National Arbitration Forum

 

DECISION

 

RapidShare AG and Christian Schmid v. Fantastic Investment Limited

Claim Number: FA1008001338403

 

PARTIES

Complainant is RapidShare AG and Christian Schmid (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Fantastic Investment Limited (“Respondent”), represented by Michael P. Eddy, Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rapidshare.net>, registered with TUCOWS, INC.

 

PANEL

The undersigned each certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus Atkinson, Sir Ian Barker, and R. Glen Ayers served as Panelists.  Mr. Ayers served as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2010.

 

On August 3, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <rapidshare.net> domain name is registered with TUCOWS, INC. and that the Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rapidshare.net.  Also on August 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received on September 8, 2010.  The Response is deficient under Rule 5(a) as it was received without the annexes separated from the Response.  As set out below, the Panel has determined to allow the Response.

 

Timely Additional Submissions were received from Complainant and Respondent and both were timely. 

 

On September 18, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers (Chair), Sir Ian Barker, and Tyrus Atkinson, as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant has filed a Complaint and an Amended Complaint alleging that it holds a registered trademark styled “RAPID SHARE.”  The mark is a mark covering, among other things, web hosting, private networks, and the like.  There are related marks.  The primary mark, RAPID SHARE, is registered in both the U.S. and in other countries.

 

Complainant asserts that the RAPID SHARE mark, also spelled “RapidShare,” is identical to or confusingly similar to Respondent’s domain name, <rapidshare.net>.  The Complainant asserts that it previously filed with the World Intellectual Property Organization, which Complainant refers to as the prior “WIPO Proceedings.”  The Complainant asserts that the WIPO staff did not forward all information to the WIPO panel.  Therefore, the domain name was not ordered transferred.  However, Complainant has asserted that the WIPO panel specifically made a finding that certain submissions were not received.  As Complainant noted, the WIPO panel determined that the missing material “contains information which could form the basis of a Complaint….”  The panel chose not to reverse its prior decision, but the panel specifically found that the Complainant was free to “submit a fresh Complaint….”  Administrative Panel Statement,  RapidShare AG, Christian Schmid v. Domain Admin/contactprivacy.com/FantasticInvestments, Ltd., D2010-0598 (WIPO July 9, 2010). 

 

Complainant has now submitted this new Complaint through the National Arbitration Forum.

 

Note:  The Panel has determined to accept the new Complaint on the basis of the prior indication by the WIPO panel that a new Complaint could be allowed.  There is no issue of res judicata in this context.

 

Complainant goes on to state that Respondent has no rights in the name, for it “has no bona fide or legitimate business” under the name and is not making any fair use.  Further, there is an assertion that Respondent is not commonly known by the domain name “rapidshare.net.” 

 

Note:  Complaint attempts to utilize the prior WIPO Proceeding by stating that the prior WIPO panel had found bad faith.  However, the panel declines to rely on the prior substantive or other findings of the WIPO panel.  This matter is considered de novo.

 

Finally, Complainant asserts bad faith, alleging a number of factual issues.  The primary basis for bad faith is that a number of transfers have taken place between various owners or holders of the domain name.  Complainant asserts that on or about July 7, 2009, after Complainant had registered its mark in the U.S., and in August 2010, after registration of both the U.S. and European marks, there were transfers to the Respondent in this case.

 

Complainant asserts that Respondent acquired the domain name through bad faith, having known of the registration of the marks in the U.S. and Europe at the time it received or took the domain name.  Complainant asserts that the domain name was used in bad faith by the Respondent.  Complainant alleges that the Respondent used the domain name to drive Internet traffic to its website.

 

B. Respondent

Note:  Although the Respondent’s Response was filed improperly, the Panel has determined to allow the Response.  The error is not material.

 

Respondent asserts that the domain name was registered and used in April of 2005, before the Complainant’s mark, which has a “priority date” of September 2005.

 

Note:  Like Complainant, Respondent also raises the earlier WIPO proceeding.  The Panel has determined to allow the submission of this Complaint, to be considered de novo. The only relevant portion of the WIPO proceeding is the WIPO Panel determination that a new Complaint would be appropriate, as set out above.

 

Respondent assets that the site offers “bona fide services, including search engine and social bookmarking services related to links to millions of publically available files ….”

Respondent denies that its site in any way infringes on the intellectual property of others.

 

Respondent emphasizes that its domain name predates the registration of the mark.

 

Respondent does not suggest that, other than the transfer of the domain registration and the use, that it otherwise has rights in the name.  Respondent does not argue that the domain name and trademark are not either identical or confusingly similar.

 

C. Additional Submissions

 

1.      Complainant’s Additional Submission

 

Complaint filed a timely Additional Submission asserting that the Response was not timely. 

 

Complaint also assets that the Respondent’s bad faith is shown by its acquisition of the domain name after the Complainant registered its trademark.  Complainant also suggests that if the transfer was in “good faith,” Respondent has a burden to demonstrate that element.

