The Complainant is Radiola Consumer AG, Switzerland, represented by David-Irving Tayer, France.
The Respondent is Registration Private - Domains By Proxy, LLC, United States of America (“United States”) / Marisol Cortes, United States, represented by Steven Rinehart, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2019.
On July 5, 2019, the Respondent sent an email communication to the Center, stating: “Greetings, please provide me with more information as to what caused the restriction, and also what can be done to resolve this issue. Warm regards, Marisol Cortes”. On July 9, 2019, the Center sent the possible settlement email to the Parties. In reply to the possible settlement email, the Respondent sent an email communication, stating: “I thank you for your response. I am still confused as to what is happening. Who are the parties involved? We have owned this domain for over 20 years and we have never had any problems. I have tried contacting God and no one seems to have an answer for me. I was advised to respond to this email which I did and I am still perplexed on the situation as no one has explained the circumstance. Who filed a complaint against ? and why? I do not understand how the dispute can be settled if I have no clue what is happening. Can someone direct me to the correct party so I can get some answers. Warm regards, Marisol Cortes”. As no request for suspension of the proceedings was received from the Complainant, the proceeding continued.
The Center verified that the Complaint together with the amended 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 July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Response was filed with the Center on August 1, 2019.
The Center appointed John Swinson as the sole panelist in this matter on August 8, 2019. 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.
The Complainant submitted additional submissions by way of email on August 9, 2019. The Center forwarded this email to the Panel on August 10, 2019. 4. Factual Background
The Complainant is Radiola Consumer AG, a company incorporated in Switzerland, originally in the business of manufacturing radios and apparently as early as the 1950s for consumer electronics such as vacuums, freezers, refrigerators, and blenders.
The Complainant is the registered owner of a number of trade marks for RADIOLA, including International Registration No. 182480 for registered on February 3, 1955 (the “Trade Mark”).
The Respondent is Marisol Cortes, an individual of the United States. The Disputed Domain Name was registered on February 10, 2000. The Disputed Domain Name resolves to a parking page containing pay-per-click (“PPC”) links generated by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
The Complainant’s registered trade name includes the Trade Mark, which is duly protected by Swiss law and Article 8 of the Paris Convention.
The Disputed Domain Name includes and reproduces the Trade Mark identically and entirely. It is well established that domain suffixes are disregarded for the purpose of this comparison. The Disputed Domain Name is identical to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as it has no prior rights to the name.
The Respondent is not an authorised reseller.
Considering the reputation of the Complainant, the Respondent could not have ignored the brand RADIOLA and was aware of the existence of the Trade Mark.
The Respondent did not respond to the Complainant’s cease and desist letter. The Respondent’s attitude shows an intent of being hidden.
The Respondent is using a parking page including links in connection with the goods of the Complainant and thus diverts potential customers to the Complainant’s competitor. The Respondent did not take the necessary steps to avoid any confusion. The Respondent's intent is clearly to abuse both customers by misleading them and the Complainant in presenting a webpage that tarnishes the repute of the Trade Mark.
The sole purpose of the Respondent is to drag traffic away, or to collect contacts from email addresses made up with the Disputed Domain Name from the Complainant and at least to prevent the Complainant from being the owner of the Disputed Domain Name.
Registered or Used in Bad Faith
The Respondent registered and used the Disputed Domain Name:
- for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs; and/or
- to attract or collect information from Internet users for commercial gain leading to the disruption of the business of the Complainant;
as demonstrated by the following:
- the malicious attitude of the Respondent, in addition to not having any legitimate interests or rights to the Disputed Domain Name;
- the Respondent presenting a “parking page” using common terms related to the activity of the Complainant; and
- the Respondent using the Disputed Domain Name to divert Internet users. The Respondent may also be using emails attached to the Disputed Domain Name to mislead the consumer making them believe that the Respondent is an authorised person for the Complainant. B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar / Rights or Legitimate Interests
The registrant of the Disputed Domain Name is Aaron Wasserlauf, an individual of the United States (“the Registrant”). The Respondent is the assistant to the Registrant and was added to the registrant name recently for mailing purposes only.
The Respondent had never heard of the Complainant until the Complainant contacted the Respondent 15 years after registration of the Disputed Domain Name asking the Respondent to sell the Disputed Domain Name.
The Respondent registered the Disputed Domain Name because of its meaning as a generic word. The Disputed Domain Name wholly incorporates the generic Latin word radiola, a botanical term and the diminutive form of the Latin word radius. The Respondent has always used the Disputed Domain Name for personal emails and not for any purpose which would confuse the Complainant’s customers.
