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WIPO-UDRP Entscheid
D2009-1422

Fallnummer
D2009-1422
Kläger
Associazione Radio Maria
Beklagter
Transure Enterprise Ltd, Host Master
Entscheider
Landry, J. Nelson
Betroffene Domain(s)
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
14.12.2009

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Radio Maria v. Transure Enterprise Ltd, Host Master

Case No. D2009-1422

1. The Parties

The Complainant is Associazione Radio Maria of Erba, Italy, represented by Perani Pozzi Tavella, Italy.

The Respondent is Transure Enterprise Ltd, Host Master of Tortolla, Virgin Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <radiomariatogo.org> is registered with Above.com Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2009. On October 22, 2009, the Center transmitted by email to Above.com Pty Ltd. a request for registrar verification in connection with the disputed domain name. On October 23, 2009, Above.com Pty Ltd. 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 November 3, 2009 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 amendment to the Complaint on November 3, 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”), 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 November 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2009.

The Center appointed J. Nelson Landry as the sole panelist in this matter on December 1, 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 has started to use the trademark Radio Maria in 1987 (herein the “Trademark”) and within three years it became a national broadcasting station in Italy and subsequently expanded to the rest of the world. In 1998, the World Family of Radio Maria was established and now the Complainant operates with several stations in over 45 countries and in more than a dozen languages and its signal now covers nearly 300 million people. Furthermore, the Complainant also broadcasts online through the website “www.radiomaria.org”. The Complainant's organization survives on the free contribution of its listeners and does not rely on advertising or sponsorship.

The Complainant filed and obtained a registration for the Trademark Radio Maria in several countries including the community trademark registration 3471562, granted on March 7, 2006, international trademark no. 600288, granted on May 17, 1993, United States of America (US) Trademark registration 1924809 granted on October 3, 1995, Australian Trademark registration no. 629027, granted on January 20, 1995 and African Union registration no. 33267 extended to Togo, granted on October 29, 1993.

The Complainant broadcasts in Togo through its website “www.radiomaria.tg”.

The Respondent registered the domain name <radiomariatogo.org> (herein the domain name in dispute) on April 19, 2007. The domain name in dispute is linked to several other websites offering different services such as house rentals, hotels, travels, online dates and other matters, none of which are of a religious nature nor related to the Complainant (annex I).

The Complainant has never authorized or given to the Respondent the permission to use its Trademark alone or within the domain name in dispute.

5. Parties' Contentions

A. Complainant

The Complainant represents that the Trademark that it owns and has registered is wildly used throughout the world, is well-known and further represents that its ownership was considered and acknowledged in several WIPO decisions. See 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 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.

The Complainant alleges that the domain name in dispute is almost identical to its Trademark except for the addition of the word “togo”. Furthermore, the Complainant considers that the word “togo” increases the risk of confusion for Internet users since one of Radio Maria's stations broadcasts from Togo.

The Complainant represents that the domain name in dispute does not correspond to the Respondent's name and that the Respondent is not commonly known as Radiomariatogo. There is no fair or non–commercial use of the domain name in dispute and same is not used for any bona fide offering of goods and services.

On the basis of the above representations the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The Complainant represents that the Respondent registered the domain name in dispute in bad faith and has used it in bad faith and relies on the fact that the registration was done with the intention of attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with its Trademark as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant submits that the Respondent should know about the Complainant's worldwide known Trademark when it registered the domain name in dispute and planned to use it to exploit the reputation of the Trademark RADIO MARIA. The addition of the geographic term would likely make Internet users believe that the domain name in dispute refers to the Complainant's broadcasting activities from Togo.

According to the Complainant, its well-known Trademark around the world was chosen because of its association with the country Togo in which country the Complainant is engaged in broadcasting activities. Rather than coincidence, the selection of the domain name in dispute by the Respondent reflects the latter's intention to exploit the fame of the Complainant's Trademark in attracting Internet users to a website not related to the type of activities of the Complainant and the Complainant relies on former decisions of UDRP panelists. See 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.

On the basis of this evidence, the Complainant contends that the domain name in dispute was registered in bad faith and is used in bad faith and furthermore is causing serious damages to the Complainant in that Internet users may assume that the activities of the Complainant are sponsored by the entities who are linked to the Respondent's website and thus discourage persons from making donations to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent 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.

Prior to engaging in the discussion, the Panel considers appropriate to comment on the identity of the Respondent in this case.

As it appears from the procedural history herein and the information received from the Registrar of the domain name in dispute, the Respondent is “Transure Enterprise Ltd., Host Master” with a business address in Tortola, Virgin Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland, and not “Host Master, Above.com Domain Privacy” located in Australia as it appears in the WhoIs search. Although the Respondent was properly served with the Complaint as amended, it did not file any response nor any explanation for such disparity in respect to the WhoIs details corresponding to the domain name in dispute subsequent to the filing of a complaint and the cooperation of the registrar in response to inquiries made by the WIPO Center.

