Greenberg Traurig represented a plaintiff in a domain dispute and lost, despite the respondent’s complete lack of participation. [HT: Randazza]
To add irony to the embarrassment, plaintiff RapidShare.com is one of the biggest facilitators of software piracy on the internet. (Although to be fair, a German court recently ruled that RapidShare itself was not responsible for the infringement by its users.)
So how does a website represented by one of the world’s top law firms lose a case to an unrepresented Russian running another piracy-promoting website?
Details after the jump.
The WIPO Domain Dispute is RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov, Case No. D2010-0696.
The action is a dispute between RapidShare (which, by the way, are allegedly the 12th-most visited on the internet), and Tvortsov’s “RapidBay.net”
For those who didn’t make the glaringly obvious derivation of that name, it’s an amalgam of RAPIDshare + thepirateBAY – the peanut butter and chocolate of software piracy (the panelist considered that the “bay” might be short for “eBay,” but we think the full-on piracy theme is more likely).
And again, just so there’s no confusion – both sites have had varying degrees of success in disassociating themselves from the nefarious purposes to which their users have put the sites.
Greenberg Traurig’s pleadings alleged three main issues (the short version without internal citations):
1. The Domain Name is confusingly similar to RapidShare’s mark. It consists of RapidShare’s mark, switching out the element “share” for the element “bay”. The deletion of the element “share” and the addition of the element “bay” does nothing to distinguish the Domain Name from RapidShare’s mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name.
3. The Domain Name was registered in bad faith, and has been used in bad faith.
Tvortsov never bothered to respond, but WIPO appears to have tighter standards against default judgments than the vague memories we have of Civil Procedure from many many moons ago.
According to the ruling,
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
And decide the panelist did.
The Complainants have not proved that they have any trademark or service mark rights in the expression “rapid bay”, or in the word “rapid”. The only relevant right they have proved is a right in the expression “rapidshare”. The issue is whether the use of the word “rapid” in both RapidShare’s mark and the Domain Name, is enough to get the Complainants over the line on the “confusingly similar” issue. On balance, the Panel is not satisfied that it is.
Losing to a no-show pirate isn’t even the worst WIPO loss we’ve written about for Greenberg Traurig.
The firm also brought a suit on behalf of a client against poker pro, and familiar opponent of the firm, Dutch Boyd (who just won another WSOP bracelet (2nd item)) in which the action was found to have been brought in bad faith and constituted an attempt at reverse hijacking.
We’re sure they’ve won plenty of others, but don’t expect to find those two cases in the firm’s marketing materials.
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