WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG , Christian Schmid v. Bashkov Andrey Olegovish / PrivacyP Case No. D2010-0570 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 Bashkov Andrey Olegovish / PrivacyP of Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 15, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 16, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 April 19, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant chose not to amend the Registrant information.
In response to a notification by the Center regarding the address of the concerned Registrar, the Complainant filed an amended Complaint on April 20, 2010. The Center verified that the Complaint together with the amended 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”).
3.2 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 April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent sent two emails to the Center on April 26, 2010 and May 12, 2010 respectively.
3.3 The Center appointed David Perkins as the sole panelist in this matter on May 26, 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.
The identity of the Registrant of the disputed domain name and the role of the Respondent Privacy Protection Service
3.4 The Respondent is a privacy protection service, which was the registrant of the disputed domain name at the time when the Complainant carried out a database search on April 12, 2010.
3.5. In response to the Center's request for registrar verification, the registrar disclosed the identity of the registrant as Bashkov Andrey of Ukraine [hereinafter “Bashkov”] who is also the Administrative, Technical and Billing contact for the disputed domain name, which was created on February 23, 2010.
3.6 This was notified to the Complainant, who chose to amend the Complaint on April 20, 2010 by changing the address of the Registrar from the Netherlands to Mumbai, India. Bashkov was not added as a Respondent. However, Notification of Complaint and Commencement of Administrative Proceeding, the Complaint and the Amended Complaint were transmitted by the Center by email and by courier to both the Respondent and to Bashkov.
3.7 A preliminary issue is whether, following notification that Bashkov is the underlying registrant of the disputed domain name, the Amended Complaint can proceed against only the privacy protection service as the named Respondent. This issue was carefully examined by the Panelist in the Decision in Research in Motion Ltd v. Privacy Locked LLC/Nat Collicott, WIPO Case No. D2009-0320.
3.8 That decision concerned a domain name which was registered in the name of a privacy protection service, Privacy Locked LLC. In response to the Center's request for registrar verification, the registrar disclosed that the registrant was an individual named Nat Collicott. The Complainant declined to amend its Complaint to add or substitute Mr. Collicott as Respondent. The Panel proceeded to treat the Complaint as addressed to both Privacy Locked LLC and Mr Collicott and addressed the questions of who was the proper respondent. Was it the privacy service named on the registrar's Whois database as the registrant at the date of filing the Complaint, or was it the underlying registrant subsequently identified by the registrar? If the latter, was it necessary to amend the Complaint to name the underlying registrant?
3.9 The Panelist reviewed previous decisions under the Policy dealing with this issue and decided to adopt the pragmatic approach of treating both the privacy service and the underlying registrant as one. He also decided that the Complaint had been properly brought against the privacy service and that there was no necessity for the Complainant to amend its Complaint to render it compliant with the Policy and the Rules. For the reasons given by the panelWIPO Case No. 2009-0320 this Panelist agrees that there is no need to amend the Complaint in such circumstances but that the Center should – as it has done in this administrative proceeding – provide notice of the formal commencement of administrative proceedings to the underlying registrant. If the named Respondent or the underlying registrant files a response then such response will be treated as being made on behalf of that Respondent. In that way, a fair and effective resolution of the dispute is enabled.
3.10 In the circumstances, the Panel proceeds on the basis that both Privacy P and Bashkov are Respondents in this administrative proceeding and references hereinafter to “the Respondent” are to be understood accordingly. 4. Factual Background 4.A The Complainant
4.A.1 The First Complainant, RapidShare AG, is a Swiss company which was founded in 2006. It provides one-click hosting of data and is currently the twelfth most visited homepage in the world. It has a storage capacity of several petabytes (a petabyte is a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously.
4.A.2 The First Complainant operates a file sharing service. It operates as a pay service, allowing any member to upload files of up to 100 megabytes. The user is then supplied with a unique download URL, which locates the file and enables anyone with whom the uploader shares it to download the file.
4.A.3 The First Complainant also provides a reporting system for copyright owners to notify the Company if it believes that a user is violating his copyrights or is using RapidShare to publish illegal contents.
