WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao
Case No. D2010-0600
1. The Parties
The Complainant is RapidShare AG of Cham, Switzerland, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Liao Fei aka Fei Liao of Shanghai, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <rapidshare-accounts.net> (the “Disputed Domain Name”) is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2010. On April 19, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 20, 2010, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 21, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On April 23, 2010, the Complainant requested English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amended Complaint on April 23, 2010. The Center verified that the Complaint together with the amended 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 April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 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
The Complainant was founded in 2006. It is a popular file host having a storage capacity of several petabytes and an Internet connection capable of transferring hundreds of gigabytes simultaneously.
The Complainant uses the trade mark RAPID SHARE on its services and is the owner of the following trade mark registrations:
Jurisdiction Trade Mark No. Priority Date Trade mark
United States 3313895 September 21, 2005 RAPID SHARE
European Union 004753836 November 21, 2005 Rapid Share THE EASY
WAY TO SHARE YOUR
European Union 004753828 November 21, 2005 RAPIDSHARE
The services to which the above registrations relate include “web hosting, computer, presentation of goods and services, and research in databases”.
The Respondent registered the Disputed Domain Name on February 27, 2009, some years after the priority dates of the Complainant's trade mark registrations. The Respondent's website under the Disputed Domain Name provides various “rapidshare premium accounts” together with passwords. It also provides password cracking utilities for access the RAR archives purportedly obtained through the Complainant's services.
5. Parties' Contentions
The Complainant contends that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name. The Complainant has not granted the Respondent any license, permission, or authorization to own or use any domain name which is confusingly similar to the Complainant's trade mark. The Respondent is not commonly known as <rapidshare-accounts.net> but “Liao Fei”;
(c) The Disputed Domain Name was registered and used in bad faith. The Complainant's trade mark RAPID SHARE is well-known (At this point, the Panel should pause to comment that the Complaint is unclear as to which of the Complainant's trade marks the Complainant claims to be well-known. From the context of the Complaint, the Panel understands the Complainant as referring to the words RAPID SHARE). The Respondent is using the Disputed Domain Name to provide users with password crackers to gain unauthorized access to the Complainant's systems and encourages them to circumvent the Complainant's file size limitation in violation of the United States Computer Fraud and Abuse Act.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
As the language of the registration agreement is Chinese, the default language of the proceeding should be Chinese. However, the Panel is entitled rule otherwise under paragraph 11(a) of the Rules having regard to fairness to the parties and procedural cost-efficiency and expedition.
It is hereby determined that English shall be the language of the proceeding because it would serve no discernible purpose or benefit to adhere to the default language of the proceeding. The factors that assisted in making this determination are:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Respondent's website under the Disputed Domain Name is in fluent English and is a strong indication that the Respondent is also fluent in English;
(3) The Complaint is submitted in English. Requiring a Chinese translation/submission of the Complainant will likely lead to substantial cost to the Complainant and procedural delay; and
(4) The Respondent has not contested the proceeding.
The Complainant must show the following in paragraph 4(a) of the Policy in order to succeed in this proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant's trade mark rights in the trade mark RAPID SHARE is established for purposes of these proceeding by the Complainant's trade mark registrations. The Disputed Domain Name incorporates the entire mark RAPID SHARE differing essentially by the suffix “accounts” in the Disputed Domain Name. The word “accounts” clearly refers to user accounts which may be used to access online resources. Read in the context of the word “rapidshare” in the Disputed Domain Name, the word “accounts” readily describes online accounts through which the Complainant's services may be accessed.
The weight of authority and practice developed in past UDRP panel decisions is clear. A domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes and/or suffixes is considered confusingly similar to the trade mark (eg, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The suffix “accounts” in the Disputed Domain Name is non-distinctive in the view of the Panel. Therefore, the Disputed Domain Name is confusingly similar to the Complainant's trade mark RAPID SHARE and the Complainant has satisfied the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Since the question of rights and legitimate interests depends on information usually only available to a respondent and not complainant, it is the consensus of past UDRP panel decisions that a complainant is only required to make out a prima facie case under the second limb of paragraph 4(a) of the Policy. The Complainant, being the owner of rights in the trade mark RAPID SHARE, has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. The Respondent also does not appear from the evidence to have any reason for selecting the Disputed Domain Name other than for the purpose of referring to “accounts” through which the Complainant's services may be accessed without authorization as proposed on the Respondent's website.
In the circumstances, the Panel holds that a prima facie case has been established. Further, the Respondent has chosen not to respond to the Complainant, further reinforcing the finding that the Respondent has no rights or legitimate interests to put forward.
C. Registered and Used in Bad Faith
This Panel accepts that for a website at “www.rapidshare.com” to be ranked the twelfth most visited website in the world, the trade mark associated with the domain name of that website must be well-known. This finding is corroborated by the fact that the Complainant's trade mark RAPID SHARE has also been incorporated in its entirety in other domain names which are concurrently the subject matter of other domain name disputes (RapidShare AG, Christian Schmid v. PrivacyProtect.org /N/A, ivanov yura, Yura Bilyk, WIPO Case No. D2010-0568; RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610; RapidShare AG, Christian Schmid v. Liao Fei, WIPO Case No. D2010-0614; RapidShare AG and Christian Schmid v. TheLeech, McMohan Kumar, WIPO Case No. D2010-0628). Although each case should be determined on its own merits, the circumstances are such that the Complainant's trade mark RAPID SHARE seems to be an attractive choice for being registered as a domain name prefixed or suffixed with other generic words. Therefore, the suggestion that the Complainant's trade mark is well-known cannot be discounted and a prima facie finding is established. Since a Response was not filed, the prima facie finding remains.
To better understand the Complainant's claim that the Respondent is providing facilities to gain unauthorized access to the Complainant's systems and the printouts from the Respondent's website included in the Complaint, the Panel visited the Complainant's website at “www.rapidshare.com”. It was noted that the Complainant offers a free service and a paid premium account service with improved facilities. The Complainant appears to be plagued with malicious third party programmes seeking unauthorized access its servers and phishing attempts on its premium account customers.
The Respondent's website purports to offer the user-ids and passwords of the Complainant's premium account holders, referring to them as “Rapidshare Premium Accounts”. Whether these user-ids and passwords are valid for accessing the premium account services of the Complainant, it is inconceivable that the Respondent did not have prior knowledge of the Complainant's trade mark rights.
The Complainant registered its well-known trade mark RAPID SHARE in 2005 and has been using it for a few years before the Disputed Domain Name was registered by the Respondent. The selection of the Disputed Domain Name by the Respondent clearly speaks of a deliberate intent to create an impression of an association with the Complainant. The use of the Disputed Domain Name in such a manner indicates opportunistic bad faith registration and use (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Realtime Forex SA v. Rhone Consultants SA, WIPO Case No. D2006-0089). In the absence of any evidence controverting the above, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
As an aside, whether the activities of the Respondent amount to a violation of the United States Computer Fraud and Abuse Act is beyond the purview of this Panel. However, as the Panel has already concluded that the third limb of paragraph 4(a) of the Policy has been established, the Panel does not see the need to consider this issue further.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <rapidshare-accounts.net>, be transferred to the Complainant.
Kar Liang Soh
Dated: June 30, 2010