The Complainant is RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Protected Domain Services/Dmytro Gerasymenko of Denver, Colorado, the United States of America and Kyiv, Ukraine, respectively 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 29, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On July 1, 2010, N 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 July 13, 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 July 14, 2010 informing stating that it did not wish to amend 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 July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 11, 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.
The originally named Respondent, Protected Domain Services, filed a so-called “Informative Filing” on July 1, 2010, regarding the ownership of the disputed domain name. The Complainant objected to the acceptance of the Informative Filing of the Respondent, Protected Domain Services, on July 20, 2010, on the basis that the Policy does not provide a mechanism for such a filing. 4. Factual Background
The Complainant was founded in 2006, and is a host site which provides for the storage and transfer of large data in a secure format for its users and customers. The Complainant’s website at was the twelfth most visited homepage in the world at the time the Complaint was filed.
The Complainant owns a United States Trademark Registration for the trademark RAPID SHARE (Registration No. 3,313,895) and two CTM Registrations for RAPIDSHARE (Reg. No. 004753828) and RAPID SHARE THE EASY WAY TO SHARE YOUR FILES & Design (Reg. No. 004753836).
The domain name was created on January 6, 2009. The registrant listed on the WhoIs is Protected Domain Services (Annex 1). The Respondent, Protected Domain Services, advised the Centre that the registrant of the domain name was in fact Dmytro Gerasymenko of Kyiv, Ukraine. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant’s trademark RAPID SHARE.
The Complainant submits that it owns a United States registration for RAPID SHARE (Reg. No. 3,313,895), and it owns two CTM trademark registrations for RAPID SHARE THE EASY WAY TO SHARE YOUR FILES & Design and RAPIDSHARE (Reg. Nos 004753836 and 004753828). The Complainant contends that the dominant element of the trademark is the first word “rapid”. The Respondent has replicated the first and dominant element in the domain name and replaced the word “share” with the generic word “pedia”. The Complainant contends that the substitution of the word “pedia” does not distinguish the domain name from the Complainant’s trademark. Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the words “rapid share”, and would have no reason to use the word “rapid”. The Complainant also contends that the Respondent has never been authorized, licensed or given permission to use the Complainant’s RAPID SHARE Trademark. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name, and is using the domain name in connection with a website which provides a platform to facilitate users in file sharing activities, which is in direct competition to the Complainant’s services. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Complaint’s trademark is well-known and that the Respondent knew about the Complainant’s trademark rights when it registered the confusingly similar domain name; (ii) the Respondent is using the confusingly similar domain name to provide a platform for users to facilitate file sharing activities, which are in direct competition to the Complainant’s services; and (iii) the Respondent is using the confusingly similar domain name to enable copyright infringement of third party-owned copyright materials. B. Respondent
The Respondent Dmytro Gerasymenko did not reply in any substantive detail to the Complainant’s contentions and the Respondent Protected Domain Services submitted the previouslyy referred-to “Informative Filing”. The Respondent Gerasymenko did submit brief emails on July 2, 2010 and July 14, 2010 indicating he is the owner of the domain namely stating, inter alia, that he erased the “word” rapidshare” from the “site logo and text”, and briefly referring to a disclaimer page stating they have no relation to Rapidshare, but otherwise failing to substantively respond to Complainant’s allegations. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
As an initial point, the issue of the naming of Protected Domain Services as a sole Respondent needs to be considered. Upon being served with the Complaint, Protected Domain Services advised WIPO that an individual named Dmytro Gerasymenko was the actual registrant of the domain name. The Complainant declined the Centre’s invitation to amend the Complaint to include Mr. Gerasymenko as the Respondent. Although an amended Complaint would have reflected a complete record of the ownership of the domain name in this dispute, the decision not to amend the Complaint does not constitute a procedural or substantive failure in this proceeding. The Panel notes with approval the reasoning in Research in Motion Limited v. PrivacyP/Pluto Domain Services Private Limited,WIPO Case No. D2009-0324: “The principal reasons for this is that in this Panel’s view a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration. See F. Hoffman-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881. Neither Complainant nor the provider is to blame if the underlying registrant fails to receive actual notice of this proceeding because it selected a registrar that did not ensure re-transmission of applicable notice to the actual registrant.” The Panel notes that the Centre in this matter also provided notice to the individual Gerasymenko once his identity was disclosed. A. Identical or Confusingly Similar
The Panel finds that the Complainant owns a United States trademark registration and two CTM Registrations for the trademark RAPID SHARE, as evidenced by the Certificates of Registrations submitted with the Complaint.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it replicates the first and dominant element of the trademark. The Complainant has therefore satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel is prepared to find that the Respondent does not have a legitimate interest or right to the disputed domain name.
As noted below, the Panel finds that the Respondent must have been aware of the Complainant’s rights in the RAPID SHARE trademark when it registered the domain name. The Respondent Gerasymenko did not file any detailed or substantive response to the Complainant’s contentions and accordingly, the Respondent did not deny that it had such knowledge. The Respondent Protected Domain Services in effect denies any responsibility for the disputed domain name. The Respondent (whether considered to be Gerasymenko, Protected Domain Services or both) is operating a website in connection with the disputed domain name that provides the services of file sharing, data transfer and search engines, which is in direct competition to the Complainant’s services. These factors support the conclusion that the Respondent adopted its domain name in order to trade on the goodwill and reputation of the Complainant, and not because of any legitimate interest or right.
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find that the Respondent has registered and is using the confusingly similar domain name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark rights in the mark RAPID SHARE. The Respondent registered a confusingly similar domain name and is using the domain name in connection with operation of a website which provides the services of search engines, and file and data transfer, which is in direct competition to the Complainant’s services, and which is obviously the core business of the Complainant. The Panel refers to Annex 2 of the Complaint, which is a copy of a screen-shot from the Respondent’s website. This exhibit shows that the Respondent is using the mark: RAPID PEDIA RAPIDSHARE SEARCH ENGINE. This evidence clearly supports the conclusion that the Respondent was aware of the Complainant and its services, and the Panel is therefore prepared to infer that the Respondent is attempting to deliberately trade on the goodwill and reputation of the Complainant and the Complainant’s trademark for the purposes of monetary gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) under the Policy. 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.
Christopher J. Pibus
Sole Panelist
Dated: August 25, 2010
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