WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail 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)

Case No. D2010-0894

1. The Parties

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

1.2 The Respondent (the “First Respondent”) in the first set of proceedings before the Panel is PrivacyAnywhere Software, LLC, Mikhail Berdnikov of Baikonur, Russian Federation (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987).

1.3 The Respondent (the “Second Respondent”) in the second set of proceedings before the Panel is Winsoul, Inc., Aleksey Atushev, of Baikonur, Russian Federation (Protected Domain Services Customer ID: DSR-2239262).

2. The Domain Names and Registrar

2.1 The disputed domain names <rapidsharefilesdownload.com>, <rapidsharemegaupload.com>, and <rapidsharewarezmegaupload.com> (the “Domain Names”) are registered with Spot Domain LLC dba Domainsite.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. At that time WhoIs details for the Domain Names recorded “Protected Domain Services” combined with an anonymous “Customer ID number” as the registrant of each of the Domain Names.

3.2 On June 2, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 4, 2010, the Registrar transmitted by email to the Center its verification response stating that the registrant of the <rapidsharefilesdownload.com> and <rapidsharemegaupload.com> was “PrivacyAnywhere Software LLC” naming “Mikhail Berdikov” and that the registrant of <rapidsharewarezmagaupload.com> was “Winsoul Inc” naming “Aleksey Atushev”. The contact addresses provided for “Mikhail Berdikov” and “Aleksey Atushev” were different addresses in Russia.

3.3 The Center sent an email communication to the Complainants on June 9, 2010, providing the registrant and contact information disclosed by the Registrar. That email sought to provide guidance to the Complainant as to what it might do in light of the information provided by the Registrar. In particular, it stated as follows:

“The Center notes also that the Uniform Domain Name Dispute Resolution Policy (UDRP) and Rules do not contemplate the filing of a single Complaint against more than one domain name holder (Rules, paragraph 3(c)). Whether to allow the inclusion of additional domain name holders in a Complaint is a matter that would need to be decided by a Panel on the specific request of a Complainant. In order to accept such Complaint and proceed to notify it on the basis of more than a single domain name holder, the Center would typically need to be satisfied that there is at least a prima facie case for consolidation warranting consideration by a Panel. This would typically involve the Complainant putting on at least some argument and supporting material indicating a connection or relationship between the domain names and their listed domain name holders. Even if provided, any final determination would need to be made by the appointed Panel, who may still order the severance of one or more of the named Respondents.

More commonly in such cases, a Complainant would simply request an amendment to the Complaint so as to omit or remove the additional domain name(s) and corresponding domain name holder(s), and file a separate Complaint for each.

Alternately, as the case law in the area of privacy shields and disclosures by registrars of underlying registrants is still developing, occasionally a Complainant has sought to argue that the initially identified registrant of record (typically a privacy provider) should remain the only relevant “Respondent” (Rules, para 1), and that any underlying registrants subsequently identified by the registrar need not be named as respondents in the Complaint. Please note that the Center in no way endorses or advocates the making of such arguments in this or other cases, and that, if made, the Center would in any case nevertheless seek to notify both underlying registrants, and leave the matter for determination by a subsequently appointed Panel.

In light of this, you are invited to file an amendment to the Complaint. With a view to notification of the Complaint and implementation of any Decision under the Policy and Rules, we suggest that any such amendment should at the minimum contain the additional information which has been provided by the Registrar, and address the other matters raised above. Any further determination as to the proper identity of the Respondent(s) will be at the sole discretion of the Panel to be appointed in this case.

We note also that any such amendment may have consequences for mutual jurisdiction and communications, and that the corresponding mutual jurisdiction and communications paragraphs of the Complaint may need to be addressed in any such amendment to the Complaint. You may also consider amending the facts and arguments in the Complaint in light of the above. Any submission by you to the Center as a result of this notice must be signed and should be copied to the Respondent(s) as named therein and the concerned Registrar.”

3.4 The Complainants chose not to amend their Complaint. In correspondence with the Center they alleged that there had been a change in the WhoIs record for the Domain Names that was in violation of paragraph 7 of the Policy and also asserted that the domain names <winsoul.com> and <privacyanywhere.com> that had been identified by the Registrar in contact email addresses for the registrants “both reflect the same address in Colorado that the Respondent shares”.

3.5 In the course of that correspondence the Center also received three emails in the name of Mr Berdnikov. The first of these emails was sent on June 10, 2010 and read as follows:

“Hey! What you mean? What with my 2 domains????????????

Warm Regards-

Mikhail Berdnikov”

3.6 The second of these emails was sent on June 11, 2010 and read as follows:

“Hello

On all three domains no links to rapidshare.com website. And we do not provide search under rapidshare links. We allow downloads only from our site and under our file servers

Also rapidsharewarezmegaupload.com has another owner

Warm Regards-

Mikhail Berdnikov”

3.7 The third of these emails was sent on June 12, 2010 and read as follows:

“Hello

Please provide official rapidshare trademark registration paper. When and where it was it. Not a company registration, a trademark registration!

Warm Regards-

Mikhail Berdnikov”

3.8 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”).

3.9 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010.

3.10 On June 22, 2010, Scott McBreen filed an “Informative Filing” on behalf of “Protected Domain Services” (“PDS”). Somewhat unhelpfully the filing did not disclose the legal status of PDS, but it seems reasonably clear that, if not part of, it has a very close relationship with the Registrar (at one point referring to itself as the “registrar privacy service”). PDS stated that it offered privacy services to registrants and gave an explanation of how that service operated. It denied that it should be treated as a respondent in these proceedings. It also seemed to contend that the Complainants should have modified their Complaint in this case and had failed to “properly” do so.

3.11 In late June early July it came to the Center’s attention that it was not possible to deliver the hard copies of the Written Notice to the Russian addresses provided by the Registrar.

3.12 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 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.

3.13 On July 21, 2010, the Panel having reviewed the case file came to the preliminary conclusion that in light of the registration details revealed by the Registrar for the Domain Names, the proceedings could not continue as a single set of proceedings in respect of all the Domain Names. It issued a procedural order (the “Procedural Order”) inviting the parties’ comments in relation to that preliminary conclusion. It also asked the Complainants whether, if the Panel remained of this view, they wished the proceedings to continue as split proceedings in respect of all of the Domain Names on payment of the appropriate fee and whether they had any objection to the Panel deciding both sets of pleadings. A copy of the Procedural Order is attached at Annex A to this decision.

3.14 The Complainants filed submissions in response to the Procedural Order on July 26, 2010. In that submission, the Complainants made it clear that their primary position was that proceedings should continue against the Registrar and their secondary position was that there was sufficient evidence to show that the persons identified by the Registrar were sufficiently connected to permit the proceedings to continue as a single set of proceedings against both of them. However, they also stated that if the Panel remained of the view set out in the Procedural Order, the Complainants’ preference was that the proceedings continue as split proceedings and that they had no objection to both sets of proceedings being decided by the same panel.

