RapidShare loses rapid.org case
RapidShare has failed to grab the domain name rapid.org with a UDRP complaint.
The WIPO decision, sent to me this morning by the current registrant, found both an absence of confusing similarity and a lack of bad faith.
Panelist Matthew Harris recently handed rapidpiracy.com to RapidShare on the grounds that the domain was conceptually similar to the RapidShare trademark.
He found no such similarity on this occasion.
Insofar as there is similarity, it resides in the common use of the word “rapid” alone. On the evidence before the Panel, this is insufficient. The Complainants have failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
Rapid.org, prior to the filing of the complaint, was a web forum devoted to sharing download links for pirated movies, music and so on. RapidShare used this fact to try to prove bad faith.
But the panelist focused instead on registration dates, observing that the domain was first registered in September 2003, years before RapidShare acquired its trademark rights.
The Complainants do not point to a trade mark registration that pre-dates September 2003. In the circumstances, the Complainants’ apparent assertion that its trade mark rights pre-date the Domain Name registration appears to be simply false.
RapidShare appears to have missed a trick here.
Harris wrote that there was no evidence before him that the domain was first registered in 2001, as the registrant had claimed, and that there was no evidence that the domain had changed hands since then.
A quick search on DomainTools shows that rapid.org was indeed first registered in 2001, and that the current registrant probably only acquired it some time in 2009.
Why Harris was not given this information is probably due to RapidShare’s oversight, but it could have led to a finding of bad faith (not that this would have changed the ultimate outcome).
Amusingly, the decision also refers to the Russian registrant, Ilya Efimov, as a woman throughout. He assures me that, like all Ilya’s, he’s male.
WIPO suggests RapidShare might own “rapid” after all
RapidShare has won a UDRP complaint against the owner of rapidpiracy.com, after the WIPO panelist apparently went against recent precedent.
As I’ve been reporting for a while now, RapidShare has been trying to clean up its brand by filing UDRP complaints on domains that contain its trademark.
In pretty much all cases the offending domain hosts a web site containing links to copyrighted material hosted on rapidshare.com and other file-sharing services.
In most cases, the domain also includes the word “rapidshare”, which the company has trademarked.
In July, a WIPO panelist rejected RapidShare’s claim on rapidbay.net, concluding that the words “rapidbay” and “rapidshare” were not sufficiently alike to warrant an “identical or confusingly similar” finding.
Now, a different WIPO panelist has come to the opposite conclusion, finding for the complainant in the case of rapidpiracy.com; “rapidshare” and “rapidpiracy” are apparently confusingly similar.
Acknowledging the precedent could have been “fatal” to RapidShare’s case, Matthew Harris drew a distinction, arguing that “piracy” and “share” are conceptually similar, whereas “bay” was not.
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).
He backed this argument by pointing to the fact that there were three references to RapidShare on the first page of rapidpiracy.com, before the complaint was filed.
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.
Harris noted that WIPO guidelines say that panelists should not take into account the contents of a web site in order to determine whether the domain name is similar to a trademark, but he had an excuse.
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.
(Domain Name Wire has previously noted that Harris has a record of “questionable” decisions.)
He concluded:
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.
In my humble opinion there’s no doubt that rapidpiracy.com were a bunch of scoundrels, but I can’t help but wonder whether UDRP was the right place to address the problem.
Yet the precedent has been set; RapidShare does have some claim on the word “rapid” under UDRP, despite its lack of a trademark.
What this means for the UDRP case against rapid.org, which is also in the business of helping people share copyrighted material, remains to be seen. I’m told that case has been assigned the same panelist.
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