WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RapidShare AG, Christian Schmid v. BlueH Inc., Ben Ahmed Nejib Case No. D2010-0891 1. The Parties
The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland (together, the “Complainant”) represented by Greenberg Traurig, LLP, United States of America.
The Respondent is BlueH Inc. of Provo, Utah, United States, and Ben Ahmed Nejib of Lyon, France (together, the “Respondent”, except where expressly indicated). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with FastDomain, Inc. 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 FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On June 8, 2010, FastDomain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 9, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Respondent's default on July 1, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 9, 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. The proper Respondent
As noted in paragraph 3 above, the Registrar sent an email to the Center stating that that the true registrant of the Domain Name was Ben Ahmed Nejib of Lyon, France. The Center provided this information to the Complainant. The Complainant chose to continue these proceedings without amending the Complaint to name Ben Ahmed Nejib as the Respondent or as a co-Respondent. As the Complaint was not administratively deficient, the Center did not require the Complainant to amend the Complaint, and advised all parties that it took no particular position on what action should be taken by a complainant in these circumstances subject to the authority of the Panel to determine the proper Respondent.
As at the date of the Panel's decision (and, from the information supplied by the Complainant, as at the date the Complaint was filed with the Center) the WhoIs information for the Domain Name lists BlueH Inc. as the holder of the Domain Name.
The Panel finds that the Complainant's election not to amend the Complaint to name Ben Ahmed Nejib as the Respondent or co-Respondent does not affect the administrative validity of the Complaint in the present case. The Panel considers that the Complainant was entitled to rely on the WhoIs information at the time the Complaint was filed to identify the Domain Name holder, and the relevant entity at that time was the BlueH Inc. The Center quite properly brought the identity of Ben Ahmed Nejib to the attention of the Complainant, and gave the Complainant the opportunity to amend the Complaint, while informing the Complainant that the Complaint was not administratively deficient as filed.
Although the Panel is satisfied that BlueH Inc. is in a formal sense the appropriate Respondent, the Panel also regards Ben Ahmed Nejib as a relevant Respondent in substance and has therefore included it in this Complaint. The Center notified both Ben Ahmed Nejib and BlueH Inc. of the Complaint, so that both parties have had a fair opportunity to participate in these proceedings if they so wished: Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886 and Research In Motion Limited v. DomainDoorman LLC / Pertshire Marketing, Ltd, WIPO Case No. D2009-0321. 5. Factual Background
The Complainant is a Swiss corporation, filing together with its CEO, Mr. Christian Schmid. The Complainant's business includes Internet-based file hosting and the provision of computer software, which generate revenue for the Complainant via subscription fees from users of the services. The Complainant operates its business through the website accessed through the domain name and, prior to March, 2010, through the website accessed through the domain name .
The Complainant has been operating its business since around 2005, and has obtained trade mark and service mark registrations for its services consisting of or incorporating the name RAPID SHARE in a number of jurisdictions, including the United States (United States Service Mark No. 3,313,895) and the European Union (CTM No. 004753836 and No. 004753828) (together, the “Complainant's Trade Marks”). From the information provided in the Complaint, the earliest priority date of these marks is 2005.
The Respondent is a company with its principal place of business in Provo, Utah, and appears to be affiliated with the Registrar. Ben Ahmed Nejib is an individual residing in Lyon, France.
The Domain Name was registered on September 30, 2007. At the date of the Complaint, the Domain Name resolved to a website (the “Website”) that offers a “Rapidshare Search Engine” through which Internet users can download files, and contains advertisements to third party websites and services. At the date of the Panel's decision, the Domain Name was redirected via the domain name to what appears to be an identical website. 6. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) the Domain Name is identical or confusingly similar to the Complainant's Trade Marks, incorporating the Marks either in their entirety, or the dominant distinctive part of the Trade Mark, the addition of “1” adding no distinctive element;
(b) the use of the Domain Name to point to the Website that facilitates illegal downloads and copyright infringement is not a bona fide or fair use and is indicative of bad faith;
(c) the Complainant has not granted the Respondent any license, permission or authorisation to use its Trade Marks as, or as part of, a domain name;
(d) the Respondent is not commonly known by the term “RAPIDSHARE1.com”;
(e) the Respondent had actual or constructive notice of the Complainant's U.S. Trade Mark, such that the Domain Name was registered in bad faith in full knowledge of the Complainant's prior rights;
(f) the circumstances of the case indicate that the Respondent was aware of the Complainant and its business, since the Domain Name is nearly identical to the Complainant's Trade Marks and the Domain Name is being used for similar or related services, such that the Panel should find that the Domain Name has been registered and used in bad faith;
(g) the use of the Domain Name which is nearly identical to the Complainant's Trade Mark, in connection with services that are nearly identical to the Complainant's services indicated opportunistic bad faith on the part of the Respondent;
(h) the use of a disclaimer on the website does not dispel bad faith, and in fact is further evidence of the Respondent's knowledge of both the Complainant and the likelihood of confusion in the minds of Internet users as to the association between the Domain Name, the Website and the Respondent on the one hand, and the Complainant and the Complainant's business on the other; and
(i) the Respondent is using the Domain Name for commercial gain, by posting advertisements to third party websites and services on the Website, such use being sufficient for a finding of bad faith. B. Respondent
The Respondent did not formally reply to the Complainant's contentions.