 

Complainant then argues that Respondent’s allegation that it offers bona fide services cannot be true because the offering is under Complainant’s mark.  Complainant also argues that Respondent’s conduct or business plan meets the UDRP definition of bad faith because the Respondent’s use is commercial and its goal is to attract Internet users by confusing the Complainant’s mark with the services offered by Respondent.

 

2.      Respondent’s Additional Submission

 

Respondent filed its Additional Submission in response to Complainant’s assertions about the prior WIPO proceeding.  Because those issues are resolved, they are now irrelevant.

 

However, the Response also argues that Complainant has provided no evidence of bad faith transfer, even if a transfer of a domain name after a mark is registered can be challenged.  This suggests that the burden is on Complainant.

 

Respondent disputes assertions that its business is not legitimate and asserts that its Web site does not compete, particularly as to “bookmarking.”

 

FINDINGS

As noted above, the Panel has made two preliminary findings.

 

1.      The WIPO panel clearly stated that a new Complaint might be filed.  Therefore, this Panel will accept the new Complaint on its own merits, without reference to what did or did not occur in connection with the WIPO proceeding.  This proceeding is a de novo proceeding.

 

2.      The Panel has determined to accept the Response as timely.  The filing, while deficient under the Rules and Procedures, was not materially deficient.

 

The Panel finds that the domain name and trademark are either identical or confusingly similar.  Complainant stated a prima facie case which was not rebutted by Respondent.

 

The Panel finds that the Respondent has no rights in the name, is not commonly known by the name “Rapid Share,” and – except for the transfer of the registration to it – has no interests in the name.  The Respondent appears to be using the domain name in a normal business, however.

 

Complainant has stated a prima facie case that Respondent has no rights in the name, for, as Complainant argues, the transfer of the domain name to the Respondent after the Complainant registered its mark has significance.  Therefore, the Respondent has not adequately rebutted the issue of rights in the name.

 

The Panel also finds that the registration and use by Respondent is in “bad faith.”

The facts support a finding that the Respondent uses a domain name which is identical to Complainant’s mark to attract Internet users to Respondent’s commercial enterprise.

 

Respondent’s defense of prior rights by registration does resonate with the Panel.  Certainly, Respondent’s domain name was registered and in use before the Complainant registered its mark; Complainant had no rights in the mark prior to registration.  Thereafter, the Respondent received the domain name by transfer after the trademark became effective.

 

However, as explained below, the Panel finds that such conduct is and should be discouraged.  The transfer of the domain name after registration should be, at the very least, seen as compelling evidence of bad faith which must be rebutted, if such can be rebutted, by Respondent.

 

Here, Respondent asserts that the burden in this fact situation should be on the Complainant.  That is not correct, in the opinion of the Panel.

 

Under the UDRP, panels have always stated that the Complainant must state a prima facie case for each element; then, Respondent must rebut.  Where, as here, the Complainant shows that the transfer occurred after its mark became effective, and by implication that Respondent knew or should have known of the existence of the trademark, Respondent must respond and rebut by showing its acquisition by transfer after the trademark is registered was in good faith.

 

The facts support an ultimate finding that the Complainant has met its burden of proof on each element of the UDRP.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Preliminary issue:  Res Judicata

 

The <rapidshare.net> domain name was the subject of prior arbitration proceedings before WIPO.  See RapidShare AG, Christian Schmid v. Domain Admin / contactprivacy.com / Fantastic Inv. Ltd., D2010-0598 (WIPO July 9, 2010).  The Panel has determined to accept and consider this proceeding.

 

A complainant has the burden to establish that a second complaint should be heard.  See Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (finding that the burden of establishing that a second complaint should be entertained is “high”).  In Grove Broadcasting Co. Ltd. v. Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000), the panel noted, and subsequently applied to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision.  These four grounds are: (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice.  In this case, Complainant claims WIPO staff failed to forward all of the record to the panelists before they reached a decision regarding the disputed domain name.  Accordingly, Complainant asserts this case involves new material evidence which could not have been reasonably foreseen or known at trial.  If the Panel agrees, it may conclude factor three from Grove Broadcasting applies and warrants the hearing of Complainant’s claim.  In addition, in Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041 (WIPO Oct. 16, 2001), the panel allowed a refiling because the previous panelist gave the “green light in the clearest possible way to refiling the Complaint to correct [the previous Complaint’s omissions].”  Here, Complainant argued that the prior panel had given leave to Complainant to submit a fresh complaint. The Panel may find the prior panel’s approval supports a rehearing of the dispute involving the <rapidshare.net> domain name.

 

Acceptance of the new Complaint requires review of the matter de novoSee Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (“In relation to a Refiled Complaint that is truly a new action under the Uniform Policy, the administrative panel is undertaking a consideration of the merits of the case de novo. It follows that, unless agreed otherwise by the parties, the administrative panel considering the Rrefiled Complaint cannot rely on the findings of fact, or on the conclusions on the application of the Uniform Policy to the found facts, reached by the administrative panel on the previous complaint.”).

