WIPO Domain Name Decision D2010-0626 for rapidsharetvlinks.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG and Christian Schmid v. Yaroslav N Andropov Case No. D2010-0626 1. The Parties

The Complainant is RapidShare AG (the First Complainant) and Christian Schmid (the Second Complainant) of Cham, Switzerland (together “the Complainants”), represented by Greenberg Traurig, LLP, United States of America (“US”).

The Respondent is Yaroslav N Andropov of Zelenograd, Moscow, Russian Federation. 2. The Domain Name and Registrar

The disputed domain name is registered with Regional Network Information Center JSC d/b/a RU-CENTER. 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 Regional Network Information Center JSC d/b/a RU-CENTER a request for registrar verification in connection with the disputed domain name. On April 23, 2010, Regional Network Information Center JSC d/b/a RU-CENTER transmitted by email to the Center its verification response confirming registrant and contact information for the disputed domain name.

The Center noted that the expiry date of the disputed domain name was May 13, 2010 and sought confirmation from the Registrar that the domain name will remain in the lock status after the lapse of the expiry date until these proceedings were concluded and inquired whether any action was required by either of the Parties to these proceedings. The Registrar confirmed in email communications on April 26 and 29, 2010 that the disputed domain name will remain under a lock status until the resolution of these proceedings and that no further action was required by either of the Parties.

On April 29, 2010, the Center requested the Complainants to amend their Complaint. The Complainants submitted an amended Complaint and also confirmed that a copy of the Complaint has been sent to the Registrar on April 29, 2010.

On April 29, 2010, the Center also communicated to the parties regarding the language of the proceedings. As the Complaint was submitted in English but the Registrar confirmed that the language of the registration agreement for the disputed domain name was Russian, the Center invited the Complainants to either:

a) provide satisfactory evidence that there is an agreement between the Parties to the effect that the proceedings should be in English; or

b) submit the Complaint translated into Russian; or

c) submit a request for English to be the language of the administrative proceedings together with any arguments and supporting material as to why the proceedings should be conducted in English.

On April 29, 2010, the Complainants submitted a request that the language of the proceedings should be English due to the disputed domain name being consisted of English terms only, and due to the fact that the contents of the website associated with the disputed domain name are in English.

On April 30, 2010 the Respondent objected English to be the language of the proceedings because the Parties did not provide an agreement to the proceedings being conducted in English and because there was no evidence that the Respondent knew English.

The Complainants further reiterated their arguments for the proceedings to be conducted in English in a communication dated May 3, 2010 highlighting that the Respondent did not address the English contents of the website associated with the disputed domain name and that the Respondent (in the single English sentence requesting for the communications to be in Russian) used a colloquialism "don't", which an English non-speaker is unlikely to know and that demonstrated Respondent's knowledge of English.

The Respondent on May 3, 2010 further requested for the language of the proceedings to be in Russian due to not having knowledge of English.

The Center verified that the Complaint together with the 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 3, 2010. The Center also notified the Parties that the Center has decided to accept the Complaint as filed in English, to accept a Response in either English or Russian and to appoint a Panel familiar with both languages if possible.

In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 25, 2010.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on June 4, 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 First Complainant is the owner of a RAPID SHARE THE EASY WAY TO SHARE YOUR FILES (& Design) trademark, CTM registration number 004753836 with a priority date of November 21, 2005.

The First Complainant is also the owner of a RAPIDSHARE trademark, CTM registration number 004753828 with a priority date of November 21, 2005.

The Second Complainant is the owner of a United States of America RAPID SHARE trademark, United States registration number 3313895 with a priority date of September 21, 2005.

The Complainants' service, RapidShare, was founded in 2006 and is one of the biggest and fastest one-click file hosts in the world. Within a short time the Complainants succeeded in rising to become the twelfth most visited homepage in the world. The Complainants prohibit and discourage copyright infringement through the use of the services they provide and their website contains a reporting mechanism of copyright infringements.

