WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. Pieter Jan Peetermans, PJP Projects Case No. D2010-0578 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Switzerland, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is Pieter Jan Peetermans, PJP Projects of Grobbendonk Belgium. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 16, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On April 16, 2010, Dotster, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
RapidShare AG is a Swiss corporation which was founded in 2006. Christian Schmid is an individual that is affiliated to RapidShare AG (together: “the Complainants”). The Complainants are one of the biggest one-click file hosts in the world and own the twelfth most visited homepage in the world.
The Complainants own multiple trademark registrations for the mark RAPID SHARE around the world. For example: United States (hereinafter, “US”) trademark registration No. 3,313,895 – RAPID SHARE, with the registration date of October 16, 2007; Community trademark registration No. 004753836 – Rapid Share THE EASY WAY TO SHARE YOUR FILES & design, with the registration date of September 25, 2008; Community trademark registration No. 00475328 – RapidShare, with the registration date of September 25, 2008 all three trademarks have a priority date of November 21, 2005.
The Complainants also have a presence on the Internet and are the owners of the following domain names, which contain the mark “RAPID SHARE”: and . The Complainants are using these domain names in connection with their activities.
The Respondent registered the disputed domain name on October 14, 2008.
The disputed domain name used to resolve to a website, which consisted of a search engine designed to locate and share documents on line. The website also included commercial advertisements for other websites.
Currently, the disputed domain name resolves to a parking webpage, which displays the following announcement: “Default website page. If you feel you have reached this page in error, please contact the web site owner”. 5. Parties' Contentions A. Complainants
The Complainants argue that the disputed domain name is identical or confusingly similar to the RAPID SHARE trademark, owned by the Complainants, seeing that it incorporates the trademark as a whole.
The Complainants further argue that they have exclusive rights to the RAPID SHARE trademark and that this trademark is widely recognized with the Complainants and the Complainants' operation. Furthermore, the Complainants argue that they have not licensed or permitted the Respondent to use the RAPID SHARE mark.
The Complainants further argue that the Respondent is not making a legitimate use of the RAPID SHARE mark as he is not commonly known as “”.
The Complainants further argue that the disputed domain name is likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainants have authorized or endorsed the Respondent.
The Complainants further argue that the Respondent used the domain name to enable copyright infringement of third-party owned copyrights materials. The Complainants argue that this is evidence of the Respondent's bad faith.
The Complainants further argue that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' mark.
The Complainants further argue that the Respondent was aware of their existence and of their RAPID SHARE mark at the time the Respondent registered the disputed domain name.
For all of the above reasons, the Complainants request the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainants are the owners of US trademark registration No. 3313895 – RAPID SHARE, with the registration date of October 16, 2007; Community trademark registration No. 004753836 – Rapid Share THE EASY WAY TO SHARE YOUR FILES & design, with the registration date of September 25, 2008; Community trademark registration No. 00475328 – RapidShare, with the registration date of September 25, 2008. All three trademarks have a priority date of November 21, 2005.
The disputed domain name differs from the registered RAPID SHARE trademark by the additional letters “s” and “e”, and the gTLD “.com”.
The disputed domain name integrates the Complainants' trademark RAPID SHARE in its entirety, as a dominant element. The Panel cites the following decision with approval, “[r]espondent's domain name wholly incorporates [c]omplainant's mark […]. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The additional letters “s” and “e” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants' RAPID SHARE trademark. Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous UDRP panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. B. Rights or Legitimate Interests
Once the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.
In the present case, the Complainants alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainants have established such a prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the RAPID SHARE trademark, or a variation thereof. The Respondent did not submit a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainants submitted evidence, which show that the Respondent registered the disputed domain name after the Complainants registered the trademark. According to the evidence filed by the Complainants, the Complainants own a trademark registration for the RAPID SHARE trademark since the year 2007. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainants was registered prior to the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other on line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainants, the Panel finds that until recently, the disputed domain name led Internet users to a website, consisting of a search engine designed to locate and share documents on line. The website also included commercial advertisements for other websites. The Respondent's use of the domain name “to promote services that could be seen as sharing some degree of similarity to the services rendered by the Complainants clearly evidences to this Panel that the Respondent registered the disputed domain name with knowledge of the Complainants and of the use the Complainants are making in the mark RAPID SHARE and subsequent intent to trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. In addition, the Respondent used the disputed domain name to show commercial advertisements. The Panel cites the following with approval: “… the Respondent is using the disputed website to show commercial advertising that leads the public to other sites … The Panel finds it only logical to infer the Respondent derives income from these business operation at the disputed domain name. Therefore, the Panel finds the Respondent registered and is using the domain name in clear violation of the Policy at 4b(iv).” (Playboy Enterprises International, Inc. v. Tonya Flynt Foundation,WIPO Case No. D2001-1002).
The disputed domain name currently resolves to an error webpage. Nevertheless, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Further, the disputed domain name in which the Respondent has no rights or legitimate interests is confusingly similar to the Complainants' trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the RAPID SHARE trademark in the domain name and the previous use made by the Respondent of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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 Complainants.
Jonathan Agmon
Sole Panelist
Dated: June 3, 2010
Full & Egal Universal Law Academy