As considered by the panel in TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620, such a situation gives rise to the difficulty of properly identifying the Respondent against whom a decision may be applied or enforced. Having considered the circumstances, e.g. about the two names specifically identified and available in the said proceeding before him, the panel concluded that he “has proceeded on this basis and will for convenience refer to a single Respondent. The Panel is satisfied that the dispute resolution service provider, namely the Center, by sending communications to both the original and subsequent addresses and contacts made available through the registrar, has exercised extreme care and at least fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent”.

The Panel, in the present case, having observed similar care by the Center and taking note of the comments about properly identifying the Respondent, adopts the position taken by the panel cited above and will herein also refer to a single Respondent.

A. Identical or Confusingly Similar

It is clear from the abundant evidence that the Complainant has practically world wide rights in the Trademark RADIO MARIA which, even prior to the registration of the domain name in dispute, was registered and extensively used in at least 45 countries in the world. The Panel determines that the Complainant enjoys rights in its well-known Trademark RADIO MARIA and that the addition of “togo”, a geographic term, does not diminish in any way the likelihood of confusion and perception by Internet users that <radiomariatogo.org> is part of a family of trademarks associated with the Trademark. This possibility of association is further supported by the significant goodwill and notoriety associated with the Trademark and this determination by the Panel is consistent with the earlier decisions of UDRP panels involving the Complainant cited by the latter.

The Panel having determined that the Complainant has rights in the Trademark further finds that the domain name in dispute is confusingly similar with the Complainant's Trademark.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all facts, reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by showing that the Respondent has never been commonly known by the name Radiomariatogo or the domain name in dispute and that its use of the domain name in dispute is not one of legitimate non-commercial or fair use thereof. Furthermore, the Complainant has never given a license to nor in any way authorized the Respondent to make use of the Complainant's Trademark.

There is no evidence that the Respondent has ever engaged is any legitimate business under the Trademark or the domain name in dispute. To the contrary, as reiterated herein, some unauthorized use of the domain name in dispute is associated with a redirection of Internet users visiting the Respondent's website under the domain name in dispute with links therein to other websites associated with commercial activities not related to those of the Complainant, thereby causing damages to the latter, cannot be considered by this Panel as fair use of the domain name in dispute.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

It should be noted that evidence of the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and used in bad faith. Considering the unrebutted evidence which demonstrates that the Trademark has been extensively used by the Complainant since 1987 and its activities expanded as a broadcasting operation in more than 45 countries in a dozen of languages prior to the registration of the domain name in dispute in 2007, it is unconceivable in the circumstances to this Panel that the Respondent was not aware of the activities and the Trademark of the Complainant. The nature of the Trademark comprised of the terms “radio” and “maria”. The domain name in dispute consists of the addition of the country name Togo to the Trademark. Being mindful of the circumstances set out above the Panel is of the opinion that this cannot be a coincidence and that this combination in the domain name in dispute furthermore creates a likelihood of confusion with the Complainant's Trademark. This very high similarity gives rise to a situation of likelihood of sponsorship, affiliation between the Trademark and the domain name in dispute which registration the Complainant has never authorized the Respondent to make. Furthermore the use of a privacy service in this case to hide its identify from display in the WhoIs information of the domain name in dispute does not point at all in favour of good faith; quite to the contrary it adds to the substantiation of bad faith as this Panel concludes.

The Panel finds that the domain name in dispute was registered in bad faith.

The evidence, which has not been challenged by the Respondent, further indicates that the domain name in dispute and Respondent's related website show that this website has several links to other websites where Internet users (likely directed by the confusion) will find offers of and links to various services such as house rentals, hotels, travels and online dates, which services are of a non-religious nature and therefore have no relationship with the activities of the Complainant. The panel in the earlier UDRP decision relied upon by the Complainant, Associazione Radio Maria v. Mr. Hong Hee Dong, supra, stated “typically, the owner of a website such as the Respondent's which contains various links to other sites website receives click-through fees for diverting Internet users to the advertisers”. The Panel adopts this finding and sees therein a corroboration of bad faith.

The Panel furthermore accepts the representations of the Complainant in that firstly the Respondent is engaged in the operation of this website for commercial gain and secondly that this may cause damage to the Complainant who is not engaged in or associated with such a commercial activity and may create a false impression of sponsorship contrary to Complainant's source of financing based on donations.

The Panel finds that the domain name in dispute is being used in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain name <radiomariatogo.org> is confusingly similar to the Complainant's Trademark;

(b) the Respondent has no rights or legitimate interests in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <radiomariatogo.org> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: December 14, 2009