The disputed domain name was registered on May 13, 2009. 5. Parties' Contentions A. Complainants

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights:

- The disputed domain name is identical or confusingly similar to the Complainants' marks as it consists of the entire trademark (in case of the US trademark registration) or of the dominant part of the trademark (in case of the CTM trademark & design registration), deleting portions of the trademarks and adding a generic term “tvlinks”. Further the disputed domain name contains the entirety of the CTM trademark RAPIDSHARE adding only the generic element “tvlinks”. The addition of a generic element “tvlinks” does nothing to distinguish the disputed domain name from any of the registered trademarks.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected non-commercial or fair use of the disputed domain name.

- The Respondent uses the disputed domain name to drive traffic to a website, which provides numerous links to assist web users who wish to violate copyright of third parties by locating and sharing copyright protected documents online. The Complainants submit that illegal use of another's trademark cannot constitute a bona fide or fair use. The Complainants have not granted the Respondent any license, permission or authorization through which the Respondent could own or use any domain name registrations that are identical or confusingly similar to any of the Complainant's trademarks.

- The Respondent is not commonly known by the disputed domain name. The WhoIs record reveals that the Respondent is commonly known as Yaroslav N Andropov.

(c) The Respondent registered and is using the disputed domain name in bad faith:

- The Respondent registered the disputed domain name in bad faith, as the Respondent's own web page reveals knowledge of the Complainants. Even if there was no such admission by the Respondent itself, the totality of the circumstances indicate that the Respondent knew of the Complainants at the time of registration of the disputed domain name, particularly as the disputed domain name is nearly identical to the Complainant's trademarks.

- The Respondent is using the disputed domain name in bad faith as the Respondent is using it to enable activity resulting in infringing of third-party copyrighted materials through the website associated with the disputed domain name. Such use in violation of established public policy cannot constitute a bona fide use and must therefore be a bad faith use of the disputed domain name. The Respondent further makes no attempt on the website associated with the disputed domain name to discourage such copyright infringement.

- The Respondent is also using the disputed domain name for commercial gain. The website associated with the disputed domain name contains several advertisements to other websites. Such evidence qualifies as evidence that the disputed domain name was registered and is being used in bad faith. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceedings

The Panel has noted communications from the Complainants and the Respondent regarding the language of the proceedings.

According to the Rules the language of the registration agreement should be the language of the proceedings, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should provide evidence that language other than that of the registration agreement should be the language of the proceedings and the complainant should submit a request for the proceedings to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceedings.

In this case, the Panel finds that English should be the language of the proceedings for the following reasons:

- The disputed domain name consists of English terms. It contains the two words “rapid” and “share”, both being English words and constituent elements of the Complainants' trademarks. The abbreviation “tv” is an English abbreviation for “television” and while common in other languages, its predominant use is in English language. Finally the fourth element of the disputed domain name “links” is a plural of an English word “link” and together with “tv” appears to refer to the content of the website associated with the disputed domain name, which provides links to materials featuring US TV shows. In Panel's opinion this clearly demonstrates knowledge of English by the Respondent as the Respondent shows understanding of English through the use of the English terms of the Complainants' trademark, an English abbreviation, and the term “tvlinks”.

- The website associated with the disputed domain name is entirely in English with no Russian text on it. The Respondent has failed to address this evidence in the communications regarding the language of the proceedings (even though invited to do so in Russian). This, in the Panel's view is clear evidence that either the Respondent or other persons associated with the Respondent have working knowledge of English. The Panel notes that the website with the disputed domain name contains no or little spelling or grammatical mistakes in English. While this perhaps may have been a simple copy and paste exercise on part of the Respondent, the Panel finds that in the circumstances of this case this amounts to sufficient evidence of either the Respondent or persons associated with the Respondent having command of English necessary to be able to understand the nature of these proceedings as well as the arguments outlined in the Complaint.

- Further it is the Panel's view that if the Complainants were required to submit a translation of the Complaint, this would unjustly prejudice the Complainants as this would result in a delay to the proceedings as well as the Complainants having to incur further costs. The Panel also notes that the Respondent has failed to file any Response to the Complaint to date and only disputed the language of the proceedings without providing any plausible arguments as to its request for Russian to be the language of the proceedings.

