WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RapidShare AG and Christian Schmid v. Hou Yanpeng
Case No. D2010-0893
1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Hou Yanpeng of HuBei, The People’s Republic of China, represented by Traverse Legal, PLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rapidshareindex.com> is registered with GoDaddy.com, Inc.
3. Procedural History
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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2010, GoDaddy.com, 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 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email stating it chooses not to amend the Complaint on June 4, 2010. 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 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2010. The Response was filed with the Center on June 24, 2010.
The Center appointed Ross Wilson as the sole panelist in this matter on July 14, 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.
Prior to the filing of the Response the Center received on June 4, 2010 an email from the Respondent stating “I made a mistake, plz do not change anything about my domain, i have paid for this”. Again on June 8, 2010 the Respondent advised “We do not think we against the rules, we are not affiliate of RapidShare AG. But our domain is similar to rapidshare.com, that is why they want to to shutdown our domian, that is not fair! What should we do now? Please help.” Another email from the Respondent to the Complainant’s representative and copied to the Center on June 9, 2010 stated that “We are the owner of rapidshareindex.com, we don’t want to dispute with you, and we decide to give this domain to RapidShare AG, but we need 3-6 months for changing domain, Please forword this message to RapidShare AG, Is it fair?”. On June 10, 2010 the Center sought confirmation from the Respondent that the June 9, 2010 communication may be regarded as its complete response. The Respondent’s Response on June 24, 2010 was in effect its reply.
Prior to the appointment of the Panel the Center received an additional submission from the Complainant on July 6, 2010.
4. Respondent Identity
While the Complaint was been filed against the person/entity identified as Private, Registration, Godaddy.com, Inc. advised that Hou Yanpeng is the registrant of the disputed domain name. Based on the more recent information provided by GoDaddy.com, Inc. and the admission by Hou Yanpeng in his Response that he is the owner of the disputed domain name, the Panel determines that the Respondent is Hou Yanpeng.
5. Factual Background
The Complainant is a Swiss corporation that was founded in 2006. It operates a widely used “one click” file host that facilitates file sharing and, according to evidence provided by the Complainant, at one stage was the twelfth most visited website. The volumes of data transferred for its customers and users require vast storage capacity of several petabytes (a petabyte is a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously.
The Complainant’s trademarks are RAPID SHARE registered in the United States by the second Complainant and filed on September 21, 2005, and RAPIDSHARE and RAPID SHARE THE EASY WAY TO SHARE YOUR FILES both registered and owned by the first Complainant in the European Community and filed on November 21, 2005.
The Respondent’s domain name was registered on February 3, 2008. At the time the Complaint was filed, the Respondent appears to have been providing users with a search engine that crawled the web to identify links to files hosted on <rapidshare.com>, categorised those links and provided a means to search those links. As of the date of this decision, the disputed domain name links to a website at “www.shareseeking.com”, which appears to provide similar services.
6. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademarks with the addition of the generic element “index”.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it has never made any bona fide offering, or other legitimate use under the disputed domain name and is not making a protected noncommercial or fair use of the disputed domain name. The Respondent is not commonly known as “rapidshareindex”. In fact the Respondent is using the disputed domain name to drive Internet traffic to its site which provides a search engine, numerous links organized by category and a file sharing forum designed to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents online.
The Complainant contends that the disputed domain name was registered in bad faith because the totality of the circumstance indicate that the Respondent knew of the Complainant’s trademark since the disputed domain name is nearly identical to the Complainant’s mark and there is a reference to the Complainant on a secondary webpage stating “Description: Rapidshare Search Engine – Search everything on Rapidshare.com and Rapidshare.de”.
The Complainant considers that bad faith use of the disputed domain name is demonstrated by the Respondent using the disputed domain name to provide a search engine, links and a file sharing forum under the Complainant’s trademark. In addition the Respondent by using the domain name to enable copyright infringement of third party-owned copyright materials cannot give rise to bona fide use and must therefore be bad faith use of the disputed domain name.
Finally, in the Complainant’s view bad faith is evidenced by the Respondent’s website containing advertisements to other websites.
