WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov
Case No. D2010-1106
1. The Parties
The Complainant is RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Protected Domain Services - Customer ID: NCR-785723 of Denver, Colorado, United States of America / n/a Sergey Vlasov of Kyiv, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <rapid4me.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 5, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On July 7, 2010, the Registrar 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 July 9, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. By an email to the Center dated July 9, 2010, the Complainant indicated that it opted not to file an amendment. 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 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2010.
The Center appointed John Swinson as the sole panelist in this matter on August 12, 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. The Proper Respondent
The Respondent listed in the Complaint is Protected Domain Services - Customer ID: NCR-785723. However, as stated above, the Registrar of the disputed domain name notified the Center that the contact information for the registrant was Sergey Vlasov of the Ukraine and therefore different from the information listed in the Complaint. The Center notified the Complainant of this information.
No information was available regarding Protected Domain Services - Customer ID: NCR-785723; however the Panel understands it to be a privacy registration domain name service. It is becoming more common for listed registrants of domain names to be protected by privacy services (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886). However, usually when the “true” registrant is disclosed, the Complainant chooses to amend their complaint to reflect this information. Here, the Complainant has chosen not to amend the Complaint, despite the Center’s invitation to do so.
A similar situation was discussed at length in another panel decision involving the Complainant and Protected Domain Services - RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikahil Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894. In this case, it was found that to satisfy its procedural obligations under the Policy, the Complainant only has to name the person or entity listed in the WhoIS register at the time of filing the Complaint. The Complainant has met this obligation.
The options for panel members in cases involving privacy services were set out in Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. They are to:
(i) treat the underlying registrant as the respondent;
(ii) treat the privacy service as the respondent; or
(iii) treat both the privacy service and the underlying registrant as the respondents.
In this case, the Complainant also chose not to amend the Complaint upon receiving information about the underlying registrant. The Panel agrees with the panel’s comments from the Research in Motion case, that the best course of action is to consider both the privacy service and the underlying registrant as the respondents. Therefore, both Protected Domain Services - Customer ID: NCR 785723 and Sergey Vlasov will be considered and referred to as the Respondent.
5. Factual Background
The first Complainant, RapidShare AG, was founded in 2006 in Switzerland and is an online file sharing-host that assists with the transfer of large amounts of data. Users are able to securely upload files in “one-click” and make them available to others for downloading. The second Complainant, Christian Schmid is an individual residing in Switzerland. He is the owner of the United States (“U.S.”) Trade Mark for RAPID SHARE (detailed below). According to the Complaint, the second Complainant has licensed the first Complainant use of this trademark. The Panel will refer to both of these parties as the Complainant.
The Complainant owns the following trademarks:
U.S. Trade Mark Registration No. 3313895 for RAPID SHARE (priority date of September 21, 2005); and Community Trade Mark Registration No. 004753828 for RAPIDSHARE (priority date of November 21, 2005).
As stated above, the Panel understands Protected Domain Services to be a privacy registration domain name service. Protected Domain Services - Customer ID: NCR 785723 presumably refers to the underlying registrant’s individual customer identification number at Protected Domain Services. Sergey Vlasov is an individual residing in the Ukraine.
The disputed domain name was registered on January 9, 2009. The website resolving from the disputed domain name is currently being used as a search engine. Users can search the site generally and can view “recent file searches” as well as “popular searches by country”.
6. Parties’ Contentions
The Complainant makes the following submissions and arguments:
The Complainant is one of the biggest and fastest “one-click” file sharing hosts in the world. The Complainant has succeeded in becoming the 12th most visited homepage in the world. The Complainant works towards making “transfers of huge data volumes, faster, simpler and more secure for its users and customers”. The Complainant’s primary business website is located at “www.rapidshare.com”.
The disputed domain name is identical or confusingly similar to the Complainant’s RAPIDSHARE trademarks. It consists of the dominant element of the Complainant’s trademark, “rapid”, deletes the element “share”, and replaces it with the generic element “4me”. Deletion of the “share” element does not distinguish the domain name from the Complainant’s trademarks, therefore the disputed domain name is confusingly similar (see Sol Moscot, Inc. v. Web Master, WIPO Case No. D2007-0036). Furthermore, addition of the generic element “4me” does nothing to distinguish the disputed domain name from the Complainant’s trade marks (see RapidShare AG, Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616).
The Respondent has never operated a bona fide or legitimate business from the disputed domain name, and it is not making a protected non-commercial or fair use of the disputed domain name. The Respondent is not commonly known as “rapid4me.com” or any similar variation. The website resolving from the disputed domain name is titled “rapid4me”, and serves as a search engine designed to search the Complainant’s website. This website enables online copyright violations while using a confusingly similar variation of the Complainant’s well known RAPIDSHARE trademark. Such use cannot be considered a bona fide offering of goods or services. The facts of the case are similar to those in RapidShare AG, Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616 where the panel found that use of the Complainant’s trademarks to attract users to the website was not use of the disputed domain name in connection with the bona fide offering of goods or services.
