WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited Case No. D2009-0263 1. The Parties
The Complainant is Associazione Radio Maria, of Erba (Como), Italy, represented by Studio Legale Perani, Italy.
The Respondent is Hostmaster Hostmaster, Domain Park Limited, of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 27 and March 3, 2009, the Center transmitted by email to R Corp. a request and a reminder for registrar verification in connection with the disputed domain name. On March 3, 2009, R Corp. transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint in that it further identified the registrant by the name “Hostmaster Hostmaster”. The Center sent an email communication to the Complainant on March 4, 2009 providing the registrant and contact information provided by the Registrar. The Complainant filed an amendment to the Complaint on March 6, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2009.
The Center appointed Gordon Arnold as the sole panelist in this matter on April 2, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant alleges that it is the owner of over 100 trademark and service mark registrations for RADIO MARIA and variations around the world, including:
- European Union Community trademark registration number 003471562 for RADIO MARIA, registered on March 7, 2006, in classes 9, 16 and 38.
- International trademark registration number 600288 for RADIO MARIA, registered on May 17, 1993, in class 38.
- United States of America trademark registration number 1924809 for RADIO MARIA, filed on September 13, 1993 and granted on October 3, 1995, in class 38.
The Complainant alleges that it uses the mark RADIO MARIA in association with radio broadcasts in over 45 countries and broadcasts on-line through websites.
Because no response has been received, these direct factual assertions are undisputed and accepted as true. 5. Parties' Contentions A. Complainant
The Complainant's contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
As a preliminary matter, though the Respondent has not submitted a response, the essential elements of the claim will be reviewed to confirm they have been met. RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242. Where respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The Panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the Panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, the Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”. Because no Response has been received, the Complainant's direct factual assertions are undisputed and accepted as true.
In order to prevail, the Complainant must prove the following (Uniform Dispute Resolution Policy, paragraph 4(a)):
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
There are, inter alia, three “safe harbors” for the Respondent. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) (Uniform Dispute Resolution Policy (the “Policy”), paragraph 4(c)):
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A. Identical or Confusingly Similar
“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.1.
Other UDRP panels have stated that the application of this factor is an objective one that requires only comparison of the trademark to the domain name. Incorporation of a registered trademark as a whole has been held to be sufficient to establish that a domain name is confusingly similar to the Complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). Further, the addition of descriptive or non-distinctive terms to a trademark incorporated in the domain name does not generally preclude a finding of confusing similarity. RRI Financial, Inc., v. Ray Chen, see above.
The Complainant alleges that it has rights in the mark RADIO MARIA on the basis of a multitude of trademark registrations, including registrations in the European Union and the United States. The Complainant alleges that the disputed domain name is almost identical to its registered trademark RADIO MARIA.
The Complainant further alleges that the inclusion of the city name Houston in the disputed domain name actually increases the risk of confusion because Radio Maria broadcasts from Houston, Texas. No affidavit or other testimony was submitted in support of these statements and no affidavit or other testimony was submitted to rebut these statements. However, as argument, the Panel considers this allegation to be a reasonable inference from the evidence that was submitted.
The trademark registrations submitted by the Complainant show that the Complainant has established rights in the trademark RADIO MARIA in at least Europe and the United States.
Because the disputed domain name incorporates the entirety of the registered trademark and adds only a geographically descriptive term, the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. Therefore, the Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2.1.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name does not correspond to a trademark registered in the name of Hostmaster Hostmaster or Domain Park Limited. The Complainant submits no evidence supporting this allegation.
Complainant alleges that the disputed domain name does not correspond to the Respondent's name and that it is not aware of the Respondent being commonly known by the disputed domain name. On this allegation, the evidence presented is the domain registration information provided by the registrar, which lists only two possible names for the Respondent, Hostmaster Hostmaster and Domain Park Limited. Further, the contact information provided indicates the Respondent is located in Berlin, precluding any obvious relationship with even the “Houston” portion of the disputed domain name.
The Complainant alleges that there is no fair or noncommercial use of the disputed domain name. From a review of the printouts of the web page at the disputed domain name provided by the Complainant and a review of the live page by the Panel, the apparent use of the disputed domain name is as a search page featuring sponsored links that likely produce per-click revenue for the disputed domain name holder. See Schering-Plough Corporation and Schering Corporation v. Registrant [240614]: Forum LLC c/o Moniker Privacy Services,WIPO Case No. D2006-1068. Therefore, the evidence available indicates that it is likely that the disputed domain name is being used for commercial gain.
