World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG, Christian Schmid v. Helena Clouse

Case No. D2010-1086

1. The Parties

The Complainants are RapidShare AG, and Christian Schmid, both of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Helena Clouse of Parkersburg, United States.

2. The Domain Name and Registrar

The disputed domain name <rapidownload.net> (“the Domain Name”) is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the Domain Name. On July 2, 2010, Dynadot, LLC 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 July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.

The Center appointed Alan L. Limbury as the sole panelist in this matter on August 11, 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.

4. Factual Background

The Complainant Christian Schmid is the registered proprietor of United States trademark RAPID SHARE, No. 3313895, filed on September 21, 2005 and registered on October 16, 2007, which he has licensed to the Complainant RapidShare AG.

RapidShare AG is the registered proprietor of European Community trademark No. 004753828, RAPIDSHARE, filed on November 21, 2005 and registered on September 25, 2008.

The Domain Name was registered on March 5, 2005. It resolves to a website with the headline on the home page “RapidShare news, tips and hacks” and containing references to “RapidShare information”.

5. Parties’ Contentions

A. Complainant

The Complainants say the Domain Name is confusingly similar to the RAPIDSHARE marks; that the Respondent has no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.

As to confusing similarity, Complainants say the Domain Name consists of the entirety of the RAPIDSHARE marks deleting the element “share” and adding the generic element “ownload”, which read with the “d” ending the element “rapid” will sound like “download”, a common industry term. The addition of the generic element “download” does nothing to distinguish the Domain Name from the marks. The Complainant cites RapidShare AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616 (June 11, 2010).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the 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 Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainants have rights in the RAPIDSHARE marks and that the Domain Name is not identical to those marks. Is the Domain Name, <rapidownload.net>, confusingly similar to those marks?

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domains “.com”, “.net” and “.org” are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Likewise the content of the Respondent’s website must be disregarded A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900, except where that content might indicate an intention on the part of the Respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn: RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089 (September 2, 2010).

Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648.

In finding confusing similarity, many Panels have found that the mere addition of a descriptive term by way of prefix to a complainant’s mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211 (finding <competewithwalmart.com> confusingly similar to WAL-MART); HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343, (finding <bankwithhsbc.com> confusingly similar to HSBC); F. Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717 (finding <weightlosswithxenicalinfo.info> confusingly similar to XENICAL) and Jay Leno v. Garrison Hintz, WIPO Case No. D2009-0569 (finding <weeknightswithjayleno.com> confusingly similar to JAY LENO).

The case cited by the Complainants, RapidShare AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616, is an example of such a case, where the suffix “dvd” was appended to the RAPIDSHARE mark.

Here however, the suffix “ownload” is not appended to the entirety of the trademark but to the word “Rapid”, itself an adjective having no inherent distinctiveness.

For this reason, the Panel is not satisfied that the word “rapidownload” is confusingly similar to the mark RAPIDSHARE.

The Complainant has not established this element of its case. It follows that the Complaint cannot succeed, so it is unnecessary to address the other two elements.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury
Sole Panelist
Dated: September 8, 2010

 

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