The Complainant has no enforceable trade mark rights against the Respondent because the Complainant relies on a generic Latin mark. Neologisms common in the industry are not protectible. The Complainant would not be able to register the Trade Mark in the US or Canada because it is descriptive or generic.
The use of a common word domain name related to the descriptive meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services.
Registered or Used in Bad Faith
The Complainant relies on only European trade marks. The Respondent is a resident of the United States. The Complainant does not have a trade mark in the United States and there are eleven other trade marks in the names of other parties. This is evidence of extensive third-party use of the Trade Mark.
The Complainant has not shown that the Respondent had actual notice of the Complainant prior to registering the Disputed Domain name. Constructive notice is insufficient. It is not enough for the Complainant to allege that it has a trade mark.
The Complainant has not met its burden of proof. The Complainant has submitted no evidence of any kind beyond its own trade marks, including of bad faith registration or use, that the Respondent lacks legitimate rights or argument beyond boilerplate recitations of the Policy. The Complainant makes no assertions about the registration date of the Disputed Domain. The Complainant fails to substantiate its allegations and to make the allegations themselves.
Laches
Laches can provide a bar to a UDRP claim. The Complainant has waited nearly 20 years to bring the Complaint and at least 8 years after the Complainant first became aware of the Respondent’s use. The Complainant has not provided an explanation for its delay. This factor combined with the lack of evidence of bad faith bodes in favor of denying the Complaint.
Reverse Domain Name Hijacking
The Complainant had no bona fide basis for commencing this proceeding under the Policy and is culpable for Reverse Domain Name Hijacking. This is an attempt by the Complainant to seize another’s domain name with no right to do so. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant. A. Procedural Matters – Additional Submissions
The Complainant submitted additional submissions by way of email on August 9, 2019. The Center forwarded this email to the Panel on August 10, 2019.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Rule 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional unsolicited submissions (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel has reviewed the additional submission and has not considered them because they make no difference to the outcome of this case. B. Procedural Matters – Laches
The Respondent submits that laches can provide a bar to a complaint and the Complainant’s 20-year delay in bringing the Complaint bodes in favor of denying the Complaint on the basis of laches alone. The Panel notes that the prevailing view among panelists is that mere delay does not bar a complainant from filing a complaint or from prevailing on the merits (see section 4.17 of WIPO Overview 3.0).
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.
The Complainant is not barred from bringing a Complaint by reason of its delay. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The Top Level Domain (“TLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (See section 1.11.1 of WIPO Overview 3.0).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Despite holding the Disputed Domain Name for a significant period of time, there is no evidence of any use of the Disputed Domain Name by the Respondent or any person associated with the Respondent, other than for a parking page with PPC links related to radio or music, but not to the generic / dictionary sense that the Respondent itself claims to underpin its registration. This is not a bona fide offering of goods or services (see sections 2.9 and 2.10 of WIPO Overview 3.0).
- The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising unrelated to any claimed generic / dictionary meaning, which presumably generates revenue.
The Respondent submits that it registered the Disputed Domain Name because of its meaning as a generic word and this constitutes legitimate rights in the Disputed Domain Name. The use of a domain name to host a page comprising PPC links may constitute rights or legitimate interests where the domain name consists of a dictionary word or phrase and the PPC links genuinely relate to the dictionary meaning of the word or phrase (see section 2.9 of WIPO Overview 3.0). However, the Panel does not accept the Respondent’s submission that RADIOLA is a dictionary or common term. The Respondent’s screen capture of a book using radiola as a botanical term lacks any context whatsoever and in any event none of the PPC links are about botany. The Respondent also submits a Wikipedia entry where radiola appears to be a part of a sea urchin fossil, a musical album, and a brand; again none of these assist the Respondent in supporting its claims regarding its choice of the Disputed Domain Name. The Panel has undertaken its own searches and has not found the term RADIOLA defined in a reputable dictionary. The Panel has also undertaken a translation search for the term RADIOLA, and this term did not correspond to any English meaning.
The Respondent also submits that the Respondent has always used the Disputed Domain Name for personal emails and not for a purpose which would confuse the Complainant’s customers. The Panel notes that use of an email can be a legitimate use of a domain name under the Policy for example, where a registrant has established a business of providing email services using the relevant domain name, or where a domain name is being used as a registrant’s primary personal or business email address (see Thebuyerpool Limited v. Private Registration / Stephen Pomeroy,WIPO Case No. D2018-0133). The Respondent has not provided any evidence of use of the Disputed Domain Name in this way. Bland assertions by the Respondent are not sufficient without evidence.
