1.1 The Complainants are RapidShare AG and Christian Schmid of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
1.2 The Respondent is majeed randi of Hyderabad, India. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
3.2. 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 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2010.
3.3. The Center appointed Matthew S. Harris as the sole panelist in this matter on August 3, 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
4.1. The First Complainant, RapidShare AG, is a Swiss Corporation and the Second Complainant is an individual who gives an address in Switzerland. The First Complainant was founded in 2006 and supplies file sharing services from the website “”. It claims to be “one of the biggest and fastest one-click hosts in the world” and the “twelfth most visited homepage in the world”.
4.2. The Complainants are the owners of various trade marks that comprise or incorporate the words “Rapid” together with “Share”. They include:
(1) United States registered trade mark no. 3313895 in class 42 for the word mark RAPID SHARE in the name of the Second Complainant and filed on September 21, 2005; and
(2) Community Trade Mark no. 004753828 in classes 25 and 35 for the word mark RAPIDSHARE in the name of the First Complainant and filed on November 21, 2005.
4.3 The Second Complainant has licensed the First Complainant to use his marks.
4.4 The Respondent would appear to be an individual located in India.
4.5 Publicly available WhoIs details for the Domain Name record that the Domain Name was initially registered on October 19, 2008.
4.6 Prior to the filing of the Complaint in these proceedings a website operated from the Domain Name that had the appearance of a form of bulletin board. At the top of the page appeared the following text:
“Welcome to ..:: RapidPiracy # 1 Community for Desi Pirates!::..
There are many great benefits that are not available to guests at Rapid P including:
Download Appz, Cracks, Serials etc
Download Bollywood, Hollywood & Tollywood DVD Movies, Latest Videos & Music
Adult Pics, Clips, DVDs & Premium website Passes
Rapidshare, Megaupload Premium Accounts
Deal and Buy in MarketPlace All Kind of Stuff
Easy way to get Rapidshare Premium Account for Indians,
Use free Rapidshare download Service without Premium Account
http;//”
4.7. The Complaint appears to be one in a series of domain name complaints recently brought by the Complainant. Decisions published to date of which the Panel is aware are:
- RapidShare AG, Christian Schmid v. PrivacyP / N/A, ivanov yura, Yura Bilyk,WIPO Case No. D2010-0568 ()
- RapidShare AG, Christian Schmid v. ivano yura / PrivacyP,WIPO Case No. D2010-0569 ()
- RapidShare AG, Christian Schmid v. Bashkov Andrey Olegovish / PrivacyP,WIPO Case No. D2010-0570 ()
- RapidShare AG and Christian Schmid v. PrivacyP / Bashkov Andrey Olegovish (bashkov1980@),WIPO Case No. D2010-0571 ()
- RapidShare AG, Christian Schmid v. Asad / PrivacyP,WIPO Case No. D2010-0572 ()
- RapidShare AG, Christian Schmid v. Pieter Jan Peetermans, PJP Projects,WIPO Case No. D2010-0578 ()
- RapidShare AG, Christian Schmid v. Ladder Group,WIPO Case No. D2010-0588 ()
- RapidShare AG, Christian Schmid v. PrivacyP, Bashkov Andrey Olegovish,WIPO Case No. D2010-0590 ()
- RapidShare AG, Christian Schmid v. Private Registrations Aktien Gesellschaft Domain Admin,WIPO Case No. D2010-0591 ()
- RapidShare AG, Christian Schmid v. Rapidfind,WIPO Case No. D2010-0595 ()
- RapidShare AG and Christian Schmid v. The holder of the domain name ,WIPO Case No. D2010-0598 ()
- RapidShare AG, Christian Schmid v. Andrey Polev N/A,WIPO Case No. D2010-0599 ()
- RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao,WIPO Case No. D2010-0600 ()
- RapidShare AG, Christian Schmid v. PrivacyP, Domain Admin / n/a, Sergey Malgov,WIPO Case No. D2010-0608 ()
- RapidShare AG v. Mir Zack N/A,WIPO Case No. D2010-0609 ()
- RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran,WIPO Case No. D2010-0610 ()
- RapidShare AG, Christian Schmid v. ,WIPO Case No. D2010-0611 ( )
- RapidShare AG and Christian Schmid v. Sviatlana Astashenka,WIPO Case No. D2010-0612 ( )
- RapidShare AG, Christian Schmid v. Omer Ozkon Web,WIPO Case No. D2010-0613 ( )
- RapidShare AG, Christian Schmid v. Liao Fei,WIPO Case No. D2010-0614 ()
- RapidShare AG and Christian Schmid v. Rapidshare Search,WIPO Case No. D2010-0615 ()
- RapidShare AG and Christian Schmid v. rapidsharedvd,WIPO Case No. D2010-0616 ()
- RapidShare AG and Christian Schmid v. Tim Keyser,WIPO Case No. D2010-0621 ()
- RapidShare AG, Christian Schmid v. Johan Domonji,WIPO Case No. D2010-0622 ( and )
- RapidShare AG v. AMStudio,WIPO Case No. D2010-0624 ()
- RapidShare AG and Christian Schmid v. Yaroslav N Andropov,WIPO Case No. D2010-0626 ()
- RapidShare AG, Christian Schmid v. zuo xingyu,WIPO Case No. D2010-0627 ()
- RapidShare AG and Christian Schmid v. TheLeech, McMohan Kumar,WIPO Case No. D2010-0628 ()
- RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov,WIPO Case No. D2010-0696 ()
- RapidShare AG, Christian Schmid v. na, Sunny Lal/WhoisGuard,WIPO Case No. D2010-0890 ()
4.8 There are also other proceedings that remain ongoing. The Complaints have been successful in almost, but not quite, all of these proceedings in which a decision has been given to date. 5. Parties’ Contentions A. Complainant
5.1. The Complainants contend that the Domain Name is confusingly similar or identical to their trade marks. The Domain Name is said to incorporate the Complainants’ marks with the “share” element removed and with the addition of a “generic” term (i.e. “privacy”) that does not distinguish the Domain Name from the marks.