3.15 Neither of the registrants revealed by the Registrar filed any substantive submission in response to the Procedural Order, but on June 26, 2010 the Center received a further email from Mr Berdnikov that read as follows:

“Dear Disputes, Domain,

Please ask domainsite.com for the real owners of claimed domains. Which credit cards was used for buy such domains and under what accounts purchases was made.

Warm Regards-

Mikhail Berdnikov.”

3.16 On June 27, 2010 the Center having conferred with the Panel sent an email to the Complainants copied to the other parties as follows:

“The Panel acknowledges receipt of the Complainant’s Response to Administrative Panel Procedural Order 1. Having carefully considered the Complainant’s submissions, and in the absence to date of any submission by the Respondent(s), the Panel remains of the view set out in the recitals to the Procedural Order. More detailed reasons in this respect will be set out in the Panel’s decision herein in due course. The Panel understands the Complainant’s preference in such circumstances is for this matter to continue as split proceedings as contemplated by paragraph 2(i)(b) of the Procedural Order and subject to consideration of any submission from the Respondent(s) to the contrary intends to proceed on this basis.

The Center hereby invites the Complainant, if it wishes to continue as “split proceedings” as envisaged in the Administrative Panel Procedural Order 1 to make payment of the appropriate filing fee. Assuming no objection from the Respondent(s) is forthcoming, and the same Panel remains in place, and there is no need to conduct a new verification of the Complaint or issue a new Complaint notification,[…] the Complainant is invited to submit […] the appropriate fee in this case. The Panel would have discretion to determine whether to issue two “split” decisions or a single consolidated decision dealing with both matters.”

3.17 The additional fee was paid by the Complainants on July 29, 2010 and the Panel has determined for the reasons set out in detail later on in this decision, to allow these proceedings to continue as two separate sets of proceedings. It has not considered it necessary in the circumstances of this case to invite the parties to file further submissions or to amend their submissions in light of that decision. It has also decided to issue a single consolidated decision dealing with both matters, and this is that decision.

4. Factual Background

4.1 The First Complainant, RapidShare AG is a Swiss Corporation and the Second Complainant is a individual who gives an address in Switerland. The First Complainant was founded in 2006 and supplies file sharing services from the website “www.rapidshare.com”. It claims to be “one of the biggest and fastest one-click hosts in the world” and the “twelfth most visited homepage in the world”.

4.2 The Complainants are the owners of various trade marks that comprise or incorporate the words “Rapid” together with “Share”. They include:

(1) United States registered trade mark no 3313895 in class 42 for the word mark RAPID SHARE in the name of the Second Complainant and filed on September 21, 2005;

(2) Community Trade Mark no 004753828 in classes 24 and 35 for the word mark RAPIDSHARE in the name of the First Complainant and filed on November 21, 2005.

4.3 The Second Complainant has licensed the First Complainant to use his marks.

4.4 For the reasons set out in the Procedural History and Procedural Matters sections of this Decision, the identity of the correct “Respondent(s)” is disputed.

4.5 WhoIs records for the Domain Names suggest that:

(i) <rapidsharefilesdownload.com> was created on November 7, 2009;

(ii) <rapidsharemegaupload.com> was created on May 1, 2008; and

(iii) <rapidsharewarezmegaupload.com> was created on July 3, 2009.

4.6 As at the date of the Complaint the web page operating from the <rapidsharefilesdownload.com> Domain Name took the following form:

(i) There was a search bar at the top of the screen.

(ii) Beneath that was the text “Rapidshare File Downlaod service that crawl internet for download files. No files are stored on our servers, we only link to other content”.

(iii) Beneath that was a list of downloads and number of downloads under the heading “Recent Searches and Files Found”.

(iv) Beneath that in small text “And even more” with links to what appear to be additional downloads.

(v) At the bottom of the page was a copyright notice and disclaimer that read as follows:

“©2010 RapidshareFiles Download

RapidshareFilesDownload is a file search engine but NOT waraz or crack provided. Disclaimer”

4.7 As at the date of the Complaint the web page operating from the <rapidsharemegaupload.com> Domain Name was in a format very similar to that operating from the <rapidsharefilesdownload.com> Domain Name. Differences included the following:

(i) At the top of the page was a banner that read “Rapidshare Megaupload.com”.

(ii) Beneath the search panel was the text “Rapidshare Megaupload. Download service provides links to direct downloads. No files are stored on our servers, we only link to content.”

(iii) The list of additional downloads text was preceded with the words “Related Downloads at Rapidshare Megaupload”.

(iv) The copyright notice and disclaimer read

“©2010 RapidshareMegaupload.com

We are not providers of warez, cracks and serials. Only links to other content.”

4.8 As at the date of the Complaint the web page operating from the <rapidsharewarezmegaupload.com> Domain Name was very similar to that operating from the <rapidsharemegaupload.com> Domain Name. Differences included the following:

(i) At the top of the page was a different style of banner that read “Rapidsharewarez Megaupload.com”.

(ii) The text under the search panel referred to “Rapidsharewarez Megaupload. Download” rather than “RapidshareMegaupload”.

(iii) The list of additional downloads text was preceded with the words “What users are currently downloading”.

(iv) The copyright notice and disclaimer at the bottom of the page referred to “Rapidsharewarezmegaupload.com” instead of “RapidshareMegaupload.com”.

5. Parties’ Contentions

A. Complainants

5.1 The Complainants contend that the Domain Names are confusingly similar or identical to their trade marks. The Domain Names are said to incorporate the Complainants’ marks in their entirety with the addition of “generic elements” that do not distinguish the Domain Names from the marks.

5.2 The Complainants deny that the Respondent (which it contends to be the Registrar / PDS) are operating any bona fide or legitimate business. It claims that the Respondent is using the Domain Names “to drive Internet traffic to websites, each of which provides a search engine designed to assist web users who wish to violate the copyrights of other by locating and sharing copyright protected documents online”. It is claimed that such “illegal use of another’s trademark cannot be considered a ‘bona fide’ or ‘fair use’”. The Complainants confirm that it has not authorised the use of the Domain Names and contends that the registrant of the domain names are not known by the names “rapidsharefilesdownload.com”, “rapidsharemegaupload.com” and “rapidsharewarezmegaupload.com”.

5.3 On the question of bad faith the Complainants claim that the Respondent is located in the United States and thereby has actual or constructive notice of the Complainants United States trade mark (citing XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467). It also claims that since the Domain Names are “nearly identical” to the Complainants’ RAPID SHARE mark and have been used in conjunction with related services, this indicates that the “Respoindent knew of [the] Complainant at the time of registration of the [D]omain [N]ames”. It also contends that such use is use in bad faith.

5.4 The Complainants contend that the Respondent is using the Domain Names to enable copyright infringement of third party-owned copyright materials. It claims that such a use is in violation of established public policy, cannot give rise to a claim of bona fide use and must therefore be a bad faith use of the domain name. It cites in this respect Hoffman-La Roche Inc. v. Domain Ownership Ltd, WIPO Case No. D2007-0891.

