WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. Johan Domonji Case No. D2010-0622 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 Johan Domonji of Serbia. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, Inc. 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 GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 21, 2010, GoD, Inc. 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, 2013. An informal response was filed as two emails with the Center on April 23, May 3, 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. 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. 00475328 – RapidShare, with the registration date of September 25, 2008.
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 names on the following dates:
The disputed domain name was registered on May 24, 2009;
The disputed domain name was registered on July 5, 2009.
The disputed domain names used to resolve to websites, which provided search engines 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.”.
The disputed domain name currently resolves to a parking webpage, which displays the following announcement: “Internet Explorer cannot display the webpage”. 5. Parties' Contentions A. Complainant
The Complainants argue that the disputed domain names are identical or confusingly similar to the RAPID SHARE trademark, owned by the Complainants, seeing that they incorporate 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 he is not commonly known as “” or “”.
The Complainants further argue that the disputed domain names are 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 names 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 names 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 names.
For all of the above reasons, the Complainants request the transfer of the disputed domain names. B. Respondent
The Respondent filed two informal responses with the Center on April 23, 2010 and on May 3, 2010. In its responses, the Respondent argued that the disputed domain names are owned by two different individuals. The Respondent acknowledged that he has promoted the Complainant's operations on the websites that operated under the disputed domain names, but maintained that it was not his intention to infringe upon the Complainant's rights. Further, the Respondent argued that the websites he operated under the disputed domain names were non-profit websites. 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 names are 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. 00475328 – RapidShare, with the registration date of September 25, 2008.
The disputed domain name differs from the registered RAPID SHARE trademark by the additional word “tang” and the gTLD “.com”.
The disputed domain name differs from the registered RAPID SHARE trademark by the additional number “4”, the additional word “movies” and the gTLD “.com”.
The disputed domain names integrate 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 “tang” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants' RAPID SHARE trademark, as it is without relevant meaning. The additional number “4” and word “movies” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants' RAPID SHARE trademark either, especially as they represent a service that is regularly rendered under the RAPID SHARE mark. 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 names 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 names.
Consequently, the Panel finds that the Complainants have shown that the disputed domain names are 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 names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainants alleged that the Respondent has no rights or legitimate interests in respect of the domain names. The Respondent did not assert such rights in his responses 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 responses, the Respondent did not provided any evidence to show he has any rights or legitimate interests in the disputed domain names. Further, the Respondent did not provided evidence to support his claim that two different individuals own the disputed domain names, and therefore the Complaint cannot include both domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainants must show that the Respondent registered and is using the disputed domain names 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 names after the Complainants registered their trademarks. According to the evidence filed by the Complainants, the Complainants own a trademark registration for the RAPID SHARE trademark since the year 2007. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainants, was registered prior to the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
From the evidence submitted by the Complainants, the Panel finds that until recently, the disputed domain names led Internet users to websites that included search engines designed to locate and share documents on-line. The Respondent's use of the trade name “rapid share” to promote services that are somewhat similar to the services rendered by the Complainants clearly evidences that the Respondent registered the disputed domain names 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 names currently resolve to error webpages. 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 names are 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). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the RAPID SHARE trademark in the domain names and the previous use made by the Respondent of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
It is unnecessary for the Panel to consider the Complainant's contentions with respect to alleged Respondent copyright infringement. The Policy is concerned with preventing clear cases of abusive registration and use of trademarks in domain names; it does not extend to providing a means of redress for allegations of copyright infringement nor are administrative Panels under the Policy equipped or empowered to decide such issues.
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 names 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 names and be transferred to the Complainants.
Jonathan Agmon
Sole Panelist
Dated: June 10, 2010
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