The Panel notes that it is appropriate to conduct the proceedings in English rather than in Russian taking into account the above criteria. It is of importance that both the disputed domain name as well as the website associated with the disputed domain name are in English and such elements tend to demonstrate the Respondent's knowledge of English. The Panel concludes that the Respondent or persons associated with the Respondent have knowledge of English sufficient to be able to understand the nature of these proceedings.

Further the Panel notes that the Respondent was given the option of submitting the Response in Russian. The Respondent would have been able to submit the Response in Russian and the Panel would have considered such a Response irrespective of the language. However the Respondent has failed to file any Response and the Panel may draw such inferences from this fact as it considers appropriate (paragraph 14(b) of the Rules). B. Identical or Confusingly Similar

The Complainants have registered both US and CTM trademarks, all incorporating the RAPID SHARE term. The Complainants submit that the disputed domain name is identical or confusingly similar to one of their trademarks as the disputed domain name incorporates the distinctive part of their trademarks, namely RAPID SHARE.

The Panel finds that the inclusion of a generic element after a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such a domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely descriptive “tvlinks” element in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such term in the domain disputed domain names may each increase the risk of confusion for the Internet users taking into account that the Respondent's activity is similar to that of the Complainants.

The Respondent's activity under the disputed domain name is to provide links for downloading various materials including TV shows. Considering that the Complainants are also in the business of hosting files it is clear in the Panel's view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainants (as well as with their trademarks) which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).

In any event the Panel finds the disputed domain name to be confusingly similar to the Complainants' trademark RAPID SHARE.

The Panel finds that the Complainants have satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainants' assertions, the Panel will need to consider whether the Respondent's use of the disputed domain name would indicate the Respondent's rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainants' contentions, the Respondent in this proceeding has not attempted to demonstrate its rights and legitimate interests.

Firstly, there is no evidence that before any notice of the dispute with the Complainants, the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainants the disputed domain name is associated with a website that provides links to copyrighted materials owned by third parties. This website would then appear to enable to download such materials. This, in the Panel's view, cannot constitute a bona fide offering of goods and services in the circumstances of this case.

Secondly, as to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on May 13, 2009. The Complainants assert that they have had an established Internet presence since 2006 and are widely known by the RAPID SHARE and other associated trademarks, which are recognized at US national and Community levels.

It is the Panel's view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainants' trademarks as well as the goodwill associated with them.

Accordingly the Panel finds that the Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy since such use is based on benefiting from the Complainants' goodwill and the current use of the disputed domain name would appear to enable copyright infringement of rights owned by third parties.

The Panel finds the Complainants have carried out their burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who is the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainants contend that the Respondent has acted in bad faith because the disputed domain name was registered and used for the purpose of enabling copyright infringement of third party owned materials using the Complainants' trademarks and goodwill associated with them for potential commercial gain. However, a finding as to legality of copyright infringing nature of Respondent's operations is not necessary for determination of this administrative proceeding. See, e.g., RapidShare AG, Christian Schmid v. Ladder Group,WIPO Case No. D2010-0588.

The Panel finds that the mostly likely it was the Respondent's intention to register the disputed domain name for initiating a website with the disputed which would attract attention from the public inter alia because of its seeming association with the Complainants' trademarks and services. At the same time it would create a risk of confusion with the Complainants' trademarks and services as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

The Respondent does not appear to conduct any legitimate business activity using the disputed domain name. The Respondent most likely knew the Complainants' trademarks and intended to benefit from the Complainants goodwill while registering the disputed domain name. This is evidenced by the established nature and popularity of the Complainants' services. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

Finally the Panel further draws inference of bad faith on part of the Respondent from the failure of the Respondent to submit a Response to the Complaint.

The Panel finds that the Complainants presented sufficient evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy and that the Respondent registered and used 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.

Irina V. Savelieva
Sole Panelist

Dated: June 23, 2010

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