The Complainant is Associazione Radio Maria of Erba, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Domain Manager, Samirnet -domain names for sale of Bangalore, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2107.
The Center appointed Mladen Vukmir as the sole panelist in this matter on March 28, 2017. 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 Panel has determined the following non-contested facts:
I. The disputed domain name was created on August 21, 2016 (Annex A to the Complaint);
II. The Respondent is the registrant of the disputed domain name (Annex A to the Complaint and confirmed by the Registrar in verification response as of February 23, 2017);
III. From the evidence submitted by the Complainant (Annex F to the Complaint) and by visiting the website linked with the disputed domain name, it arises that the disputed domain name is used as a parking page with sponsored links to third party websites. Some of these third party websites are radio stations/broadcasters;
IV. The Complainant is the holder of a number of RADIO MARIA trademark registrations (Annex E to the Complaint), including:
Trademark
Trademark Office
Registration number
International classes
Date of the registration
RADIO MARIA
Intellectual Property India
1287078
38
May 31, 2004
RADIO MARIA
WIPO
600288
38
May 17, 1993
RADIO MARIA
EUIPO
3471562
9, 16, 38
March 7, 2006
IV. The Complainant is the registrant of a number of domain names which incorporate its RADIO MARIA trademark (inspecting the publicly available WhoIs records). 5. Parties’ Contentions A. Complainant
The Complaint, essentially, asserts that:
(i) Associazione Radio Maria is an Italian non-profit organization, formed in 1987 by laymen and priests in order to give Radio Maria (a Catholic parish radio born in 1983) independence from the parish and a larger scale in its commitment of evangelization. Radio Maria became a national broadcasting station, while in the 1990’s, the Radio began expanding over the world. In 1998 The World Family of Radio Maria was established and now operates in more than 55 countries and in more than a dozen languages, its signal covers nearly 300 million people throughout the world. Radio Maria also broadcasts online, through the website “”.
(ii) Radio Maria excludes all types of advertising (due to its spiritual mission), it survives on the sole free contributes of its affected listeners and never relies on sponsorships.
(iii) The disputed domain name is identical or confusingly similar to the Complainant’s RADIO MARIA trademark. In this regard, the Complainant asserts that:
- Trademark RADIO MARIA has been filed, registered and used worldwide by the Complainant and in this regard, the Complainant lists following trademark registrations: Indian trademark registration RADIO MARIA No. 1287078, granted on May 31, 2004, and duly renewed; International trademark registration RADIO MARIA No. 600288, granted on May 17, 1993, and duly renewed; European trademark registration RADIO MARIA No. 3471562, granted on March 7, 2006;
- The Complainant is the owner of the domain names incorporating its RADIO MARIA trademarks, including: , , , , , , , , , , , , , , , , , , , , , , , , ;
- The ownership of the Complainant over the RADIO MARIA trademark has been confirmed in a number of earlier UDRP cases, e.g. Associazione Radio Maria v. Land Merchandising Corp,WIPO Case No. D2010-0140 (); Associazione Radio Maria v. Mr. Hong Hee Dong,WIPO Case No. D2005-0062 (); Associazione Radio Maria v. Satnet S.A.,WIPO Case No. D2006-0376 (); Associazione Radio Maria v. Private Whois Escrow Domains Limited/Comdot Internet Services Private Limited,WIPO Case No. D2008-0477 (); Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2009-0263 (); Associazione Radio Maria v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2009-1422 (); Associazione Radio Maria v. Texas International Property Associates,WIPO Case No. D2009-1359 (); Associazione Radio Maria v. Lu Lan,WIPO Case No. D2010-0103 (); Associazione Radio Maria v. Paperboy and Co., Representative Domain Management/Otsuka Hideki, Vivacraft Corporation,WIPO Case No. D2010-0515 (); Associazione Radio Maria v. Ho Nim,WIPO Case No. D2010-0607 ();
- The disputed domain name redirects to a parking page that contains several links sponsoring online radios which have no connections with the Complainant;
- The disputed domain name reproduces the Complainant’s RADIO MARIA trademark with the addition of the letters “fm” at the end which is, pursuant to the Complainant, a negligible difference between the Complainant’s trademarks and the disputed domain name. The Complainant further states that the letters “fm” represent the acronym “frequency modulation”, a system of transmission based on the radio frequency signal which is a mere description referring to the Complainant’s broadcasting activity. Therefore, the Complainant claims that the inclusion of these letters in the domain name even increases the risk of confusion for the consumers, who could believe that there is a connection with the Complainant.