B. Respondent(s)

5.5 No substantive response has been filed by any Respondent.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.

6.2 Notwithstanding that default, it remains incumbent on the Complainants to make out their case in all respects under paragraph 4(a) of the Policy. Namely the Complainants must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and

(ii) the Respondent(s) have no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 The Panel will address the three aspects of the Policy listed above in turn. However, before it does so it is necessary to address in some detail the procedural issues that have arisen in this case. In doing so it proceeds on the basis that the close relationship between PDS and the Registrar already described is such that they can for all practical purposes be treated as one and the same entity. References to the Registrar in the rest of this decision should be understood accordingly.

A Procedural Issues

Privacy Services and the UDRP

6.5 This is another one of those cases, now all too frequent, in which the Panel has had to deal with the difficult issues that can arise when UDRP proceedings are brought in respect of domain names where the underlying registrant has taken advantage of a privacy service operated or endorsed by a registrar.

6.6 Privacy services are now very common. It is something that the Registrar has commented upon in the various Informative Submissions that it has filed in the present proceedings. Given the Complainant’s allegations in this case the Panel considered it appropriate to take notice of those submissions and they contain some interesting material. For example, reference is made to “ICANN’s Study on the Prevalence of Domain Names Registered using a Privacy or Proxy Service among the top 5 gTLDs, study based on data from March 2009” that is said to show that these services are used by about 25% of domain holders.

6.7 The difficulty is that, notwithstanding their prevalence, ICANN has to date made little progress in trying to address the difficulties that arise by reason of their use. As this Panel stated in Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, WIPO Case No. D2009-1657:

“6.10 The issues surrounding the offering of WhoIs privacy services are complex and controversial. The Panel understands, for example, that in due course ICANN will at some point in the future be releasing an “RFP for a third WHOIS study area on Proxy and Privacy services”. For present purposes it is sufficient to record the fact that notwithstanding that these services are now de facto offered by a number of registrars, no express provision for them in the Registration Accreditation Agreement (“RAA”) that governs the relationship between ICANN and registrars. At times the two are difficult to reconcile.”

6.8 It is not just the RAA that is problematic. At the time that the UDRP was drafted, privacy services did not exist and once again the status of these services and in what way they should interact with the UDRP is unclear.

6.9 Registrars operating such services have for the most part denied that they should be treated as the respondent in UDRP proceedings. Instead, a series of practices have developed amongst the more reputable operators of such services so as to limit the extent to which those services can be used to frustrate the proper operation of the Policy. One of these is that a privacy service provider will usually disclose the underlying registrant of a domain name when it receives an email verification request sent from the Center (or other domain name ADR provider) after receipt of a complaint.

6.10 The importance of this practice was commented upon by the Panel in the Four Seasons Hotels Limited case supra. In particular the Panel stated:

“6.17 From a practical perspective it is important that those who offer WhoIs privacy services operate in this way. A refusal by a registrar to disclose to a requesting Policy provider the underlying owner or holder of a domain name (and their contact details) hidden behind a “privacy service” in proceedings under the Policy, involves a potential threat to the operational integrity of the Policy. Registrars who operate in this fashion potentially provide a tool that enable cybersquatters to conduct their activities in secrecy and to help them avoid the extent of their abusive activities becoming public; thereby depriving complainants, potential complainants and panels with information that is potentially highly relevant to the assessment of abusive behaviour. For a registrar to participate in facilitating or aiding these activities risks undermining the operation of the Policy. For the reasons already given, the Panel considers this to be contrary to the provisions of the Policy. It is undoubtedly contrary to its spirit.”

6.11 However, these sorts of sensible practices are not expressly mandated by the UDRP.

6.12 In the present proceedings, there is no suggestion that the Registrar has refused to disclose the underlying information in its possession. Information as to the underlying registrant was provided to the Center in response to the registrar’s verification request. Indeed, the Registrar goes further. In its original Informative Submissions it also contends that if the Complainants had approached it prior to the filing of the Complaint, the information would have also been disclosed.

6.13 Instead, the Complainants launch a more fundamental attack on the Registrar. It claims that it can and should be treated as the true respondent in these proceedings and should be branded a cybersquatter as a consequence. This is robustly denied by the Registrar who in turn demands that the name of the Privacy Service be removed as a named respondent from the Complaint.

Procedural significance of naming the “right” Respondent

6.14 The question of who is formally named in the Complaint, is, in the view of the Panel, in reality not that significant in this case. This is an issue that was addressed at length by the Panel in the decision of Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886:

“5.5 There is a possible argument that the very question of who is the party against whom the proceedings have been brought is misconceived and imports into proceedings under the Policy concepts from inter partes court proceedings that may be unhelpful. If correct, what is important here is that proceedings are brought in respect of the Domain Name and that the procedures are then followed to ensure that the person or persons who are reasonably identifiable as having an interest in that name are properly notified. [Footnote: “If a parallel is sought in national legal proceedings for this approach, an obvious one here is proceedings in rem.”]

5.6 In any event, the starting point for assessing what is meant by the term “Respondent” is obviously the Policy and the Rules. The term “Respondent” is not defined in the Policy. The “Respondent” is defined in the Rules as “the holder of a domain-name registration against which a complaint is initiated”. However, the Rules contain no definition of who is “the holder of the domain-name registration” for these purposes.

5.7 The sole provision that can be said to place an obligation on a complainant to identify a respondent is to be found in paragraph 3(b)(v) of the Rules. This provides that a complainant shall:

“Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a).”

5.8 There is, however, nothing in the Rules that prescribes how a respondent is identified in a complaint. Whilst it is customary that a complaint begins with a heading that identifies a complainant and a respondent (see, for example, the model complaint available from the WIPO website), in the opinion of the Panel this heading has no legal significance. Whilst it might be said that there is an obvious practical advantage in the name of the “true” respondent being identified in the headings of the documents filed by the parties and in any decision issued by a panel, this is ultimately an issue of administrative convenience only. So for example, if in the view of a panel or a Provider that the “wrong” respondent is identified in the heading of the complaint, it does not necessarily follow that the proceedings should be rejected as invalid as having been brought against the “wrong” person [Footnote: “Of course if a complainant has misidentified who it considers to be the person who in reality has control of the domain name in issue, it may be that its arguments as to abuse are ill founded and will not prevail. However, that is quite a different matter”.]

5.9 So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned.

5.10 Any other interpretation of the Rules may lead to ridiculous results. For example, let us say that the registration details for the domain name record the registrant as “Mickey Mouse”. It will be clear in such a case that this is highly unlikely to be the true name or identity of the person who “owns” or “controls” the domain name. If there is a requirement that the “true” owner is identified and the “true” owner is not known to the complainant, then essentially a complainant will have no recourse under the Policy or the Rules and this cannot be what the framers of the Rules or Policy intended. There are also many cases where panels have held that proceedings had been validly commenced against respondents identified in the relevant Who-Is register. Examples include, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683, Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, Schomburg GmbH & Co. KG v. aquafin.com, c/o WHOIS Identity Shield, WIPO Case No. D2006-1136.