The Respondent has not rebutted the prima facie case. The Complainant succeeds on the second element of the Policy. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Registered in bad faith
The Disputed Domain Name was registered on February 10, 2000. This is some time ago.
The Complainant registered the Trade Mark on February 3, 1955. The Complainant has also provided evidence of the use of the Trade Mark dating back to the 1960s. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview).
However, in this case the Complainant has not provided any evidence or made any assertions that it was well known internationally or well known in the United States (where the Respondent resides) at the time of registration of the Disputed Domain Name. Further, the evidence of use and reputation of the Trade Mark provided by the Complainant appears to be wholly or predominantly in a language other than English. The Complainant has not shown that the Trade Mark was famous or widely-known in 2000 when the Disputed Domain Name was registered.
The Respondent submits that the Complainant’s marks could not have been found online at the time of registration. The Complaint is silent on this issue. The fact that the Disputed Domain Name was registered in 2000 (when search engines were less advanced – Google started in about 1998) also makes it difficult for the Panel to determine whether an Internet search at this time would have revealed the Complainant’s trade mark, reputation or business.
The Complainant has not been able to show that the Respondent knew or should have known of the Complainant at the time it registered the Disputed Domain Name. The Panel accepts the Respondent’s submissions that there are other users of the RADIOLA mark. For example, the Panel’s own research has revealed that the Australian company AWA and the US company Radio Corporation of America (“RCA”) appear to have been using the RADIOLA brands about 100 years ago, owned registered trade marks, and allowed these trade marks to lapse in more recent times.
If the Respondent registered the Disputed Domain Name because of RCA’s trade mark (which one may consider to have been famous in the United States, during the time radios were used for family entertainment before TV arrived), and this trade mark has now lapsed in the USA and no longer used by RCA, then doing so is unlikely to be bad faith registration under the Policy. However, the Respondent does not assert that was the reason he registered the Disputed Domain Name.
The Panel does however accept the Respondent’s submission that the Respondent was not aware of the Complainant at the time of registration of the Disputed Domain Name. Because the Complainant waited 19 years to bring this Complaint, the task of the Complainant of proving that the Respondent registered the Disputed Domain Name because of the Complainant’s reputation in 2000 is more challenging. In short, the Complainant has failed to provide sufficient evidence of bad faith registration.
No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).
Used in bad faith
Whilst not strictly necessary, the Panel will also consider the use of the website at the Disputed Domain Name.
The Respondent has used the website at the Disputed Domain Name as a PPC link page. The Panel accepts that often using a website for PPC links directed at a complainant’s industry can amount to a finding of bad faith. Further, a Respondent cannot disclaim responsibility for content appearing on the website associated with the Disputed Domain Name (see section 3.5 of the WIPO Overview 3.0). However, in this case the PPC links on the Respondent’s parking page appear to be mostly of a generic nature corresponding to the “radio” portion of the Disputed Domain Name. The Panel does not find that the PPC links are designed to take advantage of the Complainant.
The Respondent had not offered to sell the Disputed Domain Name and was not contacted by the Complainant until 15 years after registration of the Disputed Domain Name. The Respondent’s assertion that it was not aware of the Complainant specifically until this date is a believable assertion.
The Complainant argues that the Respondent uses the Disputed Domain Name to attract or mislead consumers based on the reputation of the Complainant. The Complainant points to the privacy service that the Respondent has used in this regard. However, the Complainant has not provided any evidence of actual confusion or the Respondent seeking to cause confusion. According to the Respondent’s submissions, the Respondent has only used the Disputed Domain Name for personal emails.
The Panel finds that the Complainant has not proved that the Respondent registered and used the Disputed Domain Name in bad faith.
In light of the above, the Panel finds that the Complainant has not established the third element of the Policy. F. Reverse Domain Name Hijacking
The Respondent submits that the Complainant has engaged in Reverse Domain Name Hijacking.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Having regard to the reasons articulated in section 4.16 of WIPO Overview 3.0, the Panel is not satisfied that the Complaint, while ultimately unsuccessful, was brought in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied. Further, the Panel does not make a finding of Reverse Domain Name Hijacking.
John Swinson
Sole Panelist
Date: August 22, 2019
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