4.A.4 The Second Complainant is the registrant of the United States registered trademarks RAPID SHARE (detailed below), which he has licensed to the First Complainant. He was also the founder of the First Complainant. 4.A.5 The RAPID SHARE trademarks
The Complainants are the owners of the following registered trademarks.
Country
Reg. No.
Mark
Class(es)
Dates of Application and Registration
United States of America
3,313,895
RAPID SHARE
42
Filed: September 21, 2005
Registered: October 16, 2007
First Used in commerce: November 1, 2006
European Union CTM
004753836
RAPID SHARE
THE EASY WAY TO SHARE YOUR FILES and design
25 & 35
Filed: November 21, 2005
Registered: September 25, 2008
European Union CTM
00473828
RAPID SHARE
25 & 35
Filed: November 21, 2005
Registered: September 25, 2008
4.A.6 Both CTM registrations were opposed on August 14, 2006 by RAPIDware Gesellschaft fur Informationsverarbeitung mbH but, as noted above, proceeded to registration on September 25, 2008. 4.B. The Respondent
4.B.1 In the absence of a response from either the Respondent or Bashkov, all that is known about Baskhov is what is set out in the Complaint and in Bashkov's email to the Center dated April 26, 2009, the text of which is set out in paragraph 4.B.2 below. Annexed to the Complaint is a print out of the webpages to which the disputed domain name resolves. That website advertises a search engine and a variety of categories (e.g. software, movies, music, games, E-Books etc.) designed to assist Internet users to share such content on line. The categories include software programs “Object Dock”: “USB Secure 1.4.1”: “Power Notes 3.48”: “PowerFinish Ultimate Presentation Kit Professional”; an advertisement for clothes and footwear; and a music DVD “Dr John teaches New Orleans Piano”. The Complainant characterises this as
“... designed to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents on line.”
4.B.2 As noted in paragraph 3.2 above, on April 26, 1010 Bashkov emailed the Center. That email read as follows:
“Dear Mr […] Zhou!
Properly speaking we don't understand the meaning of the abuse we got. First of all, we didn't plan to break copyrights of Rapidshare A.G. choosing the mentioned domain name “”, we just used the popular keywords found in the requests stats in Google Keyword Tools. Moreover we didn't want neither make sites identical to R (clones) nor do cyber squatting.
But if nevertheless we have really broken copyrights of Rapidshare A.G. owners, we are ready to delete domain from the ICANN registry if we'll be given 180 days for site transfer to another domain.
Best regards,
Andrey Bashkov”
4.B.3 Bashkov's second email to the Center dated May 12, 2010 was sent in response to a communication to the Parties of the same date advising that, other than Bashkov's email of April 26, 2010, no further communication had been received by the Response due date. Accordingly, the Center advised that it would proceed to the Panel appointment. In his email of May 12, 2010 Bashkov simply stated:
“I sent you my answer! That you have not received it?” 5. Parties contention 5.A Complainants Identical or Confusingly Similar
5.A.1 The Complainants say that the disputed domain name is confusingly similar to their RAPID SHARE trademarks for three reasons. First, the trademark has been used in its entirety with the addition of the generic descriptive word “catalog” preceded by a hyphen. Second, the disputed domain name combines the words RAPID and SHARE into a single word “rapidshare” in the same way as CTM004753828 “RapidShare”. Third, the addition of a hyphen does not operate to distinguish the disputed domain name from the RAPID SHARE trademarks: see, Tata Tea Ltd v. Gem Lifts Ltd, WIPO Case No. D2000-1823.
Rights or Legitimate Interests
5.A.2 The Complainants say that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. This is because the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a non-commercial or fair use of that domain name.
5.A.3 The Complainants say that, because they have neither licensed nor otherwise authorised the Respondent to use the RAPID SHARE trademark, use of the trademark by the Respondent cannot be considered a bona fide or fair use. The Complainants cite in support of that contention, the Decision in Viacom International, Inc & Others v. TV, Inc., WIPO Case No. D2000-1253. Registered and Used in Bad Faith
5.A.4 As to registration in bad faith, the Complainants put their case as follows. First, the Complainants' RAPID SHARE mark has been used since 2006 and registered in both the United States and Europe since, respectively, October 2007 and September 2008, well before the disputed domain name was created in February 2009. Consequently, the Complainant says that the Respondent most likely had actual knowledge of its RAPID SHARE trademark. Second, the First Complainant's RAPID SHARE hosting / file sharing business was very well known by February 2009, the disputed domain name is almost identical to the RAPID SHARE trademark and it is being used for a website that provides related services to those provided under the Complainant's trademark. In the circumstances, the Complainants say there is clear evidence of registration in bad faith. The Complainants cite in support of the Decision in Facebook Inc v. Privacy Ltd Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193.