Due to the location of the first Respondent, it should have had knowledge of the Complainant’s U.S. trademark rights (see XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467). This, as well as the fact that the disputed domain name is confusingly similar to the Complainant’s trademarks, further shows that Respondent had knowledge of the Complainant at the time the disputed domain name was registered. In an email to the Complainant dated May 1, 2010, the Respondent has admitted that the Respondent’s website and advertisements from that website made direct reference to the Complainant and its trademarks. This use demonstrates actual knowledge of the Complainant’s trademarks.
The Respondent’s website encourages copyright piracy; such use is bad faith use (RapidShare AG, Christian Schmid v rapidsharedvd, WIPO Case No. D2010-0616). The Respondent’s website previously showed “pay-per-click” advertisements, some of which used the Complainant’s trademarks. This use, to attract Internet users to a website for commercial gain, is one of the four examples of bad faith listed in the Policy. The Respondent’s remaining services are related to the balance of services set forth in the Complainant’s trademarks. Using a confusingly similar domain name to provide related services shows opportunistic bad faith on the part of the Respondent (see Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089).
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant is the owner of registered trade marks for RAPIDSHARE and RAPID SHARE. For the Complainant to succeed on this element, it must show that “rapid4me” is confusingly similar to “RAPID SHARE” or “RAPIDSHARE”. It is well established that the suffix “.com” can be ignored for this purpose.
The Complainant has argued that the dominant element of the trademark “rapid” has been included in the disputed domain name and that the deletion of “share” does not sufficiently distinguish the Complainant’s trademark. It is further argued that the addition of “4me” does nothing to distinguish the disputed domain name from the Complainant’s trademarks. The Complainant has provided no evidence of its reputation in RAPID (a common word) as opposed to RAPIDSHARE (a combination of two common words which have no generally understood meaning when read together). Furthermore, despite the fact that the Complaint addressed the popularity of the Complainant’s website and services; it did not provide any evidence of any common law rights in RAPID or RAPID4ME.
The Complainant has recently been involved in a number of UDRP disputes. In these cases it was found that the following domain names were all identical or deceptively similar to the Complainant’s trademarks:
- <rapidshareindex.com>; and
All of these cases involved the entire trademark of the Complainant, so such findings are not of assistance in this dispute.
In RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, <rapidbay.net> was found not to be identical or deceptively similar to the complainant’s trademarks. In this case, the panel found that the complainant had no trademark rights in either “RAPID” or “RAPID BAY” and made the finding that use of the word “rapid” in the disputed domain name and in the complainant’s trademarks was not sufficient to meet this element for the following reasons (which are equally applicable here):
- “rapid” is a common dictionary word, which has presumably been used in thousands of businesses world-wide;
- the term “rapid” is an obvious choice for description of a business which wishes to convey the message that it provides fast services;
- on its own, the term “rapid” suggests no link to the concept of “sharing” (which is a core concept of the Complainant’s business);
- there is no evidence to suggest that “Rapid Share” is commonly referred to as “Rapid”; and
- the word “share” is obviously significant as it is joined with the company name and trademark to form a single word (i.e. the deletion cannot be considered unimportant).
The Panel finds that the disputed domain name is not identical or confusingly similar to the Complainant’s trademarks. The Panel agrees that “rapid” is a common dictionary word. The Macquarie dictionary defines “rapid” as “occurring with speed” or “coming about within a short time”. Again, it is likely that another business wishing to communicate the speed of its services would wish to use this term.
The panel in RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696 also found that the second element of the domain name, “bay” neither looked nor sounded like the second element of the Complainant’s trademark, “share”. It is a similar situation in this case. The second element of the disputed domain name, “4me” is not similar in an aural or visual sense, particularly as it contains a number and is read as two words (“for me”) as opposed to one word (“share”).
The Complainant has chosen this word to be part of its business name and trademarks as it represents their business of file sharing. There is also no evidence that the Complainant’s brand or the Complainant are commonly abbreviated or known by the name “Rapid”. The Panel cannot therefore disregard the “share” element of the trademark for the purposes of this comparison.
For the reasons discussed above, the Panel finds that the disputed domain name is not identical or deceptively similar to the Complainant’s trademarks, and the first element has not been met.
B. Rights or Legitimate Interests
Due to the findings above it is not necessary to decide this issue.
C. Registered and Used in Bad Faith
Due to the findings above it is not necessary to decide this issue.
For all the foregoing reasons, the Complaint is denied.
Dated: August 27, 2010