Ben Ahmed Nejib sent a number of informal email replies in response to the Center's email notifications of the Complaint and the various stages of proceedings. On June 27, 2010, Mr. Nejib emailed the Center, stating that he had closed the Website to which the Domain Name resolved, together with the website to which another domain name held by him, resolved, and was now redirecting the Domain Name to another domain name not containing the word “rapidshare”. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in trade marks and service marks incorporating or consisting of RAPID SHARE. The Domain Name is clearly confusingly similar to those trade marks and service marks, incorporating the name RAPID SHARE in its entirety, the only difference being the inclusion of the numeral ”1”.
It is well-established that in cases where the distinctive and prominent element of a domain name is the Complainant's trade mark or service mark, and the only addition is a generic term or numeral that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark: see for example LEGO Juris A/S v. huangderong,WIPO Case No. D2009-1325 and National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a ,WIPO Case No. D2009-0121.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As to the issue of whether the Respondent has any rights or legitimate interests in respect of the Domain Name, the Complainant asserts that it has not licensed, permitted or authorised the Respondent to use the name RAPID SHARE as part of a Domain Name, and that, to the best of the Complainant's knowledge, the Respondent has never been known by the name RAPID SHARE.
Once the Complainant's rights in the mark are established, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that the consensus view among UDRP panelists is that the onus shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Respondent has failed to produce any evidence to show that it has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights (or lack thereof) in the Domain Name based on the Respondent's use of the Domain Name, in accordance with the available information.
At the time the Complaint was filed, the Domain Name resolved to the Website, which was active and contained a “Rapidshare Search Engine” through which Internet users could search and download electronic files. The Panel notes at this point that, although on June 27, 2010, the Respondent wrote to the Center and claimed that the Website had been closed, at the time of the Panel's decision, the Domain Name redirected through a different domain name to a website that appears to be identical to the Website. The Domain Name has therefore not been disabled and remains in use by the Respondent.
Having considered the evidence before it, the Panel considers that it cannot be said that the Respondent's use of the Domain Name can be considered legitimate, noncommercial or fair use, without intent for commercial gain to misleadingly divert customers away from the Complainant's website, so as to be excepted under paragraph 4(c) of the Policy. The Domain Name contains the Complainant's Trade Mark and is being used to point to a website which contains sponsored advertising links, for which the Respondent presumably receives referral fees. This is not a genuine or legitimate noncommercial use of the Domain Name: PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162 and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437.
The Panel therefore finds that the Complainant has successfully established that the Respondent has no rights or legitimate interests in the Domain Name, and as such, there is no need to consider the Complainant's contention that the Respondent is using the Domain Name for illegal means by facilitating copyright infringement (such questions would in any event be beyond the remit of the Policy). This Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel accepts that the Complainant has, in its five years of operation, quickly secured a significant share of the file hosting market within the Internet services industry, so that its RAPID SHARE Trade Marks are well-known in a number of jurisdictions.
It is also clear from the circumstances of the case that the Respondent was well aware of the Complainant and its Trade Marks in registering and using the Domain Name. The Domain Name was registered some three years after the Complainant began operations. It is difficult to imagine that the Domain Name - registered after the Complainant had commenced its business operations and acquired rights in the Trade Mark, and being used in connection with related services - was registered by coincidence.
Moreover, the Panel notes that the Website contains the following disclaimer:
“This site does not affiliated with R or other Rapidshare site with different tld. R is a Rapidshare search engine search on sites, forums, message boards for Rapidshare file links.” (sic)
The Panel accepts the Complainant's contentions that a disclaimer is ineffective to dispel bad faith in the use of the Domain Name, as by the time Internet users see the disclaimer, the unauthorised use has already occurred, and Internet traffic has already been diverted to the Website: Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869. Indeed, the Panel is of the view that the existence of the disclaimer is further evidence that the Respondent had prior knowledge of the Complainant's mark and registered the Domain Name with the intention to trade off the goodwill associated with the mark.
The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith, and that paragraph 4(a)(iii) of the Policy has been satisfied. 8. 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.
Gabriela Kennedy
Sole Panelist
Date: July 15, 2010
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