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Archive for September, 2010

3 Strikes for RAPIDSHARE

Wednesday, September 15th, 2010

In another domain name dispute filed by RAPIDSHARE, the concept of owning the word RAPID was denied for the third time. In RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov (WIPO Case No. D2010-1106, August 27, 2010) a single member Panel was faced with a dispute over the domain www.rapid4me.com. We have previously blogged about the two prior failures of RAPIDSHARE’s attempts to own the word “rapid.” However, each time the Panel has found this was too much and that RAPIDSHARE did not use RAPID as a mark and was not commonly known by the name RAPID.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In this case the Panel cited to some of the prior decisions, both for and against RAPIDSHARE, and noted that in the prior denial cases, such as RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, that Panel found that www.rapidbay.net was not able to be transferred under the policy. This Panel adopted many of the same arguments, however did not get past the first element of whether or not the domain was identical or confusingly similar to the RAPIDSHARE mark. The Panel chose not to review the remaining elements.

Politics = Cybersquatting Candidates’ Names

Wednesday, September 15th, 2010

It is always interesting when a large media outlet writes up an article about legal topics, but it is even more interesting when they write one up about cybersquatting. The New York Times published an article today about the political environment where cybersquatters go after domains containing candidates’ names. For an interesting read of the article, click here. The article is laden with examples of political names and associated domains, but lacks any substance related to the law. It does not even mention the use of the UDRP. This is the media’s attempt at telling the masses about this topic.

RAPIDSHARE, Tries But Fails Again To Own The Word “RAPID”

Wednesday, September 8th, 2010

   

In the recent domain name dispute decision of RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov WIPO Case No. D2010-1105 (August 17, 2010) a single member Panel was faced with a dispute over the domain www.rapid.org. As we previously posted on July 13, 2010, RAPID SHARE tried to claim rights to the word RAPID when seeking to get the “rapidbay.net” domain. (See post here) Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The Respondent did file a reply to the Complaint, and cited to the previous decision regarding RAPIDSHARE’s lack of rights to the word RAPID. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP 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.

The Panel in this case made similar findings to the previous rapidbay.net decision. The Panel noted that no evidence was put forth by RAPIDSHARE to show that it was frequently referred to as “RAPID.” The Panel found this to be fatal to Complainant’s case. Ultimately, the Panel found that Complainant failed to establish identical or confusingly similar elements as required under the policy. The Panel DENIED the request for transfer.

DISNEY Does Not Like This Cybersquatter’s ‘Offer’

Wednesday, September 1st, 2010

 

In the recent cybersquatting case of Disney Enterprises, Inc. v. ll aka Joe Comeau FA1336979 (Nat. Arb. Forum, August 31, 2010) a single member Panel was faced with a dispute over the domain www.DisneyOffer.com. Disney needs no introduction in this case. You should know who they are, unless you have been living in the one or two places where they haven’t been able to advertise or sell products and services. Either way, go to www.disney.com for anything your heart desires. Respondent filed a response to this dispute and presented some interesting arguments.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel quickly dispensed with the first prong, noting that the DISNEY mark is well established and that the disputed domain contained all of the mark including the additional word “offers.”

Moving to the second prong, the Panel noted that DISNEY had met its small initial burden of proving a prima facie case that Respondent lacked any rights or interests. This included claims that Respondent was not commonly known by the disputed domain. The Panel shifted the burden to Respondent and explained:

Respondent offers no evidence which might tend to show that he has rights in respect of  the domain name pursuant to Policy ¶4(c), or otherwise. Respondent offers no explanation as to why he registered a domain name which overtly references Complainant’s DISNEY trademark and he admits he has not built a website associated with the disputed domain name. Respondent states that the webpage referenced by the at-issue domain name is merely a holding page provided by the registrar, Go-Daddy. Respondent makes no claims regarding any intended use for the domain name.  Furthermore, Respondent makes no claims that he is somehow making a legitimate non-commercial or fair use of the domain name.

The Panel thus found that this second prong was proven. Moving to the third prong, bad faith, the Panel made some relevant findings. First the Paenl explained Respondent failed to present any justification that he did not register the domain name for any r3eason other then the value of the mark. Additionally, the Panel found that Respondent had registered well known domain names in the past using other marks such as EBAY and CHEVY.

The Panel found that Respondent offered to sell the disputed domain to DISNEY after recieving a cease and desist letter, which was is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(I). Respondent had argued that “If Respondent has to turn over the domain name to Complainant, it should at least in good faith have to give Respondent the renewal fees paid over the past few years.” Other interesting arguments presented by Respondent included:

Just because Complainant holds onto the name “disney” it does not have the right to squash and try to control every other holder of the word “disney” in the English speaking community or every domain name with the word “disney” in it. They own the market and brand name, but they do not own the word “disney” across the entire English language as long as those interests pose no threat or try to infringe upon their business.

Lastly, the Panel found that the disputed domain resolved to a parked site, featuring links to third parties offering competing goods and services. For all these reasons, the Panel found that DISNEY met its burden of proving all three prongs and ordered the domain be TRANSFERRED.

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