WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG and Christian Schmid v. Tim Keyser Case No. D2010-0621 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Tim Keyser of Masse, Germany. 2. The Domain Name and Registrar
The disputed Domain Name is registered with Spot Domain LLC dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. On April 21, 2010, the Center transmitted by email to Spot Domain LLC dba D a request for registrar verification in connection with the disputed Domain Name. On April 21, 2010, Spot Domain LLC dba D. 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 disputed Domain Name. 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 Luca Barbero 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
The Complainants are RapidShare AG, a Swiss corporation providing hosting services through the web site “”, and Mr. Christian Schmid, both based in Cham, Switzerland.
Mr. Christian Schmid is the owner of the United States of America Trademark Registration No. 3313895, for RAPID SHARE (hereinafter, also, “the Trademark”), filed on September 21, 2005, in International class 42, which has been licensed by Mr. Schmid to RapidShare AG.
RapidShare AG is the owner of the Community Trademark Registration No. 4753828 for RAPID SHARE, filed on November 21, 2005, in classes 25 and 35, and of the Community Trademark Registration No. 4753836 for Rapid Share THE EASY WAY TO SHARE YOUR FILES and design, filed on November 21, 2005, in classes 25 and 35.
The domain name owned by the Complainants was registered by Mr. Christian Schmid on May 27, 2002, while the Domain Name was registered by the Respondent on March 11, 2007. 5. Parties' Contentions A. Complainants
The Complainants point out that RapidShare, which was founded in 2006, is “one of the biggest and fastest one-click file hosts in the world” and that the web site “” is the twelfth most visited homepage in the world. The Complainants inform the Panel that, thanks to “a storage capacity of several petabytes (a million gigabytes) and an Internet connection that transfers hundreds of gigabytes simultaneously, Complainant has the infrastructure required to meet high demands”.
The Complainants contend that the Domain Name is confusingly similar to the Trademark in which Complainants have rights as it reproduces the trademark RAPID SHARE in its entirety, with the addition of the generic term “king” and of the top-level domain name suffix “.com”.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainants state that the Respondent has never made and is not making a bona fide or fair use of the Domain Name, since the Respondent is diverting Internet users to a website in which a search engine and numerous links are provided, enabling Internet users to share copyright protected documents.
The Complainants underline that the Respondent has not been granted “any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant's marks” and that “the Respondent is not commonly known as “”.
With reference to the circumstances evidencing bad faith, the Complainants indicate that, in light of the Complainants' prior trademark rights on the sign RAPID SHARE, based on the above-mentioned Community Trademark Registrations, which are valid also in Germany, where the Respondent is based, the Respondent “had actual or at least constructive notice of Complainant's well-known trademark”. The Complainants also state that the Respondent' knowledge of the Complainants' Trademark is demonstrated by the fact that the Domain Name is redirected to a web site in which services apparently similar to the Complainants' ones are provided and in which is made direct reference to the Complainants, with the indication, at the bottom of the home page: “Rapidshare King is unique, user-friendly web site providing direct download links for latest movies and TV shows at R”.
As further circumstances evidencing bad faith in the use of the Domain Name, the Complainants highlight that the Respondent is publishing advertisements to third parties' web sites and is enabling copyright infringements through its own web site, by assisting Internet users in sharing third party-owned copyright materials. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has 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. A. Domain Name Identical or Confusingly Similar
The Complainants have provided evidence of ownership of the United States of America Trademark Registration No. 3313895, for RAPID SHARE (hereinafter, also, “the Trademark”), filed on September 21, 2005, in International class 42; of the Community Trademark Registration No. 4753828 for RAPID SHARE filed on November 21, 2005, in classes 25 and 35; and of the Community Trademark Registration No. 4753836 for Rapid Share THE EASY WAY TO SHARE YOUR FILES and design, filed on November 21, 2005, in classes 25 and 35.
The Panel finds that the Domain Name is confusingly similar to the Trademark owned by the Complainants, since it entirely reproduces the Trademark of the Complainants with the mere addition of the descriptive term “king”.
Pursuant to a number of prior decisions rendered under the Policy, in fact, the addition of a descriptive term to a trademark is not a distinguishing feature.
See, inter alia, Pepco Holdings, Inc. v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2009-1336, with reference to the domain name , in which it was stated: “The Panel notes that the addition of a generic term, i.e. “services”, to the trademark PEPCO is not sufficient to avoid confusion. As has often been held by previous decisions, a domain name which includes either whole or partially, a Complainant's registered trademark is typically considered to be confusingly similar to it.”
In view of the above, the Panel finds that the Complainants have proven that the Domain Name is confusingly similar to the Trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating any of the circumstances of paragraph 4(c) of the Policy.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainants' prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' Trademark. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name.
The Panel notes that the Domain Name is redirected, at the time of drafting the decision, to a web site providing services apparently similar to the Complainants' ones, publishing advertisements to third parties' web sites and enabling Internet users to download, through a search engine and several links, prima facie copyrighted material, including, e.g., softwares, music files, movies and videogames. Such use cannot be considered either a bona fide offering of goods or services, or a legitimate, non-commercial or fair use of the Domain Name.
Moreover, it has been repeatedly stated that, when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of i) the prior domain name registration for dated May 27, 2002, ii) the pre-existing trademark rights of the Complainants on the sign RAPID SHARE, with Community Trademark Registrations since 2005 valid also in Germany, where the Respondent is based, and iii) the fact that the Respondent is offering, on the web site “www.”, services similar to the ones provided by the Complainants and is also making explicit reference to the Complainants, the Respondent was aware of the Complainants' Trademark when decided to register the Domain Name in 2007.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in Realtime Forex SA v. Rhone Consultants SA,WIPO Case No. D2006-0089 “Since the disputed Domain Name is so obviously connected with the trademark and company name of the Complainant, its very use by someone with no connection with the Complainants suggests opportunistic bad faith”.
The Panel finds that, in light of the contents of the web page which is linked to the Domain Name and described above, Internet users might be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website according to paragraph 4(b)(iv) of the Policy. See, i.a., eBay Inc. v. David Sach,WIPO Case No. D2009-1083, concerning the domain name , in which it was stated: “Respondent's use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant's EBAY mark as to source, sponsorship, affiliation, or endorsement”.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, on balance, the Panel finds that the Domain Name was registered and is being 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.
Luca Barbero
Sole Panelist
Dated: June 4, 2010
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