WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG and Christian Schmid v. Moniker Privacy Services/ Registrant [2797146]: Scott Myers, Famous Creative Case No. D2010-0888 1. The Parties
The Complainant is RapidShare AG and Christian Schmid, Gewerbestrasse of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Moniker Privacy Services/ Registrant [2797146]: Scott Myers, Famous Creative of Pompano Beach, Florida, United States of America and Quebec, Canada, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 2, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On June 2, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an email communication on June 3, 2010, indicating it wishes not to amend the Complaint. 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 June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Response was filed with the Center on June 28, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on July 8, 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 Complainant, based in Switzerland, describes itself as operating a one click file host website from “”. It has owned various trade mark registrations since November 2005 for its RAPIDSHARE trade mark including, United States trademark registration number 3313895 and Community Trademark registration number 004753828 both for the word mark RAPIDSHARE and for a range of goods and services. It also owns a combined word and device mark featuring the words Rapid Share THE EASY WAY TO SHARE YOUR FILES under Community Trade Mark Number 004753836.
The Disputed Domain Name is registered in the name of Moniker Privacy Services but Mr. Scott Myers contends that he is the real registrant. 5. Parties' Contentions A. Complainant
The Complainant submits that it was founded in 2006 and has become one of the biggest and fastest one-click file hosts in the world, having risen to become the twelfth most visited homepage in the world.
The Complainant says that the Disputed Domain Name is identical or confusingly similar to the Complainant's marks as it consists, in the case of the US RAPID SHARE Mark of the entirety of the mark deleting portions of the mark and adding the generic element “downloadfrom” and in the case of the Community trademark RAPID SHARE & Design of the dominant portion of the mark, namely “rapid share”, and in the case of the Community trademark RAPIDSHARE of the entirety of the mark adding only the generic element “downloadfrom”. The Complainant says that the addition of the generic element “downloadfrom” does nothing to distinguish the domain name from either mark. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (December 9, 2000): F. Hoffmann-La Roche AG v. Rudiger Meissner,WIPO Case No. D2009-1127 (October 5, 2009).
The Complainant says that the Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name and is not making a protected noncommercial or fair use of the Disputed Domain Name. Neither is the Respondent commonly known as . The WhoIs record instead reveals that the Respondent is commonly known as “Moniker Privacy Services.”
It says that the Respondent uses the Disputed Domain Name to drive Internet traffic to its website, which provides a search engine to assist web users who wish to violate the copyrights of others by locating and sharing copyright protected documents online. Illegal use of another's trademark cannot be considered a “bona fide” or fair use. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (January 16, 2001) (“But illegal use of another's trademark cannot be considered to be bona fide use[. . .]”). Further the Complainant says that it has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of theComplainant's marks.
As to bad faith the Complainant says that the Respondent is located in the United States where Complainant has trademark rights on the United States federal registry which pre-exist the registration date of the Disputed Domain Name and therefore the Respondent had actual notice or at least constructive notice of the Complainant's well known mark. Further, the Complainant submits that the similarity between the Disputed Domain Name and its trademarks and the coincidence of registration only eight months after the Complainant's services were first offered on-line is such that the circumstances indicate that the Respondent knew of the Complainant at the time of registration and is indicative of registration in bad faith.
The Complainant submits that the Respondent is using the Disputed Domain Name to provide a search engine under the Complainant's RAPID SHARE trademark. Such services are identical to some of the services set forth in the statement of services in the Complainant's CTM RAPIDSHARE Mark, namely “presentation of goods and services”. The Complainant therefore submits that the use of a nearly identical domain name to conduct identical and related services shows opportunistic bad faith on the part of the Respondent and relies in this regard on the decision in Realtime Forex SA v. Rhone Consultants SA,WIPO Case No. D2006-0089 (April 13, 2006).
Further the Complainant says that the Respondent is using the Disputed Domain Name to enable copyright infringement of third party-owned copyright materials. Such a use in violation of established public policy cannot give rise to a claim of bona fide use and must therefore be a bad faith use of the Disputed Domain Name. B. Respondent
The Respondent submits that the Disputed Domain Name is neither identical nor confusingly similar to the Complainant's RAPID SHARE trade mark. Containing the words “download from…..” it is apparent according to the Respondent that the Disputed Domain Name is not operated by the Complainant and no reasonable consumer would be so confused. Further there is a notice on the Respondent's website which it says clearly dispels any potential confusion that it may be associated with the Complainant.