The Complainant alleges that “it is unquestionable that the contested domain name is not used in bona fide offerings.” However, in some circumstances a search page could conceivably be legitimate provided the domain name is not being targeted with the complainant's trademark rights in mind. See Finmeccanica S.p.A. v. Moniker Privacy Services / Guillermo Lozada,WIPO Case No. D2008-0884. In this case, nothing on the Respondent's web page implies that “radio maria houston” is used by the Respondent as either a trademark of the Respondent, a descriptive term, or some other use of the term “radio maria houston” that would be evidence of the Respondent's rights or legitimate interests therein and in view of the confusingly similar nature of the disputed domain name to the trademark.
The Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant cites three prior UDRP panel decisions for the proposition that the attractiveness of the trademarks of religious associations and institutions is relevant to bad faith. However, none of these decisions discussed the religious nature of the Complainant in discussing bad faith. In fact, those cases all involved direct evidence of bad faith (two cases of offers to sell the domain names for more than out of pocket costs and one case of a pattern of activity in registering famous domain names after prior registrations had lapsed). This Panel finds the religious character of the Complainant irrelevant to the question of bad faith and will not infer bad faith based on it. Nevertheless, the factual allegations of extensive use of the mark are unrebutted and, therefore, accepted as true.
The Complainant also alleges that it could be damaged by Internet users supposing “that Radio Maria is sponsored (and thus, is receiving money) by the entities whose links appear on the Respondent's website.” Based on the unrebutted record, such an inference may be appropriate.
A number of prior UDRP panel decisions support an inference of bad faith registration and use when the domain name incorporates trademark that is widely known and in which the Respondent does not have rights or legitimate interests. See Sally Holdings, Inc. v. W. Williams,WIPO Case No. D2005-1103; The American Kennel Club Inc. v. Aaron Clayton,WIPO Case No. D2007-0543. The unrebutted evidence submitted by the Complainant does not directly indicate that the mark at issue is widely known. There is however, indirect evidence of widespread use. While perhaps not sufficient to support an inference of bad faith, alone, it adds weight in favor of such a conclusion.
The Complainant also alleges that “the sole further aim of the owner of the domain under consideration might be to resell the same to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith.”. The Complainant provides no evidence of an offer to sell the website to anyone, or any other circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to anyone for an amount in excess of documented out-of-pocket costs as required to meet paragraph 4(b)(i) of the Policy. The Complainant alleges that the respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant has provided printouts of the website at which provides links to competing radio services.
The presence of a search page or parking page, alone, does not support a finding of bad faith. Finm eccanica S.p.A. v. Moniker Privacy Services / Guillermo Lozada, see above. Although not raised in the Complainant's discussion of bad faith, the Complainant has provided printouts of web pages at that provide links to competing radio services. That the Respondent's website redirects Internet users to services that compete with Complainant is important. Prior UDRP panels have relied on a parking page that redirects the user to a website advertising goods or services competitive with complainant as evidence of bad faith in the context of a finding under paragraph 4(b)(iv) of the Policy. See Cloer Elektrogeräte GmbH v. Motohisa Ohno,WIPO Case No. D2006-0026; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. In a recent dispute involving the same Complainant and similar facts, a UDRP panel held that “registration and linking of its domain name to a pay-per-click search page in the circumstances is in bad faith.” Associazione Radio Maria v. Private Whois Escrow Domains Private Limited/ Comdot Internet Services Private Limited,WIPO Case No. D2008-0477. Therefore, on a balance of the probabilities, this evidence indicates that the disputed domain name has been registered and used in bad faith.
Based on a review of all of the evidence and the reasonable inferences that may be drawn from them, the Complainant has been able to satisfy its burden under paragraph 4(a)(iii) of the Policy. The Panel wishes to make clear that the evidence presented in this case is sufficient to support an inference of bad faith registration and use in the limited circumstances of a domain name dispute under the Policy with a limited remedy. The Panel does not express an opinion regarding the sufficiency of evidence to support a finding of “bad faith” under the laws of any country. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Gordon Arnold
Sole Panelist
Dated: April 16, 2009
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