WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. zuo xingyu Case No. D2010-0627 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP of the United States of America.
The Respondent is zuo xingyu of People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 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 Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On April 22, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 23, 2010 the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 26, 2010. The Center verified that 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 April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on May 21, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 27, 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. 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 March 3, 2008.
The disputed domain name resolves to a website, which consists of a search engine designed to locate and share computer games and video games online. The website also offers pay-per-click links to other websites. 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 disputed domain name to enable copyright infringement of third-party owned copyright 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 did not file a formal substantial reply to the Complainant's contentions. 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 United States trademark registration No. 3313895 – RAPID SHARE, with the registration date of October 16, 2007; Community trademark registration No. 04753836 – RAPID SHARE THE EASY WAY TO SHARE YOUR FILES & design, with the registration date of September 25, 2008; Community trademark registration No. 0475328 – 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 “links”, the additional hyphen 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 “links” and the additional hyphen do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants' RAPID SHARE trademark, as they are non-significant elements. 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: “[t]he 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 and the Respondent had failed to assert any such rights, or legitimate interest.
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. The Respondent did not submit a formal or otherwise substantial Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
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 registered the trademark. According to the evidence filed by the Complainants, the Complainants own a trademark registration for the RAPID SHARE trademark since the October 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 name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainants, the Panel finds that the disputed domain name leads Internet users to a website, consisting of a search engine designed to locate and share computer games and video games online. The website also offers pay-per-click links to other websites. 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 actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “[t]he registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
The disputed domain name also offers pay-per-click links to various websites. Previous WIPO UDRP panels have asserted the following: “It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of “domain name parking” or “pay per click” services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of “domain name parking” or “pay per click” service pages operate … When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name … The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page” (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
Further, the disputed domain name in which the Respondent has not 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). 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 name and the use made by the Respondent of the disputed domain name, 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 Complainant.
Jonathan Agmon
Sole Panelist
Dated: June 10, 2010
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