The Respondent submits that it has a legitimate interest in using the Disputed Domain Name in that its website permits people to be aware of Rapidshare's hosted catalogue that is open to the general public in order that the user can therefore more easily search Rapidshare's hosted content.
The Respondent submits that the Disputed Domain Name is not being used in bad faith as it is merely providing an original service and not infringing on any intellectual property right. Its function is merely to assist users to search and visit “”. 6. Discussion and Findings
The Respondent's submission was filed by Mr. Scott Myers who is not listed as the registered owner of the Disputed Domain Name but rather operates through a privacy service operated by Moniker Privacy Services a division of the Registrar for the Disputed Domain Name. The Registrar has confirmed that Mr. Myers is the registrant (albeit undisclosed in the public WhoIs data) in this case and the Complainant has declined the Center's invitation to it to amend its Complaint. Consistent with prior UDRP decisions (e.g. Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320) that is Complainant's prerogative, however such election by Complainant does not resolve the issue of the identity of the proper Respondent for the purpose of the Panel issuing a decision of under the Policy. In the present case, the issue is complicated by the apparent use of a privacy service and the registrar's provision (within three days of being requested) of the name of “[Registrant [2797146]: Scott Myers, Famous Creative]” as being that of the registrant, and the timely submission of a Response from Mr. Myers.
In these circumstances, in view of the lack of provision in the UDRP Rules concerning privacy services, the Panel's residual discretion to conduct proceedings as appropriate and consistent with the position taken by previous panels it is within the discretion of the Panel to decide who the Respondents in the case should be and to decide accordingly whether submissions filed by or on behalf of the Respondents should be accepted.
In this case the Panel finds that both Moniker Privacy Services as the “official registrant” and Mr. Scott Myers as the undisclosed principal are the proper Respondents and that accordingly the Panel will admit the submission filed by Mr. Myers into these proceedings. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trademark rights both in the United States of America and in Europe for its RAPIDSHARE trademark.
The Panel finds that the Disputed Domain Name is not identical to the Complainant's RAPIDSHARE trade mark but is confusingly similar to it. This is because on an objective side by side assessment the Disputed Domain Name contains the Complainant's RAPIDSHARE mark and this is the key and distinctive element of the Disputed Domain Name. The Panel does not accept in the circumstances that the Respondent's assertion that a disclaimer on its website at the Disputed Domain Name dispels confusing similarity under the Policy. B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant says that the Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name and is not making a protected noncommercial or fair use of the Disputed Domain Name. Neither is the Respondent commonly known as and the Respondent is effectively using the Disputed Domain Name to drive Internet traffic to its website, which provides a search engine to assist web users who apparently wish to violate the copyrights of others by locating and sharing copyright protected documents online. Accordingly, the illegal use of another's trademark cannot be considered a “bona fide” or fair use.
The Respondent counters by saying that it is merely providing a search engine to assist web users who wish to search the Complainant's website. However the unauthorized use of another's trademark in the context of an identical domain name which contains no distinguishing element and merely in order to channel web traffic through its website, cannot constitute a legitimate or bona fide use of a domain name. Accordingly, the Panel finds that the Respondent has not successfully rebutted the Complainant's case and the Complainant succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Respondent admits that it uses the Disputed Domain Name in facilitate website users searching the Complainant's hosted content on its website. It does not dispute that the Disputed Domain Name “downloadfromrapidshare” literally means what it says and the Panel finds that it is clearly intended as an invitation to the public to visit the site in order to facilitate the download of materials from the Complainant's website. It is therefore clear to the Panel that the Respondent's registration of the Disputed Domain Name is much more than mere coincidence and that it registered the Disputed Domain Name expressly with this aim in mind and without the Complainant's approval this amounts to registration in bad faith.
The Respondent's subsequent use of the Disputed Domain Name in this manner has obviously been with the aim of attracting Internet users who wish to download content from the Rapidshare site. Whether in doing so they commit an act of copyright infringement or not is beyond the scope of the Panel's mandate under the Policy. However the mere fact that the Respondent admits that its intention is to facilitate access to the Complainant's hosted content and that Internet users may be initially attracted to the Respondent's website and be confused into thinking that it has some association with the Complainant when it does not, amounts in the Panel's view to use in bad faith for the purposes of the Policy. The Panel notes that the disclaimer on the Respondent's website does nothing to dispel an Internet user's initial confusion.
Accordingly the Complainant succeeds in relation to the third element of the Complaint. 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.
Alistair Payne
Sole Panelist
Dated: July 21, 2010
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