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Attempting to Extend Monopoly to More than Granted by Statute or Acquired by Common Law

RapidShare AG is busy policing its trademark, RAPID SHARE; thirty five proceedings in the past four months. In its most recent filing it argues that it is entitled to <rapid.org> because the domain name “incorporate[s] the Complainants’ marks with the ‘share’ element removed and leaving the ‘dominant element’ ‘Rapid’,” RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov, D2010-1105 (WIPO August 17, 2010). If this were a viable theory a trademark holder would monopolize a dictionary word. Almost, but not quite. Complainants’ trademark rights extend to term granted, and no more. “As is apparent from the list [of cases], all but two of those … involved domain names that in one way or another incorporated the term ‘rapidshare’.” The two other cases involved <rapidbay.net> (complaint denied) and <rapidpiracy.com> (complaint granted).

A domain name is identical to the trademark when it is the same as the SLD. It is confusingly similar to the trademark when it varies it in some indistinctive way. On a side by side comparison of trademark and domain name it is appropriate to find confusing similarity where the domain name is identical to the dominant term of the trademark, but it does not extend the monopoly to dictionary words. There are numerous recent cases, but for illustration see Vanguard Trademark Holdings USA LLC v. Private Registration (B3), FA1007001334659 (Nat. Arb. Forum September 9, 2010) (<natonal.com>, misspelling “national” where the Complainant owns NATIONAL CAR RENTAL. The Complainant in RapidShare proposed an unacceptable extension of this principle, namely that a domain name can be found confusingly similar if it is identical to the “dominant” dictionary term in the trademark. But, as joined with “share” “rapid” cannot be said to be the dominant term. Rather, the terms are wedded. The Panel explains as follows:

The considerations pointing against a finding of confusingly similarity are as follows. First, ‘rapid’ is common word in the English language, and the Panel has little doubt that it must be used in thousands of business names around the world, none of which have any connection with the Complainants. It is an obvious descriptor to use for any business operator who wishes to convey the impression that it provides a fast, or ‘express’, service. On its own, the word does not convey the idea of anything being shared and of course it is the concept of sharing (in particular the sharing of computer files) which is both at the core of RapidShare’s business and the principal idea conveyed by RapidShare’s mark.

Domain names whole or in part similar to a trademark only become confusing when they confuse the “objective bystander” as the concurring in part Panel stated in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010). As “noble” is not owned by Barnes & Noble, Barnesandnoble.com, LLC v. Rosenblum, FA 1089020 (Nat. Arb. Forum November 15, 2007), “rapid” is not owned by RapidShare. “Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.”

The result was otherwise in the <rapidpiracy.com> case because the Panel (the same as in <rapid.org>) was persuaded that the “no less than three direct references to the Complainants in the first few lines of the webpage … [made it] clear [to him] that the Respondent is seeking to associate himself with the Complainants’ services.” On that finding, the Panel hung his conclusion that “there is nothing before the Panel that would suggest that it cannot infer from that recent use the Respondent’s intent at the time of registration.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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