5.2. The Complainants deny that the Respondent is operating any bona fide or legitimate business. They claim that the Respondent is using the Domain Name “to drive Internet traffic to a website that “celebrates” copyright piracy.” They also contend that the Respondent is not known by the name.
5.3. On the question of bad faith the Complainants claim that since the Respondent’s registrar is located in the United States he thereby has actual or constructive notice of the Complainants’ US trade mark (citing XS4ALL Internet B.V. v. Usenet Nomads,WIPO Case No. D2003-0469). On the question of knowledge, reference is also made to the fact that the Complainants are directly mentioned on the web page operating from the Domain Name.
5.4. The Complainants contend that the Respondent is using the Domain Name to promote copyright infringement of third-party owned copyright materials. They cite in this respect RapidShare AG and Christian Schmid v. rapidsharedvd,WIPO Case No. D2010-0616, which is said to be authority for the proposition that the use of a domain name that is similar to a trade mark to draw Internet users to a website engaged in such activity is use in bad faith. Lastly, the Complainants claim that the Respondent has placed click advertisements leading to the websites of others and that this activity falls within the scope of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
6.1. There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response.
6.2. Notwithstanding that default, it remains incumbent on the Complainants to make out their case in all respects under paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3. However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4. The Panel will address the three aspects of the Policy listed above in turn. A. Identical or Confusingly Similar
6.5. The present case is, with one exception, very different from the various other listed cases commenced by the Complainant with the Center and that have been decided to date. As is apparent from the list set out earlier in this decision, all but one of those cases involved domain names that in one way or another incorporated the term “rapidshare”. The exception is RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov,WIPO Case No. D2010-0696. In that case the domain name in issue was and the learned panelist concluded that the fact that the domain name shared the word “rapid” with the Complainants’ marks was insufficient for a finding of confusing similarity.
6.6. Before considering the reasoning in the RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov case further, it is helpful to consider what is meant by the term “confusingly similar” in the Policy. The issue was addressed in some detail by this Panel in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227 as follows:
“6.6. It is necessary to recognise that [...] confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7. It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647). There are cases where a domain name combining the term “sucks” with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.
6.8. This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.
6.9. It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainants have cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names or (to adopt American spelling) really confusingly similar to a mark for the word “heat” [Footnote omitted]? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.7. With this in mind, the Panel returns to the RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov decision. In that case the panel stated as follows:
“The Complainants have not proved that they have any trademark or service mark rights in the expression “rapid bay”, or in the word “rapid”. The only relevant right they have proved is a right in the expression “rapidshare”. The issue is whether the use of the word “rapid” in both RapidShare’s mark and the Domain Name, is enough to get the Complainants over the line on the “confusingly similar” issue. On balance, the Panel is not satisfied that it is.
The considerations pointing against a finding of confusingly similarity are as follows. First, “rapid” is common word in the English language, and the Panel has little doubt that it must be used in thousands of business names around the world, none of which have any connection with the Complainants. It is an obvious descriptor to use for any business operator who wishes to convey the impression that it provides a fast, or “express”, service. On its own, the word does not convey the idea of anything being shared and of course it is the concept of sharing (in particular the sharing of computer files) which is both at the core of RapidShare’s business and the principal idea conveyed by RapidShare’s mark.
Secondly, the word “bay” neither looks nor sounds like the word “share”, and the Complainants have not suggested that “bay” has some special meaning which might cause an Internet user to make a mental link between the Domain Name and RapidShare (or the concept of “sharing”). The words “share”and “bay” are not obvious synonyms.
