WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG v. Mir Zack N/A Case No. D2010-0609 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America (hereinafter “US”).
The Respondent is Mir Zack of Dhaka, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 20, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint [together with the amendment to the Complaint/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”).
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 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on June 2, 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.
In the absence of any Response, the Panel has checked the record to ensure that the Complaint was notified to the Respondent in accordance with the Rules. The Panel is satisfied that it was. 4. Factual Background The Complainant
The Complainant RapidShare AG (“RapidShare”) is a corporation established in 2006, with its headquarters in Switzerland. RapidShare operates an online file sharing service through its principal website at “” (“the Complainant's website”). Briefly, users of RapidShare's services can distribute Internet files by uploading the files to the platform at the Complainant's website, and emailing a download link to the intended recipients of the computer file. According to the Complaint, the home page at the Complainant's website has become the twelfth most visited home page in the world.
RapidShare is the registered proprietor of the Community Trademark No. 004753828 RAPIDSHARE, having a priority date of November 21, 2005 (“RapidShare's mark”). RapidShare's mark covers, inter alia, “online advertising on a computer network”, and marketing, including on digital networks. It also covers “advertising”, including on the Internet and “presentation of goods and services”.
A person having the same name as the second-named Complainant, but said to be resident in Germany, is the proprietor of the mark RAPID SHARE in the United States. According to the Complaint, the second-named Complainant and the United States registrant are the same person, and that person has licensed the use of the United States mark to RapidShare. The Respondent and the Domain Name
The Domain Name was registered on August 1, 2009.
According to the Complaint, the Domain Name has pointed to a website (“the Respondent's website”) at which unauthorized passwords to the Complainant's website have been offered for use by others.
The Complainants produced copies of the Respondent's website, printed on April 18, 2010. Under the heading “Rapidshare Premium Account”, the Respondent offered free RapidShare “accounts” as well as “free accounts” for various other file hosting websites. RapidShare was also one of a number of operators of such sites listed under a separate “Premium Accounts” heading. Here, the site visitor was invited to click on the name of the operator and follow five listed steps in order to get a password for posts on that operator's site. The user then apparently had only to enter the password on the post's password box to “enjoy all the premium accounts within”. The Internet user would get unrestricted access for 24 hours, and would then need to complete the procedure again.
A statement on the Respondent's website advised that the Respondent was “creating rapidshare accounts through rapidpoints now, and will continue to do so for our visitors in the future.”
The Respondent's website also contained an advertisement for “Secure Passwords”, with a link to a third party website (apparently not connected with the Complainants) at which such passwords could be obtained.
The Panel notes that the Complainant's website contains a section styled “Premium Zone”, to which access is restricted by registration/log in requirements.
In accordance with normal practice, the Panel has attempted to access the Respondent's website. The Panel's browser was unable to connect to any website at the Domain Name. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to RapidShare's mark. That mark has been included in its entirety in the Domain Name, and the Respondent has only added the generic element “premiumaccounts”. The addition of that generic element does nothing to distinguish the Domain Name from RapidShare's mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has never operated any bona fide or legitimate business under the Domain Name, nor made any protected noncommercial or fair use of the Domain Name.
(ii) The Respondent is not commonly known by the Domain Name.
(iii) The Respondent uses the Domain Name to drive Internet traffic to the website, where it offers unauthorised passwords to the Complainant's website for use by others. Such a use of RapidShare's mark is illegal, and as such cannot be considered a bona fide use of the Domain Name.
(iv) The Complainants have not granted the Respondent any license, permission or authorization to own or use any domain name registration which is confusingly similar to RapidShare's mark.
3. The Domain Name was registered in bad faith, and has been used in bad faith. The Complainants rely on the following matters:
(i) The Respondent knew of RapidShare at the time of registration of the Domain Name (the Respondent's website references “Rapidshare” under the listed “Premium Accounts”).
(ii) The Domain Name is nearly identical to RapidShare's RAPIDSHARE mark, and is being used in conjunction with related services.
(iii) The Respondent's use of the Domain Name to provide users with password “crackers” to gain unauthorized access to RapidShare's systems, and to encourage them to use various devices to circumvent RapidShare's file size limitations, is in violation of the US Computer Fraud and Abuse Act. Such a use 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 (citing Hoffman-La Roche Inc. v. Domain Ownership Limited,WIPO Case No. D2007-0891).
