WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. Omer Ozkon Web Case No. D2010-0613 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 Omer Ozkon Web of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. 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 DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the disputed domain name. On April 20, 2010, DSTR Acquisition VII, LLC d/b/a D 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. An informal response was filed as an email with the Center on May 9, 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 with 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 filing date of September 21, 2005 and 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. 004753828 – 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 December 8, 2006.
The disputed domain name used to resolve to website, which provided a search engine designed to locate and share documents on line.
Currently, the disputed domain name resolves to a parking webpage, which displays the following announcement: “Oops! Internet Explorer could not find www.”. 5. Parties' Contentions A. Complainant
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 it 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 name 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 filed an informal response with the Center on May 9, 2010. In its response, the Respondent argued that it was not his intention to infringe upon the Complainant's rights. Further, the Respondent argued that the website he operated under the disputed domain name was non-profit website. The Respondent further argued that he did not promote the Complainant's operations in the websites that operated under the disputed domain name. 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. 004753828 – 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 word “link” 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 word “link” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants' RAPID SHARE trademark, as it is a non-significant element. 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 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. The Respondent did not assert such rights in his response to the Complaint.
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. In his response, the Respondent did not provided any evidence to show that he has any rights or legitimate interests in the disputed domain name. On the contrary, the Respondent informal response suggests that the Respondent has not received authority to use the disputed domain name and said he had no intention to infringe on the Complainant's trademark.
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 filed their trademark for registration. According to the evidence filed by the Complainants, the Complainants first filed the mark RAPID SHARE for registration on September 21, 2005. The disputed domain name was registered over one year later, on December 8, 2006. It is unlikely that the Respondent could have registered the disputed domain name without having in mind the Complainants and their trademark. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainants was filed for registration prior to the registration of the disputed domain name (See Nokia Corporation v. Javier Campana,WIPO Case No. D2010-0247).
From the evidence submitted by the Complainants, the Panel finds that the disputed domain name used to lead Internet users to a website, consisting of a search engine designed to locate and share documents on-line. The Respondent's use of the domain name to promote services that could be seen by some 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”.
The disputed domain name currently resolves to an error webpage. Nevertheless, the fact that the Respondent has ceased the use of the domain names 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 WIPO 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).
In light of the Complainant's well known mark, the Panel finds that the registration of the disputed domain name in the name of the RAPID SHARE mark shows the Respondent intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainants distinctive trademark for quasi identical goods constitutes bad faith on behalf of the Respondent.
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, and the response submitted by the Respondent, 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 4, 2010
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