5.11 The Panel understands that upon receipt of a complaint, it is the practice of the Center to send an email to the relevant registrar seeking (among other things) confirmation that the respondent is correctly identified. If the registrar in its response to that email identifies some other person or entity as the respondent then the usual practice of the Center is to inform the complainant of this fact and to invite it to amend its complaint accordingly. This is clearly a sensible practice. It may be that the complainant has made an error in his complaint or it may be that after drafting the complaint but before the complaint is sent to the Center, the name of the recorded registrant changes. Further, it is increasingly common for the identity of the true owner of the domain name to be masked by a “domain name privacy service”. In such cases, registrars in response to a verification request will often reveal to the Center who they believe the “true owner” to be. That information may be of crucial significance to the complaint. In such cases, it is, therefore, not unreasonable that a complainant be given an opportunity either to correct its complaint or make amendments to reflect the new information provided.

5.12 However, in some cases there will be little point in requiring or suggesting that a complainant amend its complaint upon receipt of such information. As this Panel has noted above, while accuracy is clearly desirable from a clerical perspective, there is in itself no legal significance in the name given in the heading of a complaint. Further, where it would appear that the recorded registrant of the domain name has clearly changed from one pseudonym to another after the filing of the Complaint (let us say in the “Mickey Mouse” example given above, the registrar informs the Center that the domain name is registered in the name of “Donald Duck”), requiring a change of name in the Complaint would be unlikely to bring any real practical or administrative convenience as the “respondent” will not be identified with any greater precision as a result.

[...]

5.15 The Panel accepts that there is a counter argument to the reasoning set out above. It might be said that even if paragraph 3(b)(v) of the Rules merely compels a complainant to identify in its complaint the entity named on the register, then the point at which the register is to be considered for this purpose is when the “proceedings commence”. It is then argued that paragraph 4(c) of the Rules provides that proceedings are commenced, not on the date that the Complaint is received by the Center, nor when the Center sends its verification email to the Registrar, but rather when the Center has held a complaint to be administratively compliant and proceeds to formally notify it on that basis.

5.16 However, in the opinion of the Panel this is not correct. Whilst proceedings may not be formally commenced under paragraph 4(c) until the date upon which the complaint is deemed compliant and formally notified, the Rules also provide that proceedings are “initiated” by submitting a complaint to a Provider (see paragraph 3(a) of the Rules, and possibly also the definition of Respondent in paragraph 1). Accordingly, it would appear that a majority of panels have stated that proceedings can be considered to be “pending” from that earlier date. The fact that proceedings can be “pending” before they are formally “commenced” is important because paragraph 8(a) of the Policy makes it clear that a domain name cannot be transferred “during a pending administrative proceeding”. For examples of the cases in which this approach has been followed and in some of which the relevant reasoning is set out in greater detail, see Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292; Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc., WIPO Case No. D2001-0732 and Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Microsoft Corporation v. WDW Inc. and William Claude Dukenfield, WIPO Case No. D2002-0412 and L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585.”

6.15 So to summarise, from a purely procedural perspective, it is not particularly significant who is named as a respondent in the heading of a complaint. Further, a complainant will also usually satisfy its procedural obligations under the Policy by identifying as the “respondent” the person or persons named in the publically available WhoIs register at the time that the Complaint is filed with the Center. Further, although a sensible practice has evolved in cases where a domain name is registered in the name of a privacy service and the privacy service operator has revealed the underlying registrant, of the Center bringing that information to the attention of the complainant and giving the complainant an opportunity to amend its complaint accordingly, there is no obligation on a complainant to do so. In the Mrs. Eva Padberg case supra the question was whether the complainant was required to change the name of the respondent in circumstances where the name revealed was obviously a false one. However, as a matter of principle there seems to be no good reason to be found in the Policy or the Rules as to why amendment should otherwise be required, provided that the complaint accurately reflected the WhoIs details publically available at the time that the complaint was lodged at the Center (and subject to the obligations of additional disclosure imposed by paragraph 3(b)(v) of the Rules).

6.16 It is for that reason that the Panel rejects the Registrar’s contention that the Complainants “ought” to have amended the Complaint when the underlying registration details were provided to it. The Complaint from a procedural perspective was correctly filed and could quite properly progress without amendment.

Substantive significance of naming the “right” Respondent

6.17 Of course, procedural compliance is not the end of the matter. Who exactly is to be treated as the correct “respondent” for the purposes of the complaint still can be a matter of significance. It is against that person that the question of rights or legitimate interests must be judged and the question of bad faith must be assessed. That is why in the words of this Panel in the Mrs. Eva Padberg case supra, disclosure of the identity of the underlying registrant may be of “crucial importance”. It may lead a complainant on a train of enquiry that reveals further information and evidence that is directly of relevance to these issues.

6.18 That said, who is named as the formal respondent in proceedings in practice often does not really matter. The reason for this is the motives and interests of the person who de facto controls the domain name and has been responsible for its registration that will usually be significant when addressing issues under the Policy. Take for example the position of an agent who has registered a domain name in his name on behalf of another. If the person actually controlling the domain name registered that domain name in bad faith, it is no answer to this that the named agent had no knowledge of a complainant’s mark and so far as he alone was concerned had acted in good faith. To hold otherwise would drive a coach and horses through the operation of the Policy. In such circumstances the knowledge of the principal is to be imputed to the agent. There is no reason why a privacy service should be treated in different way to any other agent in this respect.

Dealing with Multiple Respondents

6.19 Nevertheless procedural difficulties still remain. One of these arises directly in the present proceedings. That is the question as to what is the correct procedure where proceedings have been commenced in relation to multiple domain names registered with a single privacy service that in response to a verification request reveals that there is more than one underlying registrant.

6.20 This issue of multiple respondents recently came before the Panel in Accor v. Jose Garcia, Jan Cerny, N/A,Dopici Nasrat, WIPO Case No. D2010-0471. In that case the Panel stated:

“4.2 The starting point is that normally it is not possible to commence a single UDRP proceeding in relation to domain names registered in the name of more than one person. Paragraph 3(c) of the Rules state that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”, and although this is permissive rather than a proscriptive provision, the intent of the drafters of the Rules seems reasonably clear. So in a case where a complaint is filed against multiple unconnected respondents, a panel may continue that case against one of the respondents and dismiss it against the others (see for example The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005 1132). [Footnote: “With respect to consolidation of multiple domain names and respondents under the Policy, where there is an element of connection and common control, see also the learned panellist discussion in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281”.]

4.3 However, in considering whether there are multiple respondents, what is important is the identity of the registrants at the date that the complaint became “pending”. The reason for this is that under paragraph 8(a) of the Policy a domain name cannot be transferred “during a pending administrative proceeding” and as a consequence any change in registration details after that date can be disregarded. In the opinion of the Panel and for the reasons given in detail in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886, a case is pending as soon as it has been “initiated” by a complainant; i.e. when a complaint has been sent to an ADR Provider (see paragraph 3(a) of the Rules). Alternatively, it becomes pending at the very latest when a registrar has been notified of the existence of the complaint.

4.4 Further, if a panel considers that notwithstanding any change in registration details the relevant domain names are in fact controlled by the same person or persons, the proceedings can still continue (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services PVT. LTD., Laksh Internet Solutions Private Limited., Pluto Domain Services Private LTD., Compsys Domain Solutions Private Limited, supra).”