Considerations pointing to a possible finding of confusing similarity, begin with the fact that the word “rapid” is not often applied in ordinary English usage to describe or qualify something called “bay”. For example, “rapid” hardly seems apposite to describe an indentation in a coastline, a leaf, or a “partitioned or marked area forming a unit” (eg “bomb bay”, “loading bay”, “sick bay”), to take three of the meanings of “bay” provided in the New Shorter Oxford dictionary. And while one might refer to the “baying” of a dog, or someone being “kept at bay”, “rapid” seems an unlikely qualifier for the word “bay” used in either of those senses. An Internet user following this train of thought might begin to think that one or both of the words were being used in a trademark sense, rather than in their generic or descriptive senses.
Further reflection might possibly cause that Internet user to wonder if the “rapid” might be an abbreviation of RapidShare’s mark, and “bay” an abbreviated reference to “Ebay” (the Panel notes that the domain names at issue in theYahoo! Inc. case included not only and , but also and some other domain names formed by combining the YAHOO! and EBAY marks).
But there is nothing in the evidence which might suggest, for example, that RapidShare is frequently (or even sometimes) referred to as “Rapid”. Nor is there anything to suggest that when the Domain Name was registered, there was a proposed or pending merger between RapidShare and Ebay, or something of that sort, which might have led Internet users to believe that a website at the Domain Name would likely be operated or endorsed by both RapidShare and Ebay. There was no mention of Ebay in the Complaint at all.
In the absence of that sort of evidence, and in the absence of any argument from the Complainants that the Domain Name was intended to signal some sort of combined RapidShare/Ebay presence on the Internet, the Panel concludes that the Complainants have failed to discharge their burden of proof in this part of the Complaint.
In finding that the Complainants have failed to establish confusing similarity between the Domain Name and RapidShare’s mark, the Panel is saying nothing about the Respondent’s motives in selecting the Domain Name, or whether or not he acted in bad faith. It may well be that he did. The difficulty faced by the Complainants is that before the Panel could consider such questions, the Complainants had to “get to first base” by making out their case under Paragraph 4(a)(i) of the Policy. The enquiry under Paragraph 4(a)(i) is conducted by comparing the disputed domain name with the mark relied upon, both visually and phonetically, and by comparing the respective meanings which each conveys. The limited nature of the exercise does not call for any consideration of extraneous material, such as what might appear on a website at the disputed domain name (see the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at para 1.2: “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity ...”).
Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.”
6.8 In broad terms the Panel accepts this legal reasoning and at first sight it might seem fatal to the Complainants’ case. There are, nevertheless, distinguishing features between the present case and the case. The Domain Name can be seen as conceptually different to . The Complainants are engaged in file sharing services and significantly at least one of its marks (i.e. United States registered trade mark no 3313895) appears to cover such activities1. “Piracy” is a term that has long been associated with the unlawful making or sharing on the Internet of copyright protected content. Of course, the Complainants do not condone illegal file sharing on the Internet, but such activity is common and well known. Accordingly, it is not fanciful to suggest the term “rapidpiracy” can be read as involving a conceptual allusion to the Complainants’ mark (perhaps suggesting an illegal version of the Complainants’ services).2
6.9 In this Panel’s assessment, when considering whether the Domain Name should be read in that way, another important factor in this case is the content of the Respondent’s website. In particular, there is the fact that on the front page of that site there were at least three direct references to the First Complainant by name. In short, an obvious inference from this content is that the Respondent intended the Domain Name to be understood as alluding to the Complainants’ mark. Of course, the test of “confusing similarity” is an objective one and not one of the Respondent’s subjective intent. But that does not mean that in an appropriate case evidence of what a Respondent’s subjectively intended cannot be evidence of how the mark is objectively understood3.
6.10 The Panel is not in any way suggesting that the general rule recorded in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions that “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity” is wrong. The test is not of similarity between businesses or websites. It involves a comparison between mark and domain name only. However, that does not mean that the content of the website cannot in some cases provide a pointer as to how Internet users will perceive a domain name that in turn might inform the relevant comparison.
6.11 So do these factors provide sufficient similarity in this case? Bearing in mind that this is a low threshold test and in the absence of argument to the contrary, the Panel ultimately concludes that the Complainants have satisfied that test. The Complainants have only just crossed the threshold and in doing so they were given a helping hand by the Respondent; but they have crossed it nevertheless. The Panel finds that they have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.12. The Complainants contend that the Domain Name is being used for a website that promotes illegal file sharing and in doing so advertises the services of others. The Panel accepts on the evidence before it that this is indeed the case. However, that the Domain Name might be used for file sharing purposes is unsurprising given their potentially descriptive content of the words “rapid” and “piracy” to be found in the Domain Name.
