WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RapidShare AG, Christian Schmid v. ivano yura / PrivacyProtect.org
Case No. D2010-0569
1. The Parties
The Complainants are RapidShare AG and Christian Schmid, of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is PrivacyProtect.org of Moergestel, the Netherlands / ivano yura of California, United States.
2. The Domain Name and Registrar
The disputed domain name <rapidshareprime.net> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 15, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On April 16, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 April 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant decided not to file an amendment to the Complaint or an amended 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 May 4, 2010. In accordance with its usual practice, the Center also notified the Complaint to the registrant of the Domain Name as indicated to the Center by the Registrar in the Registrar's response to the Center's request for registrar verification. Under the Rules, paragraph 5(a), the due date for Response was May 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on June 1, 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 Panel notes that the Complaint as filed appears to have identified the correct Respondent as at the filing date, namely the entity which was then the holder of the Domain Name (Rules, Paragraph 1). In those circumstances the Panel considers that the Complainants were entitled to decline to amend their Complaint when they were invited to do so following the Center's receipt of the updated WhoIs information from the Registrar – see in that regard the panel decisions in Research in Motion Limited v Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, and Research in Motion Limited v PrivacyProtect.org/Pluto Domain Services Private Limited, WIPO Case No. D2009-0324. Having regard to the decisions in those cases, the Panel is also satisfied that the Center acted properly in subsequently forwarding copies of the Complaint and Notification documents to both the Respondent named in the Complaint, and the registrant as notified by the Registrar.
4. Factual Background
The Complainant RapidShare AG (“RapidShare”) is a corporation established in 2006, with its headquarters in Switzerland. RapidShare operates an online file sharing service through its principal website at “www.rapidshare.com” (“the Complainant's website”). Briefly, users of RapidShare's services can distribute Internet files by uploading the files to the platform at the Complainant's website, and emailing a download link to the intended recipients of the computer file. According to the Complaint, the home page at the Complainant's website has become the twelfth most visited home page in the world.
RapidShare is the registered proprietor of the Community Trademark No. 004753828 RAPIDSHARE, having a priority date of November 21, 2005 (RapidShare's mark”). RapidShare's mark covers, inter alia, “online advertising on a computer network”, and marketing, including on digital networks. It also covers “advertising”, including on the Internet and “presentation of goods and services”.
A person having the same name as the second-named Complainant, but said to be resident in Germany, is the proprietor of the mark RAPID SHARE in the United States. According to the Complaint, this individual is the second-named Complainant, and he has licensed the use of the United States mark to RapidShare.
The Respondent and the Domain Name
The Domain Name was registered on January 16, 2009. According to the Complaint, the Domain Name has pointed to a website (“the Respondent's website”) which provides numerous click-on links, organized under a number of categories.
The Complainant produced a copy of the Respondent's website, printed on April 14, 2010. As it stood on April 14, 2010, the Respondent's website (home page) was prominently headed “Rapidshare prime downloads all files just here”. Each click-on item was followed with the words “Posted by admin”, followed by a date.
According to the Complaint, the Respondent's website enables copyright infringement of third party-owned copyright materials, which are available for downloading from the Respondent's website.
On a “Disclaimer” page on the Respondent's website, the following statement was posted:
“We do not store any files listed on this server. We just index other sites contents and if you find anything violating your copyrights, please kindly contact us. All files are uploaded by individuals for sharing and showcasing/demonstrating with absolutely no profits made!”
The Complainants assert that the Respondent's website is replete with copyrighted products. The Complainants also say that the Respondent's website provided links to third party websites, such as the website at “www.download-gate.com”, where Internet users must purchase memberships in order to download the movies and software advertised on the Respondent's website.
The Panel visited the Respondent's website on June 11, 2010. It generally appeared to be in the format described by the Complainants in the Complaint. Clicking on one of the listed categories took the Panel to a web page listing a number of digital products available in the particular category, each with a description of the product's features and a click-on download option.
One of the subpages on the Respondent's website, both on April 14 and on June 11, 2010, was headed “Compleate Warez List”. The Panel notes that the expression “warez” refers primarily to copyrighted works which are traded in violation of copyright law1.
5. Parties' Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to RapidShare's mark. RapidShare's mark has been included in its entirety in the Domain Name, and the Respondent has only added the generic element “prime”. The addition of that generic element does nothing to distinguish the Domain Name from RapidShare's mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has never operated any bona fide or legitimate business under the Domain Name, and is not making any protected noncommercial or fair use of the Domain Name.
(ii) The Respondent is not commonly known by the Domain Name.
(iii) The Respondent's website provides numerous clickable “categories” links that are designed 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 of the Domain Name (citing Viacom Int'l Inc., Paramount Pictures Corp., and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multi media, WIPO Case No. D2000-1253).
(iv) The Complainants have not granted the Respondent any license, permission or authorization to own or use any domain name registration which is confusingly similar to RapidShare's mark.
3. The Domain Name was registered in bad faith, and has been used in bad faith. The Complainants rely on the following matters:
(i) The Respondent is located in a jurisdiction in which RapidShare has trademark rights which pre-date the registration of the Domain Name. Therefore the Respondent most likely had actual knowledge of RapidShare's mark.
(ii) The totality of the circumstances show that the Respondent knew of RapidShare at the time of registration of the Domain Name. The Domain Name is nearly identical to RapidShare's mark, and is being used in conjunction with related services (citing Facebook Inc. v. Privacy Ltd Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).