6.21 So there are two questions that must be addressed in this case. The first is whether the fact that at the time the proceedings were commenced the WhoIs register recorded the same privacy service as the registrant of the Domain Names means that the case can be treated as proceeding against a single Respondent. The second is whether, regardless of the details recorded on the register, the domain names are de facto controlled by the same entity. It is convenient to deal with the issue of common control first.

Is there common control?

6.22 The Complainants contend that the Domain Names are in fact controlled by the same entity. The Panel accepts that there are a number of common features of the two sets of registrations that are at the very least highly suspicious. They include:

(i) the use of the same Registry and privacy service;

(ii) the fact that both registrants are located in Russia (albeit with different addresses);

(iii) the similarity of the Domain Names and the <rapidsharemegaupload.com>, and <rapidsharewarezmegaupload.com> Domain Names in particular;

(iv) the fact that all the Domain Names are being used for the same purpose; i.e. the promotion of file sharing;

(v) the text on the web pages operating from the <rapidsharemegaupload.com> and <rapidsharewarezmegaupload.com> Domain Names.

6.23 The last of these five factors is by far the most compelling. Identity of registry and privacy service was considered insufficient in Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti, WIPO Case No. D2006-0465 and might come about quite innocently. In this Panel’s view, the fact that both registrants are located where they are (assuming these are true addresses) is not particularly surprising if as the Complainants contend the registrants are offering downloads that infringe the rights of others. The common features of the Domain Names again are not particularly telling, given the registrant’s activities. The provision of the same sorts of service is also not that surprising given the nature of the Domain Names themselves.

6.24 However, the fact that common text is to be found on the web pages operating from the <rapidsharemegaupload.com>, and <rapidsharewarezmegaupload.com> domain names is of a very different character. The Panel accepts that this is unlikely to have come about by accident and it shows that there is some sort of connection between the registrants. If they are not the same person, then the only credible explanation of these similarities is that the text came from a common source or the operator of one of the sites has copied the text from the other.

6.25 Against that there are to be set the comments of Mr Berdnikov. It is rare that a registrant in a case such as this will participate in the UDRP proceedings. The comments of Mr Berdnikov do not amount to a proper response and as a consequence the Panel has necessarily approached them with a high degree of scepticism. But the fact that Mr Berdnikov has asserted that he owns only two of the Domain Names is not something that the Panel is minded to ignore. Further, there is the request in the last of his emails to the Center:

“ask domainsite.com for the real owners of claimed domains. Which credit cards was used for buy such domains and under what accounts purchases was made”.

Again, this is not the sort of request that a person trying to hide ownership of his domains is likely to make.

6.26 Ultimately, and admittedly with some hesitation, the Panel has reached the conclusion that there is insufficient evidence before it to decide the issue of common control in the Complainants’ favour. For the avoidance of doubt, the Panel is not deciding that the Domain Names are actually held by two separate registrants. It is that regardless of the true position, the Complainants have failed sufficiently to satisfy the Panel that they are under the control of a single entity.

Does commonality of privacy service mean there is a single Respondent?

6.27 In light of that finding the Panel comes to the central procedural issue in this case. Is the fact that at the time of commencement of proceedings the recorded registrant in respect of all of the domain names was the same privacy service, nevertheless sufficient to allow the proceedings to proceed as a single set of proceedings in respect of all of the Domain Names?

6.28 It is clear that in Boehringer Ingelheim Pharma case supra the panel believed the answer to that question to be no. The domain names in that case were registered with the same privacy services that then revealed two different underlying registrants for the domain names. The panel decided to proceed in relation to the domain names controlled by one registrant and the others were “dismissed from this proceeding without prejudice [to the filing of a future complaint]”. It is a decision that has been cited in a number of other cases without adverse comment (see for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834).

6.29 The question was also considered by the Panel in Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services Pvt. Ltd., Laksh Internet Solutions Private Limited., Pluto Domain Services Private Ltd., Compsys Domain Solutions Private Limited, WIPO Case No. D2008-1675. In that case the Panel stated as follows:

“6.14 …. It cannot be the case that a complainant can bring a complainant in relation to a number of domain names against a number of registrants where there is no plausible connection between the registrants. To join together what are in reality separate proceedings against separate parties into a single complaint merely because each involve the same complainant is essentially an abuse of the Policy. It risks placing an unfair burden on what may be wholly unrelated registrants to answer what are in reality separate complaints, and on panelists who are engaged on a fixed fee basis in accordance with the scale set out in Annex D to the Supplemental Rules. Therefore, if it is to be allowed at all, some further connection between the registrants is required [...]

6.15 This still leaves open the question what is the correct approach where the same WhoIs privacy service entries are provided in relation to different domains. The Policy and Rules were drafted at a time that these services did not exist, and neither the Policy nor the Rules were drafted with these services in mind. It has been argued that the legality of these services is questionable given the obligation of registrars under paragraph 3.3 of the ICANN Registration Accreditation Agreement (the “RAA”). However, that is not an issue on which this Panel is minded to comment in this case. Whatever the legitimacy of such services, the reality is that they have proliferated. These services are, for good or ill, now a widely established feature of domain name registration services and panels are required to deal with the consequences of this so far as the operation of the Policy and the Rules are concerned.

6.16 One of the difficulties caused by these services is that where a potential complainant believes that multiple abusive domain names have been registered with a single service, it cannot from the WhoIs record tell in advance how many entities are behind these domain names and therefore the number of complaints it may need to file. A complainant cannot be criticised in such a case for filing a single set of proceedings with the Center against the WhoIs privacy service. Indeed, it may in practice have little choice but to do so in order to facilitate access to the identity of any “true” underlying registrant. But then what should the Center, panel, and complainant do where, as here, the registrar in response to the Center’s verification request reveals different registrant details for different names?

6.17 The Center’s typical position in such circumstances was briefly summarized in its email of November 12, 2008. In short, it left it to the Complainant to make certain choices and to the Panel to make certain determinations, but noted that if the Complainant chose to proceed with a single Complaint and the as yet unappointed Panel held that there was no connection between the registrants, the Panel might elect to proceed in respect of one domain name only. It therefore invited the Complainant “to file an amendment to the Complaint or, if no common link between the four entities is found, amend this Complaint and file separate Complaints as determined to be appropriate [by the Complainant]”.

6.18 The Complainant in this case contends, citing Covanta Energy Corporation, supra, that the proceedings should proceed with both the privacy service and the revealed registrants listed as Respondents.

6.19 The Panel accepts that in the Covanta case the panel proceeded on the basis that the privacy service and the individual disclosed in response to the Center’s verification request should be jointly treated as the respondent. Indeed, it is fairly common practice in proceedings where a registrar reveals the “true” registrant behind the privacy service, for both the privacy service and the revealed registrant to be named in the heading of the proceedings. [Omitted footnote]

6.20 Nevertheless, as is explored in Mrs. Eva Padberg, supra, the Panel believes that the heading used in proceedings under the Policy is simply a matter of administrative convenience. Further, whilst the Panel in Covanta reached its conclusions as to who was the respondent given a consideration of paragraph 1 of the Rules, the question of whether an entity has been correctly named as the respondent for the purposes of the filing of a complaint and what is the entity against whom the assessment of rights or legitimate interests and bad faith is to be judged, are not necessarily the same thing.