(iv) The Respondent has no rights or legitimate interests in respect of the domain name, and in support of such claim contends that:
- The Respondent has neither relationship nor is connected with the Complainant who never authorized nor licensed the Respondent to use the Complainant’s RADIO MARIA trademark or the disputed domain name;
- The disputed domain name does not correspond to the Respondent’s name and the Complainant states that, to the best its knowledge, the Respondent is not commonly known as “RADIOMARIAFM”;
- The Complainant does not find any fair or non-commercial use of the disputed domain name, and it is questionable that the disputed domain name is used for bona fide offerings. To the contrary, the current use of the disputed domain name is clearly unfair.
(v) The Respondent has registered and used the disputed domain name in bad faith and in this regard the Complainant claims following:
- By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on its website;
- The Complainant’s trademark RADIO MARIA is well-known throughout the world and the Respondent, by registering, using and exploiting the disputed domain name, is using its reputation and achieving an enhanced advertising of the Respondent’s company. Moreover, the unlawful exploit of the Complainant’s RADIO MARIA trademark may attract Internet users to a website which is not related to the Complainant. The current use of the disputed domain name is highly confusing and misleading for both Internet users and radio listeners, who may think that the aforesaid website and the related links are somehow connected to the Complainant, which is not true;
- When registering the disputed domain name, the Respondent knowingly chose the domain name consisting of the Complainant’s trademark, with the mere addition of the letters “fm” at the end, for if the Respondent had carried out even a basic Google search in respect of the wording RADIO MARIA, the same would have yielded obvious references to the Complainant. Therefore, it is more than likely that the disputed domain name would not have been registered if it were not for the Complainant’s trademark, which is a proper evidence of the bad faith concerning the registration of the disputed domain name;
- The Respondent has originally intended to exploit the reputation as well as the goodwill of the Complainant’s RADIO MARIA trademark as well as the name of its association, with the purpose to attract Internet users to a website which is not related to the Complainant and which is sponsoring radio stations in competition with the Complainant. In this regard, the Complainant cites WIPO UDRP panel decisions KSBJ v. John Michael Holland,WIPO Case No. D2001-0481; Crystal Cathedrals Ministries, Inc. v. Edu Stuivenberg dba Bedroom Graphics,WIPO Case No. D2002-0102; Society of St. Vincent de Paul, Council of the United States v. Alex Yip,WIPO Case No. D2004-0121; with the purpose of showing the attractiveness pertaining to trademarks of religious associations and institutions;
- The Complainant is suffering a serious harm caused by current use of the disputed domain name, while the Respondent is gaining undue benefits, taking unfair advantages of the renown of the Complainant’s RADIO MARIA trademark. Internet users may reasonably suppose that the disputed domain name is somehow connected to the radio stations mentioned in the Respondent’s parking page and is receiving donations and contributions from the latter;
- The disputed domain name is connected to the parking page, which is used for commercial purposes, while the Complainant is a non-profit organization. The disputed domain name contains links to diverse radio stations as well as several advertising websites, which are not related to the Complainant. In this regard, the Complainant cites decisions in earlier WIPO UDRP cases in which panels found the bad faith arising from use of the Complainant’s RADIO MARIA trademark: Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester,WIPO Case No. D2015-1556; Associazione Radio Maria v. Contact Privacy Inc. / ICS Inc.,WIPO Case No. D2012-0826; Associazione Radio Maria v. Texas International Property Associates,WIPO Case No. D2009-1359; Associazione Radio Maria v. Private Whois Escrow Domains Private Limited / Comdot Internet Services Private Limited,WIPO Case No. D2008-0477 and Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2009-0263;
- On December 22, 2016, a cease and desist letter was sent to the Respondent, asking him to immediately cancel the disputed domain name, however, the Respondent did not reply nor comply with the stated request. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is confusingly similar to a trademark 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. A. Identical or Confusingly Similar
Primarily, the Panel emphasizes that under the general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence to show that it is the owner of numerous RADIO MARIA trademarks registered in several jurisdictions, including in India, where the Respondent appears to be located.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine confusing similarity. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainant’s RADIO MARIA trademark in its entirety without any modifications, and that the same RADIO MARIA trademark of the Complainant is clearly recognizable as such within the disputed domain name.
The Panel must further answer the question, whether adding the lettering “fm” to the Complainant’s RADIO MARIA trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s RADIO MARIA trademark.