(iv) The Respondent makes no attempt to discourage copyright infringement.
(v) The Respondent is using the Domain Name for commercial gain, derived from the provision on the Respondent's website of advertisements for third party websites. Such a use qualifies as evidence of registration and use in bad faith (citing Playboy Enters Int'l Inc. v Tonya Flynt Foundation,WIPO Case No. D2001-1002). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainants have proved this part of the Complaint. RapidShare's mark has been incorporated in full in the Domain Name, and all that has been added is the generic expression “premiumaccounts”. The addition of that generic expression does nothing to remove the confusing similarity caused by the inclusion in the Domain Name of RapidShare's mark (to similar effect, see the very recent panel decision in RapidShare AG and Christian Schmid v Private Registrations Aktien Gesellschaft Domain Admin,WIPO Case No. D2010-0591, in which the panel held that the domain name was confusingly similar to RapidShare's mark).
The generic suffix “.com” is not taken into account in the comparison which is required under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(iv) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(v) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(vi) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to RapidShare's mark, and the uncontested evidence is that RapidShare has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the record to suggest that the Respondent might be commonly known by the Domain Name, and there is therefore no basis for a claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The Respondent has failed to explain either its reason for choosing the Domain Name or its reason for creating and maintaining the Respondent's website. Those matters are sufficient in combination with the evidence and arguments submitted by the Complainants to meet the Complainants' prima facie proof threshold, so the evidentiary burden on this part of the Complaint shifts to the Respondent.
The Respondent has elected not to respond to the Complainants' clear allegation that the Respondent has been facilitating illegal sharing of copyright works through the Respondent's website, including by the provision of passwords which the Respondent was not authorized to provide. In this Panel's view, the Complainants' allegations clearly called for a response, but none has been provided. The Panel infers that the Respondent had no answer to the Complaint.
The deliberate use of a website to facilitate unauthorized access to password-protected (restricted) areas of websites operated by third parties (apparently for the ultimate purpose of facilitating file sharing in breach of third party copyrights) does not, in this Panel's view, qualify as a use “in connection with a bona fide offering of goods or services”, so there is no possibility of a right or legitimate interest under paragraph 4(c)(i) of the Policy. Nor could such a use be “fair”, or “legitimate”. Paragraph 4(c)(iii) of the Policy does not apply.
The Respondent has not brought itself within any of the categories of rights or legitimate interests set out at paragraph 4(c) of the Policy, and has raised no other basis on which it might have a right or legitimate interest in the Domain Name. Accordingly, the Complainants succeed on this part of the Complaint. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Complainants have also proved this part of the Complaint.
The Respondent was obviously aware of RapidShare and RapidShare's mark when the Respondent registered the Domain Name. The express references to RapidShare on the Respondent's website leave little room for doubt about that.
In the absence of a Response, the Panel considers it highly likely that the Respondent selected the Domain Name because its dominant element consisted of RapidShare's mark (being the service mark used by one of the leading players in the field of web file hosting), and the Respondent wished to attract to the Respondent's website Internet users who would assume that the Domain Name was owned by or affiliated with RapidShare. Having thus used RapidShare's goodwill in RapidShare's mark to create increased traffic to the Respondent's website, the Respondent has then exposed the additional site visitors to links to the sites of some of RapidShare's competitors, and proposed means by which those visitors might obtain unauthorized access to a restricted part of the Complainant's website. Some of the additional site visitors who were attracted by the use of RapidShare's name in the Domain Name might also click on the link to the third party website through which “Secure Passwords” could be acquired.
Quite apart from the unauthorized provision of passwords, the Panel considers that it is more likely than not that the Respondent has been deriving some revenue by providing the link to the third party website which advertises the “Secure Passwords”. Such links to commercial websites are not normally provided for nothing.
The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with RapidShare's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The use of RapidShare's mark to generate increased Internet traffic to a website (the Respondent's website) which is used to facilitate unauthorized access to restricted parts of websites operated by third parties (including RapidShare), reinforces the Panel's conclusion that the Domain Name has been registered and used 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.
Warwick Smith
Sole Panelist
Dated: June 15, 2010
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