6.13. If a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.14. Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: is the Respondent using the Domain Name with the Complainants’ marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.15. This is a question that has already been touched upon and which is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in under the heading of bad faith below, the Panel has reached the conclusion that the Domain Name has indeed been registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainants’ trade marks. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.16. Notwithstanding the potentially descriptive elements of the Complainants’ marks, the Panel has reached the view that the Domain Name in this case was registered by the Respondent with an intention to take unfair advantage of confusion between those marks and the domain names to draw Internet users to his website.
6.17. First, the Panel is persuaded by the Complainants’ contentions as to the extent of its worldwide activity and reputation. There is no independent evidence before the Panel to support those contentions, but the Panel sees no reason to do anything but to take at face value these statements in the absence of any argument or evidence to the contrary from the Respondents.
6.18. Second, there is the fact that the Respondents themselves appear to be engaged in the provision of file sharing services. Again in the absence of evidence to the contrary, it seems improbable that an entity such as the Respondent providing information or services connected with file sharing would not have been aware of the Complainants’ pre-existing business activities at the time that the Domain Name was registered. In the circumstances, the Panel has reached the view on the balance of probabilities that the domain name was registered with at least knowledge of the Complainants’ use of the term “Rapid Share” in a trade mark sense.
6.19. Third, and most tellingly, there are no less than three direct references to the Complainants in the first few lines of the webpage operating from the Domain Name. It is clear that the Respondent is seeking to associate himself with the Complainants’ services. The material provided by the Complainants in this respect is dated just prior to the commencement of these proceedings and the Domain Name was registered some time before this. However, there is nothing before the Panel that would suggest that it cannot infer from that recent use the Respondent’s intent at the time of registration.
6.20. The Panel’s finding is one of actual knowledge. The Complainants contend that this is a case where “constructive knowledge” might be found, but the Panel is unconvinced that this doctrine is that useful in the UDRP for the reasons set out in ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346 and Henkel KGaA v. Mr. Augustin Sbinta,WIPO Case No. DRO2008-0003. Further, the Complainants’ suggestion that the doctrine might apply simply because the Registrar is based in the United States is in the opinion of the Panel unsupported by authority and wholly unpersuasive.
6.21. Given the Panel’s findings as to knowledge, it appears to the Panel more likely than not that the Domain Name was primarily chosen because of its similarity and associations with the Complainants’ marks than because of any inherent generic descriptive content. The obvious inference in these circumstances is that the intention was to take unfair advantage of the similarity between those marks and the Domain Name to draw Internet users to the Respondent’s website. In the Panel’s view this is registration and use in bad faith. The Complainants also make references to certain advertisements that appear on the website and in light of that advertisement the Panel also accepts the Complainants’ contention that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy.
6.22. Accordingly, the Complainants have made out the requirements of paragraph 4(a)(iii) of the Policy. E. Remedies
6.23. The Complainants have asked for the Domain Name to be transferred to the “Complainant”, which the Complainants state in the Complaint is intended to refer to them collectively. It is, therefore, unclear to which of them the Complainants seek the Domain Name to be transferred. Given that it is the First Complainant that appears to be primarily engaged in business under the relevant marks, the Panel concludes that the Domain Name should be transferred to it. 7. Decision
7.1. 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 RapidShare AG.
Matthew S. Harris
Sole Panelist
Dated: August 17, 2010
1 The specification for this mark is “Web hosting, namely, hosting the web sites of others on a computer server for a global computer network, local area networks, wide area networks, private networks; consulting and design services in the field of information technology and global computer communication networks; providing hosting services for the web sites and digital content of resellers who host the websites, data, e-mail, audio, video, graphics and content of others on computer servers for computer networks, local area networks, wide area networks, private networks and the Internet; computer services, namely, providing temporary use of on-line non-downloadable software for storage, transmission and manipulation of digital content; computer hardware and software consultation; consulting services in the field of computer data backup and recovery”
2 The Panel wonders whether in the case although the panel discusses a possible reference to eBay, a more likely reading involves a reference to “The Pirate Bay”, the infamous Swedish BitTorrent website. But there was no indication of argument to that effect before the panel and, in any event, the connection may be somewhat more remote.
3 Those familiar with the English law of passing off may perhaps draw parallels here with the following comments of Lord Justice Millet in the English Court of Appeal’s decision of Harrods Limited v Harrodian School Limited [1996] EWCA Civ 1315 in relation to the objective nature of that tort:
“Deception is the gist of the tort of passing off, but it is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct. Nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is ‘a question which falls to be asked and answered’: see Sodastream Ltd. v Thorn Cascade Co. Ltd. [1982] RPC 459 at p.466 per Kerr LJ. If it is shown that the defendant deliberately sought to take the benefit of the plaintiff's goodwill for himself, the court will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’: see Slazenger & Sons v Feltham & Co. (1889) 6 RPC 531 at P. 538 per Lindley LJ.”
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