The Respondent contends that the disputed domain name is not identical or confusingly similar because the Complainant cannot possess trademark rights in the generic or descriptive terms “rapid share index” especially when those terms are used in association with file sharing indexing services. The Respondent claims that it is not using the Complainant’s alleged mark in a trademark sense.
The Respondent states that the addition of the term “index” to the Complainant’s generic or descriptive mark mitigates any confusing similarity.
The Respondent asserts that it has rights and legitimate interests in using a generic or descriptive domain name to offer search engine services that are not competitive with the Complainant’s services. Alternatively, the Respondent argues that it is making nominative fair use of the Complainant’s marks to correctly and accurately describe the contents of the Respondent’s website. Its search engine services complement and operate in conjunction with the Complainant’s file sharing services.
The Respondent contends that it did not register or use the disputed domain name in bad faith because it is offering services that are complementary to and not in competition with the Complainant.
The Respondent further argues that the Complainant’s claims regarding copyright infringement are beyond the scope of the Policy and these proceedings.
Finally, the Respondent claims that there is no bad faith use as its commercial use is not likely to cause confusion due to the fact that the disputed domain name consists of generic or descriptive terms.
7. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the trademark RAPIDSHARE. The disputed domain name consists of the Complainant’s trademark in its entirety together the suffix “index” and the gTLD “.com”.
It has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). Similarly, it is widely held that the addition of a generic word like “index” does not avoid confusing similarity.
The Panel acknowledges that the gTLD “.com” suffix only indicates that the disputed domain name is registered under that gTLD and cannot be considered distinctive.
As stated in Rapidsahre AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616, a claim that the Complainant cannot possess trademark rights in the generic or descriptive terms “rapid share index” is misconceived. The consensus view of UDRP panels is if the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights for the purposes of paragraph 4(a)(i) of the Policy (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, paragraph 1.1).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted sufficient evidence and arguments to demonstrate the Respondent has no rights or legitimate interests in the disputed domain name. In this Panel’s view, based on all the evidence in the present record, the Respondent has not adequately rebutted the Complainant’s case.
The Respondent has relied on proving its rights or legitimate interests in the disputed domain name based on paragraph 4(c)(iii) as it relates to fair use of a domain name, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The Respondent considers its fair use of the Complainant’s trademark meets the requirements of the “nominative fair use” doctrine.
The Respondent has not made clear how the doctrine of “nominative fair use”, which the Panel understands to be principally applicable to trademark actions under the United States Lanham Act, is applicable let alone binding with respect to this proceeding under the Policy. While the Panel is aware that some prior UDRP panels have had regard to such United States doctrine, this has tended to be in cases in which one or both parties are from the United States. See Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0963 and Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall, WIPO Case No. D2009-1182. That is not the case in the present dispute, even though counsel for the parties may be. Although the Panel has discretion under the UDRP Rules, paragraph 15(a), to have regard to national law it deems applicable, this Panel would query the applicability of United States law to the present case, except as it may have relevance to the mutual jurisdiction election made in the Complaint. In any event, in the interest of completeness, the Panel will nevertheless consider the Respondent’s arguments on this point.
Under the “nominative fair use” doctrine, use of a trademark to identify the trademarked goods in a commercial context does not violate the trademark owner’s rights if it meets the following three requirements: (a) the product or service cannot be readily identifiable without using the mark; (b) only so much of the mark may be used as reasonably necessary to identify the product or service; and (c) the user must do nothing that would, in conjunction with its use of the mark, suggest sponsorship or endorsement by the trademark holder.
The Panel notes that the right of nominative fair use is not an unlimited one and needs to be considered on a case by case basis.
At the Respondent’s website there may potentially be nominative fair use of the Complainant’s trademark through reference to “Rapidshare movies”, “Rapidshare music”, “Rapidshare ebooks” and “Rapidshare search” which is not in dispute. At issue here is the use of a trademark in a domain name. The Panel finds in this case that the Respondent failed to meet the first and third tests of the nominative fair use doctrine with respect to using the Complainant’s trademark in the disputed domain name.
