WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. PrivacyP, Bashkov Andrey Olegovish Case No. D2010-0590 1. The Parties
The Complainants are RapidShare AG and Christian Schmid both of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is PrivacyP of Moergestel, the Netherlands, Bashkov Andrey Olegovish of Krym, 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
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 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 19, 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 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email communication to the Center on April 26, 2010 indicating it did not wish to file an amendment to the Complaint or an amended Complaint. On the same day, the underlying registrant of the domain name Bashkov Andrey Olegovish also sent an email communication to the Center regarding this dispute. The Center acknowledged receipt of both email communications on April 27, 2010.
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 May 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed David Perkins as the sole panelist in this matter on June 3, 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
1. 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 13, 2010.
2. In response to the Center's request for registrar verification, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR disclosed the identity of the registrant as Andrey Olegovish Bashkov (“Bashkov”) of Simferopol, Krym, Ukraine. Bashkov is also the Administrative, Technical and Billing contact for the disputed domain name, which was created on February 10, 2009.
3. This was notified to the Complainant, who chose not to amend the Complaint by email to the Center dated April 26, 2010. Consequently, Bashkov was not formally added as a Respondent. However, Notification of Complaint and Commencement of Administrative Proceeding and the Complaint were transmitted by the Center by email and by courier to both the Respondent and to Bashkov.
4. The Notice of Respondent Default sent by the Center on May 26, 2010 (paragraph 3 above) was addressed to both the Respondent and to Bashkov.
5. The question arises whether the Complaint can properly proceed against the privacy protection service alone or whether it is necessary to join the underlying registrant of the disputed domain name, Bashkov, as co-Respondent. This issue was addressed in the Decision in Research in Motion Ltd v. Privacy Locked LLC/Nat Collicott,WIPO Case No. 2009-0320. That case 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?
6. 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 Panelist in Research in Motion Ltd v. Privacy Locked LLC/Nat Collicott, supra, this Panel 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.
7. 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 US 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
RAPIDSHARE
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 the Privacy Protection Service Respondent, all that is known about Bashkov is what is set out in the Complaint and in an email from Bashkov to the Center dated April 26, 2010. The text of that email 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 directs the user to a search engine which provides access to a variety of categories of products and services, such as games, movies, television shows, music etc. Those depicted on the website include Adobe Photoshop 7.0 software; the movie “Evil Angel”; the BBC program “Eyewitness”; the game “Prison Break”; the music album “Since you've been gone” by Tomas N'evergreen; and what the Complaint describes as “certain adult” oriented materials.
4.B.2 The said email dated April 26, 2010 from Bashkov to the Center reads as follows:
“Dear Mr D[…] Z[…]!
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 AG choosing the mentioned domain name , we just used the popular keywords found in 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 copyright of Radipshare AG owners, we are ready to delete domain from the ICANN register if we'll be given 180 days for site transfer to another domain.
Best regards
Andrey Bashkov”
4.B.3 The Complaint states that the Respondent Bashkov posts on the website to which the disputed domain name resolves a disclaimer stating:
“We do not store any files listed on this server. We just index other sites contents and if you find anything violating your copyrights, please kindly contact us mediasoft.abuse@. All files are uploaded by individuals for sharing and showcasing demonstrating with absolutely no profits made!”
4.B.4 The Complaint then goes on to reproduce what it describes as another disclaimer posted on the website, which reads:
“Rapidshare-free-download respects the intellectual property rights of others and expects its users to do the same. In accordance with the Digital Millenium Copyright Act of 1998, the text of which may be found on the US Copyright Office website at /legislation/dcma.pdf, Rapidshare-free-download will respond expeditiously to claims of copyright infringement committed using the Radipshare-free-download service that are reported to Radipshare-free-downloads Designated Copyright Agent identified in the sample notice below.”
The Panel assumes that the “sample notice” is, in fact, the statement from the website reproduced in paragraph 4.B.3 above. 5. Parties Contentions 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 words “free” and “download”, which do nothing to distinguish the disputed domain name from the RAPID SHARE trademark. The Complainants cite in that respect the decisions in Sony Corporation v. Inja, Kil,WIPO Case No. D1000-1409 and in F Hoffmann-La Roche AG v. Rudiger Meissner,WIPO Case No. D2009-1127. 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 hyphens between “rapidshare”, “free” and “download”, which again does nothing to distinguish the domain name from RAPID SHARE trademarks, citing the decision in Tates 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 noncommercial or fair use of that 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.