 

Preliminary Issue: Deficient Response

 

Respondent’s Response was received without the annexes separated from the Response.  Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.  The Panel has chosen to accept and consider this Response.  The error is not material.  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

Preliminary Issue: Multiple Complainants

 

The case involves two Complainants.  The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

The two Complainants in this matter are RapidShare AG and Christian Schmid.  Complainant, Christian Schmid, states it is the registrant of the US RAPID SHARE mark and has licensed use of the mark to Complainant, RapidShare AG.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and they will be treated as a single entity in this proceeding.  The two Complainants are collectively referred to as “Complainant.”

 

Identical and/or Confusingly Similar

 

Complainant is a file host. Complainant holds rights in the RAPID SHARE mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,313,895 registered October 16, 2007; filed September 21, 2005).  The trademark registration sufficiently proves Complainant’s rights in the RAPID SHARE mark.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  The Panel has determined that it is irrelevant whether Complainant has registered its mark with the trademark authority in the country in which Respondent resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant has shown that Respondent’s <rapidshare.net> domain name is identical to its RAPID SHARE mark.  Mere deletion of the spaces between the words in the mark and affixation of the generic top-level domain (“gTLD”) “.net” to the mark in the disputed domain name do not distinguish a domain name from a mark.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).  The Panel determines that Respondent’s <rapidshare.net> domain name is identical to Complainant’s RAPID SHARE mark pursuant to Policy ¶ 4(a)(i). 

 

Respondent also contends that the <rapidshare.net> domain name is comprised of common and descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark.  The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

While Respondent argues that its registration of the <rapidshare.net> domain name predates Complainant’s alleged rights in the RAPID SHARE mark, the Panel has determined that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).  The Panel considers the issue of the transfer of the domain name after registration of the mark in its discussion of “bad faith” below.

 

Rights or Legitimate Interests

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden shifted to Respondent to show that it holds rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant avers that Respondent holds no license, authorization, or other grant of permission to use the RAPID SHARE mark.  In addition, the WHOIS information lists “Fantastic Investment Limited” as the registrant of the disputed domain name.  Fantastic Investment Limited is certainly not known by the <rapidshare.net> domain name.  Respondent is obviously not commonly known by the <rapidshare.net> domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s <rapidshare.net> domain name resolves to a website that advertises a search engine designed to assist web users who wish to illegally infringe others’ copyrights by locating and sharing copyright protected documents online, and Respondent denies any “illegal” use.  The Panel does, however, presume that Respondent profits from this domain name and its use.  Consequently, the Panel finds that Respondent uses a domain name that is identical to Complainant’s mark for commercial gain.  Such behavior does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Registration and Use in Bad Faith

 

Respondent used a domain name that is identical to Complainant’s mark in order to attract Internet users to Respondent’s website.  The website advertises a search engine designed to assist Internet users and, presumably, Respondent profits from this use.  Therefore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.  Respondent’s use of the <rapidshare.net> domain name amounts to bad faith under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name).

 

Respondent could not have acquired (by transfer) and used the <rapidshare.net> domain name without actual or constructive knowledge of Complainant and its rights in the RAPID SHARE mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel does find that, at the time of the transfer to Respondent, that Complainant has asserted that Respondent acquired and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

In rebuttal of Respondent’s argument that the <rapidshare.net> domain name registration date predates Complainant’s rights, it is the most recent transfer date rather than the initial registration date that matters.  Even if a domain name was initially registered in good faith, this good faith does not provide protection for subsequent bad faith transferees. In this case, Respondent acquired the <rapidshare.net> domain name through an allegedly bad faith transfer in August 2010, which is almost three years after Complainant registered its mark with the USPTO.  The original <rapidshare.net> domain name registration date does not apply and, accordingly, Respondent’s rights do not predate Complainant’s rights.  See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (Although the disputed domain name had been created prior to the complainant obtaining rights in the mark at issue, the Panel found the complainant’s rights to predate the respondent’s registration because the disputed domain name had been transferred to the respondent only a month prior to the proceeding.  “Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration.”).

 

Respondent made no effective attempt to rebut the assertions of bad faith and instead relied upon the argument that the domain name was registered before Complainant’s mark.  Respondent asserted that the burden of showing notice or bad faith generally was on Complainant; the Panel has determined, consistent with UDRP practice, that the burden of rebuttal of a prima facie case is upon Respondent, and Respondent has failed in its burden to show acquisition of the domain name without actual knowledge and in good faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rapidshare.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

R. Glen Ayers, Panelist and Chair

 

Sir Ian Barker, Panelist

 

Tyrus Atkinson, Panelist

 

Dated:  October 8, 2010

 

 

 

 

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