In terms of the first component of the doctrine the Respondent has demonstrated that it is quite capable of providing its service through its own operational <shareservices.com> website without having to use the Complainant’s trademark in a domain name to redirect traffic to its website.
Turning to the third component of the doctrine Panels have generally acknowledged fair use of another’s trademark on a website but have stopped short of acknowledging fair use when a third party’s trademark is used in a domain name to intentionally divert Internet traffic to another website because of the implicit suggestion of affiliation or authorisation. In Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878 the panel recognized the legitimacy of using a third party’s trademarks on a website but the use of the trademarks in the disputed domain names “as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy”. Similarly, in Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214 the panel found that the “Respondent may be able to offer Complainant’s hotel rooms on its website as part of its range of hotel room offerings, but it cannot use Complainant’s mark as its domain name, that is, as the entryway to its business. The latter use suggests ownership, sponsorship or authorization by Complainant”.
The means by which a respondent can use another’s trademarks legitimately was canvassed in Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 and the Panel considers it is worth repeating in detail here to indicate other ways a third party’s trademark can be used fairly. In that case the panel stated that:
“Respondent is not prevented from using the word or syllable VOLVO as a META tag on search engines in order to be visible on the Internet, nor is it prevented to use the term in a non-trademark sense on its webpage. It could even use the word or syllable VOLVO in the Domain Name, but, in view of the wording of paragraph 4(c)(iii) of the Policy, only in a non-confusing and non-diverting manner. By allowing the use of misleading and diverting domain names, Respondent could get a free ride and could bank on the goodwill created by the trademark holder with great investments and over a long period of time. Had Respondent registered a non-confusing domain name, identifying the trademark to belong to someone else, such as for instance: <insuranceforvolvos.com> or <volvoinsurancebroker.com> (which examples do not imply or even clearly exclude ownership, affiliation, endorsement or support by the trade mark holder), the Panel would could have taken a different view as to their admissibility. By contrast, the Domain Name chosen by Respondent at first sight appears to be one of Complainant’s and it is only upon arriving at and studying the web page that the (intended) disclaimer can be seen. At that point, the consumer has already been diverted and mislead, attracted by the false impression created by the misleading Domain Name. The Policy wants to avoid this […] (I)t is clear that the described goods and services can be and currently are marketed and sold without using a Domain Name incorporating the mark of Complainant […] This proceeding is only concerned with the use of the word VOLVO in a Domain Name. In view of the available technology of using META-tags to increase the number of hits on search engines, there is no need for Respondent to include the protected trademark VOLVO, or any other car manufacturers’ protected trademarks, in the domain name in order to carry out its business. Even if the domain name did not include the component VOLVO, Respondent’s web page could be found on the Internet.”
The third component of the doctrine requires the user must do nothing that would, in conjunction with its use of the mark, suggest sponsorship or endorsement by the trademark holder. There is no doubt to the Panel’s mind that the prominence of the Complainant’s widely known trademark in the disputed domain name would suggest to Internet users that there could by ownership, sponsorship or authorization by Complainant. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
As stated above, the Panel considers the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith is evidenced.
Paragraph 4(b) (iv) states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. Based on the Panel’s conclusion about the lack of fair use of the Complainant’s trademark it is clear that the Respondent intentionally used the Complainant’s trademark in the disputed domain name to attract users to its website for commercial gain. The Respondent’s use of the Complainant’s trademark in its entirety would clearly confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 and Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089, the disputed domain name is so obviously connected with the complainant’s trademark, its very use by someone not connected with the complainant suggests opportunistic bad faith.
Deriving commercial gain stemming from Internet users visiting the Respondent’s site, believing that they were about to visit an official site of the Complainant, represents bad faith use of the disputed domain name (see Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261).
On the basis of the above, and when considered together with the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
The Panel notes that both parties have raised concerns about the other’s activities involving copyright abuse. The copyright infringement matters raised in this case do not require the Panel’s decision as they are outside the scope of the URDP.
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 <rapidshareindex.com> be transferred to the Complainant.
Dated: July 28, 2010