WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG and Christian Schmid v. Sviatlana Astashenka Case No. D2010-0612 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Sviatlana Astashenka of Belarus. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center the “Center”) on April 20, 2010. On April 20, 2010, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the disputed domain name. On April 21, 2010, Dynadot, LLC. 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 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2010.
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. 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 (US) registered trademark 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 Respondent, all that is known about the Respondent is what is set out in the Complaint. 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 and numerous links to popular music albums. Those depicted on the website include albums by the late Michael Jackson entitled “Dangerous”, “Thriller”, “Bad”, “Off the Wall, “Smooth Criminal”; and “King of Pop” as well as albums by numerous other artists. The Complainants characterise this as being
“... 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 The Respondent's website also links to the First Complainant's website at . 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 two reasons. First, the trademark has been used in its entirety with the addition of the generic suffix “top”. The addition of that generic word does nothing, the Complainants say, to distinguish the disputed domain name from the RAPID SHARE trademarks. In this respect, the Complainant cites the Decision in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 and 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 CTM Registration No. 004753828 “RapidShare”. 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 trademarks, 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., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,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 filed in both the United States and Europe since 2005, well before the disputed domain name was created in September 2008. Second, the First Complainant's RAPID SHARE hosting / file sharing business was well established by September 2008, 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 Complainants' trademarks. In the circumstances, the Complainants say there is clear evidence of registration in bad faith. The Complainants cite in support of that contention the decision in Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT ,WIPO Case No. D2007-1193.
5.A.5 Furthermore, the reference on the Respondent's website to the First Complainant's website – noted in paragraph 4.B.2 above – indicates, the Complainants say, the Respondent having actual knowledge of the Complainant and thereby the Complainants' RAPID SHARE trademarks.
5.A.6 Still further, the Complainants point to the Respondent's website carrying advertisements aimed at United States residents. The Complainant says that this indicates that the Respondent must also be deemed to have had constructive knowledge of the Complainants' well-known RAPID SHARE trademarks.
5.A.7 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. In that respect, the Complainant cites the Decision in Realtime Forex SA v. Rhone Consultants SA,WIPO Case No. D2006-0089.
5.A.8 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 Limited,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. 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 this 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 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 suffix “top” does not avoid confusing similarity with the Complainants' trademark.
6.7 Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 In the absence of a Response and on the facts as presented, there is nothing to indicate to the Panel 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 services comparable in certain respect to those offered on the very widely used website operated by the First Complainant. Thus, the Panel holds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy. Registration and Use 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. As the Complainant points out (see paragraph 5.A.5 above﴿ the reference on the Respondent's website to the First Complainant's website is a clear indication of actual knowledge of the Complainants' operations and, consequently, of its rights in the RAPID SHARE name and mark.
6.10 As to use, the disputed domain name is being used to mimic certain of 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. It is that unauthorised use which will bring Internet users to the Respondent's website in the mistaken belief that it is associated with the First Complainant. Such use falls fair and square within paragraph 4(b)(iv) of the Policy.
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 Complainants themselves have 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 the determination of this administrative proceeding. Bad faith registration and use are found for the reasons set out in paragraphs 6.9 to 6.10 above and, consequently, the Panel holds that the Complainants have met the 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
Full & Egal Universal Law Academy