6.21 The Complainant may not disagree with any of this and its point is perhaps somewhat more straight forward: i.e., if it was legitimate (or at least no criticism can be levelled against the Complainant) to have filed a single set of proceedings in relation to all of these Domain Names because the same entity was recorded in the Registrar’s WhoIs database at the time of registration, why should it be forced to start its proceedings again with all the associated delay that this involves because when any “true” registration details are revealed these indicate what may be different entities behind the registrations?

6.22 In the Panel’s opinion this is a powerful point [Footnote: “And the Panel also notes that to force a complainant to accept that the revealed registrants be treated as the “true” respondent for the purposes of the proceedings raises difficult questions as to how mutual jurisdiction should then be assessed in accordance with paragraph 1 of the Rules”]. But similarly, it is also unfair to genuinely unrelated “true” registrants to require them to participate as co-respondents in a single consolidated proceeding, or to expect a panel to have to decide in single case what are essentially multiple proceedings.”

6.30 In the Western Union Holdings, Inc case supra the Panel did not need to come to a concluded view on these issues since it decided as a matter of fact that the respondents were in fact connected. In this case, in light of its decision on common control, that is necessary.

6.31 Ultimately, this Panel is of the view that the correct approach is to follow the decision in Boehringer Ingelheim Pharma case supra. If where a domain name is held by an agent it is legitimate to consider the issue of rights and legitimate interests and bad faith of a respondent by reference to the motives and intentions of the person on behalf of whom that domain name is held, then logically it seems sensible to limit proceedings to the respondent in that sense. As was noted in Western Union Holdings, Inc case supra, if proceedings were allowed to continue in such circumstances, it opens up the prospect of a single set of proceedings being allowed to transform into what are in reality multiple proceedings against multiple parties. The UDRP is simply not designed to cope with this.

6.32 It is admittedly not a perfect solution. It means for example that “Respondent” potentially has a different meaning in different parts of the Rules depending on the context in which it is used. In this Panel’s view, it would be far better if ICANN were to take the bull by the horns and expressly set out the extent to which such services are or are not legitimate, and if legitimate to describe the obligations placed upon them where proceedings have been commenced under the Policy. However, in the absence of this, the Panel believes that the approach it has adopted involves the most sensible interpretation and application of the Policy and Rules in their current form.

Mitigating any unfairness to the Complainants

6.33 Although the Panel considers this to be the correct approach, the Panel is also conscious of its potential unfairness to the Complainants. It has considerable sympathy with the position in which the Complainants find themselves. When they commenced these proceedings, they could not tell whether they were dealing with a single underlying registrant or many. The Panel notes that in this case the Registrar publically associated a Customer ID number with each of the Domain Names. However, as three different numbers were provided in this case, it appears that the numbers are unique to each domain name rather than unique to each customer. The numbers would not have helped the Complainants determine how many underlying registrants they were dealing with.

6.34 The Registrar contends that if it had been approached in advance, it would have revealed the registrant details to the Complainants. That may well be so, but there is no express provision in the Policy or Rules for such disclosure and although it may be in a registrar’s interests to act in this manner (particularly in light of paragraph 3.7.7.3 of the RAA), there is no guarantee that a registrar will respond sensibly to such a request. Further, there is no guarantee that an underlying registrant will not be informed about such a request and that may in certain circumstances expose a potential complainant to increased risk of cyberflight.

6.35 As is reflected by the panel’s decision in the Boehringer Ingelheim Pharma case supra, the usual practice where a panel decides that it cannot continue proceedings in relation to multiple respondents is that the proceedings are in part dismissed without prejudice to the complainant’s ability to commence fresh proceedings. However, that is not without its own difficulties and expenses. A complainant must incur the fresh expense of preparing a fresh complaint as well as pay a fresh fee. There is also the risk that the protection offered by paragraph 8(a) of the Policy will fall away until a fresh complaint is filed, with risk of cyberflight. The need to repeat the procedural processes involved in a fresh complaint will also result in further delay in resolution of the matter.

6.36 For these reasons this Panel went on to state in the Western Union Holdings, Inc case supra:

“6.23 Perhaps in such a case the complainant may not necessarily be required to commence fresh proceedings, and the Panel could direct that upon the payment of appropriate additional fees, the matter could be subdivided into “split” proceedings with each referred to a different panelist or panelists. This approach might have the advantage of allowing the matter to proceed relatively rapidly. It would allow for continuity of “pending” proceedings under paragraph 8(a) of the Policy, and (depending on the circumstances of the case) there might not be the need for the parties to file fresh submissions. However, it is an approach that would require a wide reading of the powers granted to the Panel under paragraph 10 of the Rules and/or the agreement of the complainant pursuant to paragraph 19(d) of the Rules.”

6.37 That possibility was put to the parties in the Procedural Order and the Complainants expressed their willingness if the Panel decided that proceedings could not progress as single proceeding on some other grounds, to proceed in this manner. It is also the case that none of the parties despite being expressly invited to do so, has raised any objection to the split proceedings both progressing together before the same Panel. In the circumstances, the Panel believes that the present case can and should proceed together as two set of proceedings.

Registrar Conduct

6.38 Finally, it is necessary to make a few brief comments on the issue of the Registrar’s conduct. As has already been explained many of the Complainants’ contentions in this case are directed to the Registrar. It is said to be responsible for these domains. As the Complainants put it in their submission in response to the Procedural Order:

“Neither the “privacy service” nor the registrar(s) in this matter are innocent third party bystanders. They have made money off of this registration and have economic incentives for title to the domain name to be confused”.

6.39 There may well be cases where a registrar is so directly bound up in the activities of cybersquatters that the registrar’s conduct is the subject of censure. That may take the form of activity that undermines the effective operation of the UDRP or the willful turning of a blind eye to cybersquatting activity on as significant scale.

6.40 In such cases a panel’s recourse is limited, but it is able to bring that activity to the attention of ICANN to conduct such investigation and to take such steps as it considers appropriate (see the analysis of the case law in this respect in Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, WIPO Case No. D2009-1657).

6.41 However, in the present case there is no material before the Panel to suggest that the Registrar has been directly involved in any of the wrongful activity alleged, beyond providing common registrar and privacy services to two registrants. The Complainants contend that by changing the WhoIs details for the Domain Names the Registrar has breached paragraph 7 of the Policy requiring ICANN accredited registrars to maintain the status quo. They might perhaps also have argued that the change in details was an improper transfer contrary to paragraph 8(a) of the Policy. But essentially that depends upon what is meant by the “status quo” and “transfer” where such a service is being used.

6.42 Ultimately, the Panel considers it unnecessary to comment further on these issues. As matters presently stand and on the arguments before it the Panel does not believe there is any evidence to suggest direct cybersqutting or wrongdoing on the part of the Registrar so far as the Domain Names are concerned. If the Complainants believe that the provision of privacy services is wrongful per se and/or for policy reasons should not be permitted, it is not alone in this view. However, the Panel declines to rule on these issues in the context of this case. It is a matter that is better taken up separately with ICANN in the context of any review of these services.