5.A.5 As to use in bad faith, the Complainants points to the use made of the disputed domain name, which – as noted in paragraph 4.B.1 above – is to offer services some of which are identical to those protected by the RAPID SHARE trademarks and which are provided by the First Complainant under that trademark. The Complainant cites in this respect the Decision Realtime Forex S.A. v. Rhone Consultants S.A., WIPO Case No. D2006-0089.
5.A.6 Furthermore, the Complainants say that the Respondent's use of the disputed domain name enables infringement of third party copyright material, which cannot constitute a bona fide activity. It is, the Complainants say, contrary to public policy to encourage users to commit copyright infringement. In support of that contention the Complainants cite the decision in Hoffmann-La Roche Inc v. Domain Ownership Ltd., WIPO Case No. D2007-0891. In that case, the respondent was offering generic ACCUTAINE – a dermatological preparation for treatment of acne – online without prescription contrary to legislation in the United States of America.
5.A.7 Finally, the website to which the disputed domain name resolves contains advertisements to other websites. From that the Complainants say, it is only logical to infer that the Respondent thereby derives income. Consequently, the Respondent is using the domain name for “commercial gain” and, given that the content of the website mirrors offerings provided by the First Complainant's hosting business, the circumstances in this case fall within paragraph 4(b)(iv) of the Policy. The Complainant cites the Decision in Playboy Enterprises International, Inc v. Tonya Flynt Foundation, WIPO Case No. D2001-1002. 6. Discussions and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainants have demonstrated that they have rights in the registered trademark RAPID SHARE.
6.6. The disputed domain name incorporates that trademark in its entirety. Addition of the generic descriptive suffix “catalog” preceded by a hyphen does not avoid confusing similarity with the Complainants' trademark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 In the absence of a Response other than Bashkov's email dated April 26, 2010 [paragraph 4.B.2 above] and on the facts as presented, there is nothing to indicate that the Respondent could establish any of the circumstances set out in paragraph 4(c) of the Policy. Nor are there any other circumstances disclosed which could demonstrate the Respondent's rights to and legitimate interests in the disputed domain name. Certainly, it is neither a bona fide or fair use to make unauthorised use of the RAPID SHARE trademark for the purpose of offering a file sharing service comparable in certain respect to the very widely used website operated by the First Complainant. The Complaint satisfies paragraph 4(a)(ii) of the Policy. Rights and Used in Bad Faith
6.9 Given the very established use of the First Complainant's hosting / file sharing business and the use to which the disputed domain name is being put, it is inconceivable that the disputed domain name could have been registered in good faith. Ignorance of the Complainant's trademark rights in RAPID SHARE – see, Bashkov's said April 26, 2010 email – does not establish good faith registration of the disputed domain name. Indeed, Bashkov refers to the Complainant's trademark as “the popular key words”, which indicates a prior knowledge of the First Complainant such that Bashkov must be deemed to have been “on notice” of the Complainant's rights, which Bashkov mistakenly refers to as “copyrights of Radipshare AG”. Moreover, the disputed domain name is being used to mimic the services provided by the First Complainant under its RAPID SHARE trademark and such use, which is not authorised by the Complainants, is plainly a bad faith use.
6.10 As to the suggestion that the Respondent's use is encouraging illegal activities which are contrary to public policy – namely, infringement of copyright – the Panel merely notes that the legality of file sharing has produced litigation in both Europe and the United States. The Complainant itself has not been immune from litigation in that area.
6.11 However, a finding as to the legality, or otherwise, of the Respondent's operations is not necessary for determination of this administrative proceeding. Bad faith registration and use are found for the reasons set out in paragraphs 6.8 and 6.9 above and, consequently, the Complaint satisfies the dual requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: June 9, 2010
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