search engines such as bing.com, yahoo.com or google.com.
The Respondent says that it makes no claim to be associated or affiliated with the Complainants and its services differ from those which are or could be provided by the First Complainant. The Respondent adds that it is entitled to collect donations for providing its bona fide services.
The Respondent submits that it could not have registered the Domain Name in bad faith since it was impossible for it to know of the Complainants' future rights or use of their corresponding mark. The Respondent also denies bad faith use.
In accordance with paragraph 4(a) of the UDRP, in order to succeed in this proceeding, the Complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (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.
It is clear from the wording of the UDRP and confirmed by numerous decisions under it that these are cumulative requirements which must all be satisfied for a complaint to succeed. The Panel will consider them in turn.
The Panel finds that the Complainants have registered and unregistered rights in the mark RAPIDSHARE and immaterial variants such as “RapidShare” and RAPID SHARE.
The Panel considers that the Domain Name is identical or confusingly similar to this mark. It differs from the mark only in the addition of the generic top level domain suffix, which should normally be discounted when applying the first requirement of the UDRP. The Panel is satisfied that many Internet users would assume that the Domain Name belongs to the First Complainant and locates its website.
It is well established that the fact or possibility that the registration of the Domain Name preceded the Complainant's acquisition of rights in the mark is irrelevant for the purpose of the first requirement of the UDRP, but rather is a matter to be taken into account in connection with the second and third requirements. This is the consensus view of the Center's Panelists: see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The first requirement of the UDRP is satisfied.
The Panel doubts that the Respondent has any right or legitimate interest in respect of the Domain Name.
The Respondent has not provided any evidence substantiating its use of the Domain Name for the services currently provided by it or any other services before the Complainant's use of the mark became widely known. If, as the Panel suspects, the Respondent's present use began only after the Complainant's use became widely known, it could be inferred that this use has not been in connection with a bona fide offering of goods or services, but rather that it has been in bad faith to divert Internet users seeking the Complainant's website. Moreover, such use would not be legitimate non-commercial or fair use or such as to make the Respondent commonly known by the Domain Name.
However, it is not necessary to resolve this point in view of the Panel's finding below on the issue of bad faith registration.
The Panel regards the two elements of the third requirement of the UDRP – registration and use in bad faith – as cumulative conditions which must both be satisfied for a complaint to succeed. The Panel follows and adopts the reasoning on this point in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470, and Editions Milan v. Secureplus, Inc., WIPO Case No. D2010-0606.
It can be argued that this is a deficiency in the UDRP. It is certainly an aspect of the UDRP which has not been followed in some other domain name dispute resolution policies. However, the Panel must apply the UDRP as it is, not as the Panel thinks it should be.
If, as appears from the Domain Name record, it was originally registered on April 19, 2005, this original registration cannot have been in bad faith, since the Complainants had not then commenced their business or acquired their rights.
It is well established that the transfer of a domain name to a new holder can be regarded as a fresh registration for the purpose of this element of the UDRP and that this element can therefore be satisfied if the transfer was in bad faith: see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470, and cases cited there.
Given the discrepancies in the identification of the Respondent in the information provided by the Registrar to the public, the information on the Registrar's internal WhoIs database and the Response, the Panel has some doubt as to whether there may have been a transfer since the Domain Name was originally registered.
But the Complainants must prove their case, as the UDRP specifies in its paragraph 4(a). The Complainants have not asserted, let alone substantiated, that the Domain Name has been transferred in bad faith.
In these circumstances, the Panel finds that the third requirement of the UDRP has not been satisfied. The Complaint must therefore be rejected.
For the foregoing reasons, the Complaint is denied.
Jonathan Turner | |
Keiji Kondo | Tony Willoughby |
Dated: July 9, 2010