6.43 Having reached these procedural conclusions, the Panel now finally turns to the substance of the Complainants’ case.

B. Identical or Confusingly Similar

6.44 The Panel accepts that the Complainants are the owner of at least two word trade marks for the words “Rapid” and “Share” together.

6.45 In the case of the proceedings against the First Respondent, the Domain Names can only be sensibly understood as a combination of the words of the Complainants mark combined with the words “download” and “mega upload” and the “.com” TLD. These additional words have a descriptive content with obvious associations with the activity of file sharing. In the circumstances, the Panel has little difficulty in concluding that the Complainants have shown that the Domain Names of the First Respondent are confusingly similar to trade marks in which the Complainants have rights. They have therefore made out the requirements of paragraph 4(a)(i) of the Policy against the First Respondent.

6.46 In the case of the Second Respondent the Domain Name also contains the term “warez”. The Panel understands the term warez primarily to refer to the trading or dealing in copyrighted works in violation of copyright law¹. So once again there are obvious associations with file sharing. That addition therefore makes no difference. The Domain Name of the Second Respondent is confusingly similar to trade marks in which the Complainants have rights. They have therefore also made out the requirements of paragraph 4(a)(i) of the Policy against the Second Respondent.

C. Rights or Legitimate Interests

6.47 The Complainants contend in this case that all the Domain Names are being used in the same way. In particular they contend that the Domain Names are all being used for websites that promote illegal file sharing. Leaving to one side the issue of the alleged illegal nature of this activity (a point to which the Panel will return on the issue of bad faith), the Panel accepts on the evidence before it that this is indeed the case. However, that the Domain Names might be used for file sharing purposes is unsurprising given their potentially descriptive content of the words “rapid” “share” “files” “upload” and “download” to be found in the Domain Names.

6.48 If a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

6.49 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; are the Respondents using the Domain Names with the Complainants’ marks in mind and with a view to taking unfair advantage of the reputation of those marks?

6.50 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Names have indeed been registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainants’ trade marks. In the circumstances, the Panel finds that each of the Respondents has no right or legitimate interest in the Domain Names. Accordingly, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy in both sets of proceedings before the Panel.

D. Registered and Used in Bad Faith

6.51 Notwithstanding the potentially descriptive elements of the Complainants’ marks, the Panel has reached the view that the Domain Names in this case were registered by each of the Respondents’ (whomever they may actually be) with knowledge of the Complainants’ marks and with an intention to take unfair advantage of a confusion between those marks and the domain names to draw Internet users to their websites. This is registration in bad faith.

6.52 First, there is the marks themselves. Obviously the terms “Rapid” and “Share” are ordinary English words and it is possible to conceive of circumstances where they might each be used generically in connection with the provision of file sharing circumstances. Nevertheless their immediate juxtaposition is not a common one.

6.53 Second, the Panel is persuaded by the Complainants’ contentions as to the extent of its worldwide activity and reputation. There is no independent evidence before the Panel to support those contentions, but the Panel sees no reason to do anything but to take at face value these statements in the absence of any argument or evidence to the contrary from the Respondents.

6.54 Third, there is the fact that the Respondents themselves appear to be engaged in the provision of file share services. Again in the absence of evidence to the contrary, it seems improbable that the Respondents were not aware of the Complainants’ pre-existing business activities at the time that the Domain Names were registered. In the circumstances, the Panel has reached the view on the balance of probabilities that the domain names were registered with at least knowledge of the Complainants’ use of the term “Rapid Share” in a trade mark sense.

6.55 The Panel’s finding is one of actual knowledge. The Complainants contend that this is a case where “constructive knowledge” might be found, but the Panel is unconvinced that this doctrine is that useful in the UDRP for the reasons set out in ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346 and Henkel KGaA v. Mr. Augustin Sbinta, WIPO Case No. DRO2008-0003.

6.56 There are also a number of other factors that point to bad faith in this case. One is the Complainants’ uncontested assertion that the operators of the websites are engaged in the wide scale promotion of copyright infringement through the sharing of copyright protected files. Indeed, in the case of the <rapidsharewarezmegaupload.com> Domain Name and given the meaning of the word “warez” this seems to be advertised in the Domain Name itself.

6.57 In support of the claim that this supports a finding of bad faith, the Complainants rely upon the decision in Hoffmann-La Roche Inc. v. Domain Ownership Ltd, WIPO Case No. D2007-0891 where the Panel took “judicial notice of the fact that the Respondent may be encouraging potential users of the Product to violate public policy of the United States of America”. In the Panel’s opinion this is not the best authority for the point that the Complainants are making in this case. The Hoffmann-La Roche Inc. case cited by the Complainants is one of a very large number of cases where pharmaceutical companies have objected to a domain name that incorporates a trade mark for one of their prescription products being used for no-prescription sales over the Internet. A common argument of complainants in such cases is that the sales themselves are unlawful and that this is relevant to the bad faith assesment. The Panel when faced with a similar argument in Sanofi-aventis v. M72 Hosting, WIPO Case No. D2007-1937 stated as follows:

“6.23 In coming to this conclusion the Panel (in common with its decision in Sanofi-aventis v. Rx World, Nils Bor, WIPO Case No. D2007-1773) has not taken notice of the assertions by the Complainant that those reaching the website will believe that “Acomplia medicine is available in all countries without any medical control” and that “the redirection of internet users to on-line pharmacies selling pharmaceuticals such as Acomplia without requiring proof of a physical examination by an authorized doctor, is potentially harmful to the health of internet users.

6.24 It might be said that this is not much more than assertion on the part of the Complainant. However, there is a far more fundamental point here. The UDRP procedure is not a procedure that is intended generally to police alleged wrong doing on the Internet. It is instead primarily directed at the misuse of a name or mark in which a complainant has developed or acquired rights. It is not designed for, or well equipped to deal with, broader disputes. There may perhaps be cases where the activity operating form a domain name is so obviously unlawful that this is a factor that may be taken into account when assessing bad faith. However, this Panel suspects that in most cases it will be possible to reach a finding of bad faith without the need to rely upon such reasoning.

6.25 The issue of the sale of prescription medicines on the Internet and the extent to which individuals should be allowed to directly purchase such products is one that raises a range of policy issues that include the imposition of suitable measures for the protection of public heath, the protection of intellectual property rights, and drug company pricing practices. It is an area where national laws can vary. This Panel would suggest that this is a debate in which UDRP panels should be reluctant to become involved, even if that involvement is only peripheral.

6.26 This Panel notes that compliance with US Food and Drug Administration and other health authority laws and regulations seems to have been a factor that was taken into account in the decision in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794. However, when one reads this decision, it is clear that the panel was both prepared and able to come to a finding of bad faith quite independently of the issue of regulatory compliance. This was so in the Panel’s recent decision in Sanofi-aventis v. Rx World, Nils Bor, WIPO Case No. D2007-1773 and is also so with the case now before this Panel.”

6.58 Similarly, an assessment of whether the content of a particular website infringes the copyright of either a complainant or some third party is unlikely to be that useful (see, for example, the reasoning and cases referred to in Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260).