5.A.4 Referring to the notice from the website to which the disputed domain name resolved [set out in paragraph 4.B.4 above], even if the Respondent's claim to operate its website on a profitless basis is correct, the Complainants say that this does not provide the Respondent with rights or a legitimate interest under the Policy. The Complainants cite the decision in Trimble Navigation Ltd v. Davide Erbe,WIPO Case No. D2009-0881. In that case the complainant was a worldwide leader in the provision of advanced positioning technologies, including GPS, laser, optical and inertial technologies with application software, wireless communications, and services under the TRIMBLE registered trademark. The disputed domain name resolved to a website providing hyper links to third party websites offering surveying services, equipment and supplies of their competitors. That website was replaced by an “Under Construction” page. The respondent's counsel advised the complainant that the respondent intended to launch a not-for-profit website with a forum for comments and reviews of Trimble's surveying products. The panel found that the original website was neither a bona fide use, nor was it a legitimate noncommercial or fair use of the domain name under paragraphs 4(c)(i) and (iii) respectively of the Policy. As to the subsequent assertion of the respondent's intention to use that domain name for a not-for-profit site, the panel found no evidence of demonstrable preparations for such use and, consequently, found that the respondent had no rights or legitimate interests under paragraph 4(c)(i) of the Policy.
5.A.5 Because, the Complainants say, the Respondent's use of the RAPID SHARE trademarks is illegal even though it may be “noncommercial” it cannot be a legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy.
5.A.6 Furthermore, the Complainants say that offering “adult-oriented images” on the website for download, in conjunction with use of the RAPID SHARE trademarks cannot be considered a bona fide offering of goods or services. The Complainants cite in that respect the decision in ABB Asea Brown Boveri Ltd v. Quicknet,WIPO Case No. D2003-0215. In that case the panel held that use of the complainant's ABB trademark in the disputed domain name for a website providing pornographic images and links tarnished and diluted the ABB mark and did not constitute a bona fide offering of goods or services. Registered and Used in Bad Faith
5.A.7 As to registration in bad faith, the Complainants put their case as follows. First, the Complainants' RAPID SHARE marks have 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. 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 trademarks and it is being used for a search engine that provides related services to those provided under the Complainants' trademarks. In the circumstances, the Complainants say there is clear evidence of registration in bad faith. The Complainants cite in support of the decision in Realtime Forex SA v. Rhone Consultants SA,WIPO Case No. D2006-0089.
5.A.8 As to use in bad faith, the Complainants point 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 those trademarks.
5.A.9 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 ACCUTANE – a dermatological preparation for treatment of acne – online without prescription contrary to legislation in the United States of America.
5.A.10 Finally, offering adult oriented materials on the website to which the disputed domain name resolves is, the Complainants say, evidence of bad faith use, citing again the decision in ABB Asea Brown Boveri Ltd v. Quicknet, supra. 6. Discussions and Findings
6.1 The Policy paragraph 4(a) provides that the Complainants 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 Complainants have 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 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 trademarks RAPID SHARE.
6.6. The disputed domain name incorporates that trademark in its entirety. Addition of the generic descriptive suffixes “free” and “download” does not avoid confusing similarity with the Complainants' trademarks. Nor does the addition of hyphens serve to avoid confusing similarity.
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 of April 26, 2010 (set out in 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 trademarks for the purpose of offering a file sharing service comparable in certain respect to the very widely used website operated by the First Complainant.
6.9 As to the issue of noncommercial use of the disputed domain name, although the circumstances in this case and those in Trimble Navigation Ltd v. Davide Erbe, supra, are somewhat different, the Panel accepts the Complainants' proposition that the Respondent's use is neither legitimate or fair by reason of the confusing similarity of the domain name and the RAPID SHARE trademarks. Consequently, whether or not the service provided by Bashkov is free (as the website claims) is immaterial. Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Rights and Used in Bad Faith
6.10 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. Moreover, it is being used to mimic the services provided by the First Complainant under its RAPID SHARE trademarks and such use, which is not authorised by the Complainants, is plainly a bad faith use.
6.11 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.
6.12 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 Complaints satisfy 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 Complainants.
David Perkins
Sole Panelist
Dated: June 23, 2010
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