With respect to the above, the Panel upholds the Complainant’s contention that the addition of the lettering “fm” to the Complainant’s RADIO MARIA trademark in the disputed domain name is insufficient to prevent a finding of confusing similarity. Namely, letters “fm”, which represent the acronym for “frequency modulation”, a system of transmission based on the radio frequency signal, are clearly generic and/or descriptive. As such, letters “fm” are not sufficient to overcome the confusing similarity with respect to the Complainant’s RADIO MARIA trademark, which remains the dominant and only distinctive element in the disputed domain name. To the contrary, this Panel shares the Complainant’s view, that adding of said lettering “fm”, might in fact reinforce confusion on the part of public as to the connection between the Complainant’s RADIO MARIA trademark and the disputed domain name. It would be entirely reasonable for anyone seeking information regarding the Complainant and its activities to type the lettering “fm” together with the Complainant’s RADIO MARIA trademark, since the acronym “fm” refers to the Complainant’s broadcasting activity.
Panels in earlier UDRP cases have found the Complainant’s RADIO MARIA trademark to be well-known or widely known. See particularly, Associazione Radio Maria v Texas International Property Associates,WIPO Case No. D2009-1359;and Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester,WIPO Case No. D2015-1556. In addition, panels in a number of earlier UDRP cases have found under similar circumstances, i.e., domain names consisting of the Complainant’s RADIO MARIA trademark and the geographical term, to be confusingly similar to the same Complainant’s trademark (see, Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester,WIPO Case No. D2015-1556; Associazione Radio Maria v Contact Privacy Inc. / ICS Inc.,WIPO Case No. D2012-0826; Associazione Radio Maria v. Private Whois Escrow Domains Private Limited / Comdot Internet Services Private Limited,WIPO Case No. D2008-0477; and Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited, supra).
Regarding the applicable generic Top Level Domain (gTLD) “.org” in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name confusingly similar to its RADIO MARIA trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, [use by the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) [Where the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [Where the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […].”
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Namely, the Complainant has established that it is the owner of a number of RADIO MARIA trademarks registered in various jurisdictions around the world, including India where the Respondent is apparently located, as well as that the Complainant’s has used the same trademarks, in the first place through the Complainant’s website available under the domain name .
The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Furthermore, from the records, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its RADIO MARIA trademark, or to apply for or use any domain name incorporating the same trademark.
As discussed earlier, from the evidence submitted by the Complainant (Annex F to the Complaint) and by visiting the website linked with the disputed domain name, it arises that the disputed domain name is used as a parking page with sponsored links to third party websites, which presumably generate pay-per-click revenue for the Respondent. Some of these third party websites are radio broadcasters.
Having in mind the renown of the Complainant RADIO MARIA trademarks, in this Panel’s opinion it can be safely concluded that the Respondent deliberately chose to include the Complainant’s RADIO MARIA trademark in the disputed domain name, in order to trade on the renown of the Complainant’s trademarks and to achieve commercial gain by misleadingly diverting consumers. Such use cannot be considered as a legitimate non-commercial or fair use nor does it constitute a bona fide offering of goods and services.
Panels in earlier UDRP cases have generally recognized that use of a domain name to post parking and landing pages or pay-per-click links would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where such links are based on trademark value and are resulting in a connection to goods or services competitive with those of the rights holder, which is the case here (see paragraph 2.6. of WIPO Overview and e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA,WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; O, Inc. v. Metro Media, WIPO Case No. DME2009-0001; and Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2009-0263).
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant by making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failure to produce any arguments or evidence to the contrary. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Owing to the lack of Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant’s RADIO MARIA trademark, because of:
- numerous RADIO MARIA trademark registrations worldwide, including in India, where the Respondent is apparently located;
- extensive use of the same trademark registrations on the market and the Internet by the Complainant;
- addition of the “fm” lettering to the Complainant’s RADIO MARIA trademark in the disputed domain name (i.e. the acronym for “frequency modulation”, a system of transmission based on the radio frequency signal), that in this Panel’s opinion clearly refers to the Complainant’s broadcasting activity.
Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see paragraph 3.4 of WIPO Overview 2.0).
Furthermore, and as already discussed above, the disputed domain name resolves to a website used as a parking page with sponsored links to third party websites. Having in mind the renown of the Complainant and its trademarks, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The presence of the Complainant’s RADIO MARIA trademark in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name clearly benefits from the same.
For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:
(i) Sanofi v. PrivacyP / ICS Inc., WIPO Case No. D2012-1293 (): “previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031 (, and ): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;
(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292 (): “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;
(iv) Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester,WIPO Case No. D2015-1556 (): “The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy”.
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: April 11, 2017
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