6.59 However, there are occasions where a respondent’s activities are so obviously unlawful or show such a casual disregard for the intellectual property rights of others that it is a factor that can be taken into account when assessing a registrant’s motivations when it comes to the registration and use of a domain name. The two sets of proceedings now before the Panel are of this type.

6.60 Another factor that provides some support to a finding of bad faith is the use by the Respondents of privacy services to disguise their identities. Whilst the use of Privacy Services does not by itself show bad faith, it can point in that direction. This is particularly so where claims that this has been done to avoid unsolicited emails and the like are unpersuasive or where this forms part of a broader strategy of disguising one’s identity (see for example Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015). In this case, it would also appear that both of the addresses provided once the privacy shield was removed, were false or incomplete. Certainly, they were insufficient to permit the Center to deliver hard copies of the Written Notice to the Respondents.

6.61 The Panel suspects that the reason why the Respondents are trying to hide their identities may have more to do with the activity being promoted on their websites than a wish to frustrate proceedings under the Policy. Nevertheless is it something that the Panel can and has taken into account when assessing bad faith.

6.62 In the circumstances, the Complainants have successfully made out the requirements of paragraph 4(a)(iii) of the Policy against both the First and Second Respondent.

E. Remedies

6.63 The Complainants have asked for the Domain Names to be transferred to the “Complainant”, which the Complainants contend is a term that is intended in the Complaint to refer to them collectively. It is therefore unclear to which of them the Complainants seek the Domain Names to be transferred. Given that it is the First Complainant that appears to be primarily engaged in business under the relevant marks, the Panel concludes that the Domain Names should be transferred to it.

7. Decision

7.1 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 names, <rapidsharefilesdownload.com>, and <rapidsharemegaupload.com>, be transferred to RapidShare AG.

7.2 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel also orders that the domain name, <rapidsharewarezmegaupload.com> be transferred to RapidShare AG.

Matthew S. Harris
Sole Panelist
Dated: August 3, 2010

ANNEX A

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL PROCEDURAL ORDER No. 1

RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov; Winsoul, Inc., Aleksey Atushev; Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987, Protected Domain Services Customer ID: DSR-2239262

Case No. D2010-0894

WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes and has reached the preliminary views as follows:

(i) The domain names in issue in these proceedings are <rapidsharefilesdownload.com>, <rapidsharemegaupload.com> and <rapidsharewarezmegaupload.com> (the “Domain Names”). The Domain Names are registered with Spot Domain LLC dba Domainsite.com (the “Registrar”).

(ii) As at the date the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”), “Protected Domain Services” was recorded as the registrant of the Domain Names in the publically available WhoIs. “Protected Domain Services” is the “privacy” service of the Registrar.

(iii) In response to the Center’s request for registrar verification in relation to Domain Names, the Registrar identified the underlying registrant of the Domain Names <rapidsharefilesdownload.com>, <rapidsharemegaupload.com> to be PrivacyAnywhere Software LLC / Michail Berdikov and the underlying registrant of <rapidsharewarezmagaupload.com> to be Winsoul Inc / Aleksey Atushev.

(iv) The Complainant has declined to amend the Complaint and has not sought to file any evidence or submission to the effect that PrivacyAnywhere Software LLC / Michail Berdikov and Winsoul Inc / Aleksey Atushev are the same or connected entities.

(v) The Registrar in an “Informative Filing” dated June 22, 2010 asserts that the “Complainant opted not to properly amend its Complaint.”

(vi) The Panel is of the view, for the reasons identified in Mrs. Eva Padberg v. Eurobox Ltd WIPO Case No. D2007-1886, that the Complainant has not acted improperly in refusing to amend its Complaint.

(vii) However, for the reasons set out in detail in paragraphs 6.12 to 6.24 of Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited and others WIPO Case No. D2008-1675 the Panel is also of the view that it is inappropriate for proceedings to continue as a single set of proceedings in respect of all the Domain Names.

(viii) Nevertheless, the Panel considers it appropriate to provide the Complainant with an opportunity to indicate whether it wishes on payment of the relevant fee for the proceedings to continue as split proceedings in respect of all the Domain Names (as indicated in paragraph 6.2[5] of Western Union Holdings case supra) and if the proceedings are so split, whether it, or the Respondent(s), objects to the Panel continuing to deal with both sets of proceedings.

(ix) The Panel is of the view that the circumstances of this case are such that if the proceedings are to continue as split proceedings in respect of all the Domain Names, it is likely that these proceedings can proceed to a decision without the need for the filing of further submissions or the making of any further procedural order.

The Panel, pursuant to paragraphs 10, 12 and 19(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER:

(1) The Complainant is permitted, but is not required, to file a submission by email with the Center by no later than 6:00 pm GMT on Tuesday, July 27, 2010 addressing:

(a) whether PrivacyAnywhere Software LLC / Michail Berdikov and Winsoul Inc / Aleksey Atushev are the same or sufficiently connected entities such as to permit the proceedings to continue in relation to all of the Domain Names; and/or

(b) any of the matters identified in the recitals to this order.

(2) The Complainant shall by no later than 6:00 pm GMT on Tuesday, July 27, 2010:

(i) indicate to the Centre by email the Complainant’s preference (should the Panel remain of the view that there is insufficient evidence before the Panel that PrivacyAnywhere Software LLC / Michail Berdikov and Winsoul Inc / Aleksey Atushev are the same or sufficiently connected entities such as to permit the proceedings to continue in relation to all of the Domain Names) for:

(a) the proceedings to continue in respect of the <rapidsharefilesdownload.com>, and <rapidsharemegaupload.com> Domain Names alone, with an Order being made for dismissal of the Complaint pertaining to the Domain Name <rapidsharewarezmegaupload.com> without prejudice to the filing of a further complaint; or

(b) the proceedings to progress formally as two sets of proceedings in respect of all of the Domain Names (i.e. one such set of proceedings to cover the < rapidsharefilesdownload.com> < rapidsharemegaupload.com> Domain Names, and the other <rapidsharewarezmegaupload.com>) on payment of an additional fee to the Center.

(ii) if the Complainant’s preference is to proceed in accordance with paragraph (i)(b) above, pay a further fee of US$1,500 to the Center; and

(iii) indicate to the Center by email whether if the proceedings are to continue as separate proceedings in respect of all of the Domain Names, there is any objection (giving reasons for any such objection) to the Panel deciding the separate proceedings together.

(3) The Respondent(s) are permitted, but are not required to file a submission by email with the Center by no later than 6 pm GMT on Tuesday, July 27, 2010, addressing any of the matters identified in the recitals to this order.

(4) Any submission filed pursuant to paragraph (1) or (3) above:

(i) must include a declaration signed by a named individual as follows:

“The [Complainant / Respondent] certifies that the information contained in this submission is to the best of the [Complainant’s / Respondent’s] knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

(ii) must either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.

(5) The Panel hereby extends the time by which a decision shall be issued in these proceedings until Friday, July 30, 2010.

Matthew S. Harris
Sole Panelist
Dated: July 20, 2010

¹ See for example the definition of “warez” to be found in Wikipedia at the date of this decision.