(iii) The services provided by the Respondent through the Respondent's website can be seen by some as sharing a degree of similarity to some of the services set forth in the specification for RapidShare's mark, namely “presentation of goods and services”. And the Respondent's links service is related to the balance of the services set out in that specification. Use of a nearly identical domain name to conduct an identical and related service shows opportunistic bad faith on the part of the Respondent (citing Realtime Forex S.A. v. Rhone Consultants SA, WIPO Case No. D2006-0089).
(iv) The Respondent is using the Domain Name to enable copyright infringement of copyright materials owned by third parties. Such a use, which violates established public policy, is a bad faith use of the Domain Name (citing Hoffman La-Roche Inc. v. Domain Ownership Ltd, WIPO Case No. D2007-0891).
(v) The Respondent is using the Domain Name for commercial gain, being referral revenue derived from the links on the Respondent's website to third party websites (where Internet users must purchase memberships to download the movies and software advertised on he Respondent's website). That use of the Domain Name falls within the example of bad faith registration and use which is provided at paragraph 4(b)(iv) of the Policy.
(vi) The disclaimer on the Respondent's website does not reflect any serious attempt to discourage copyright infringement. The Respondent is only paying lip service to concerns with copyright violations.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainants have proved this part of the Complaint. RapidShare's mark has been incorporated in full in the Domain Name, and all that has been added is the generic expression “prime”, and the generic suffix “.net”. The addition of that generic expression and suffix does nothing to remove the confusing similarity caused by the inclusion in the Domain Name of RapidShare's mark (to similar effect, see the very recent panel decision in RapidShare AG and Christian Schmid v. Private Registrations Aktien Gesellschaft Domain Admin, WIPO Case No. D2010-0591, in which the panel held that the domain name <rapidshare-premium.com> was confusingly similar to RapidShare's mark). The generic “.net” suffix is not taken into account in the comparison.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to RapidShare's mark, and the uncontested evidence is that RapidShare has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the record to suggest that the Respondent might be commonly known by the Domain Name, and there is therefore no basis for a claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The Respondent has failed to explain either its reason for choosing the Domain Name or its reason for creating and maintaining the Respondent's website.
The matters just set out are sufficient in combination with the evidence and arguments submitted by the Complainant to meet the Complainants' prima facie proof threshold, so the evidentiary burden on this part of the Complaint shifts to the Respondent.
The Respondent has elected not to respond to the Complainants' clear allegation that it has been facilitating illegal sharing of copyright works through the Respondent's website. On the face of it, many of the numerous digital works which appear to be available through the Respondent's website could be expected to be protected by copyrights, and the Complainant's allegation for this Panel clearly called for a response. None has been provided, and the Panel infers that the Respondent had no answer to the allegation.
The use of the expression “warez”, with its connotation of unlawful file sharing, points to the same conclusion.
The deliberate use of a website to facilitate illegal file sharing in breach of third party copyrights does not, in this Panel's view, qualify as a use “in connection with a bona fide offering of goods or services”, so there is no possibility of a right or legitimate interest under paragraph 4(c)(i) of the Policy. Nor could such a use be “fair”, or “legitimate”. Paragraph 4(c)(iii) of the Policy does not apply.
The Respondent has not brought itself within any of the categories of rights or legitimate interests set out at paragraph 4(c) of the Policy, and has raised no other basis on which it might have a right or legitimate interest in the Domain Name. Accordingly, the Complainants succeed on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Complainants have also proved this part of the Complaint.
In the absence of any Response, the Panel concludes that the Respondent was aware of RapidShare and RapidShare's mark when the Respondent registered the Domain Name. Indeed, it is apparent when one visits the Respondent's website, which is prominently headed with the words “rapidshare prime downloads”, that the Respondent was aware of RapidShare. Moreover, RapidShare is one of the world's leading one-click hosting website operators, and the party who is behind the Respondent appears to be providing a similar service. The use (on the Respondent's website) of the expression “rapidshare” as a single word, which is how the expression appears in RapidShare's mark, also tends to confirm that the Respondent had RapidShare in mind when it registered the Domain Name.
As to the Respondent's use of the Domain Name, the Respondent is doing little more than providing an online platform for the sharing of digital works, most of which could be expected to be subject to copyright protection. The use of the expression “warez” makes it fairly clear (at least in the absence of any Response to the Complaint) that the Respondent was well aware that the file sharing which the Respondent's website facilitates would, in many if not all instances, involve copyright infringement.
The Respondent claims in the “Disclaimer” page of the Respondent's website:
“...All files are uploaded by individuals for sharing and showcasing/demonstrating with absolutely no profits made!”
However the Complainants have asserted, and the Respondent has not denied, that the Respondent's website has provided links to third party websites (including the website at “www.download-gate.com”), where Internet users must purchase memberships to download the movies and software advertised on the Respondent's website.2 The Panel agrees with the Complainant's submission that referring Internet traffic to commercial websites, in exchange for payment, is a commercial use, and (again, in the absence of any Response) thinks it probable that the Respondent would not have provided such links if it did not receive some commercial reward (whether as a member of affiliate programmes run by the operators of the third-party websites, or otherwise) for so doing.
The Panel concludes that it is more likely than not that the Respondent has been deriving some revenue by providing such links to third party commercial websites.
The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with RapidShare's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Even if the Respondent had been operating the Respondent's website without intent for commercial gain, the Panel's finding of bad faith registration and use would still stand. The use of a complainant's mark to generate increased Internet traffic to a website (with which that complainant has no connection) which is used to facilitate unlawful activity is, in the Panel's view, sufficient to constitute bad faith registration and use, even if the circumstances might not fall exactly within any of the examples of bad faith registration and use which are provided at paragraph 4(b) of the Policy.
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, <rapidshareprime.net>, be transferred to the Complainants.
Dated: June 11, 2010