The Complainant is Radio Italia S.p.A. of Milano, Italy, represented by Studio Legale Turini, Italy.
The Respondent is Mdnh Inc, Brendhan Hight of Las Vegas, Nevada, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America.
The disputed domain name <radioitalia.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2010. On March 4, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 4, 2010, eNom transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it;
(b) the Respondent is listed as the registrant of the domain name;
(c) the current contact details for the respondent are as given in the Complaint;
(e) English is the language of the registration agreement.
In response to a notification by the Center regarding the Respondent's identity, the Complainant filed an amended Complaint on March 5, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2010. The Response was filed with the Center March 31, 2010.
The Center appointed Warwick A. Rothnie, Massimo Introvigne and Alan L. Limbury as panelists in this matter on April 29, 2010. The Panel finds that it was properly constituted. Each member of 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.
Following the appointment of the Panel, on April 30, 2010 the Complainant requested that it be given a period in which to file a reply in answer to the Response. Apparently, an earlier request had been made prior to the appointment of the Panel. The Complainant's request did not identify what aspects of the Response it wished to deal with or why whatever matters it proposed to address had not been addressed in the Complaint already.
That being the case, on May 3, 2010, the Panel exceptionally issued Procedural Order No. 1 providing the Complainant until 4.00pm in Geneva on May 7, 2010 for submission of the proposed Reply without prejudice to the Panel's right to accept or exclude any Reply if filed. The projected date for the Panel's decision was extended to May 18, 2010.
Later on May 3, 2010, the Respondent requested that a period be specified for it to respond to the Reply. The Panel rejected this request as premature.
On May 6, 2010, the Complainant submitted its proposed Reply. The Panel noted its receipt and indicated to the parties that it would proceed to prepare its decision in accordance with the revised timetable. The Respondent did not make a further request to respond to the proposed Reply.
The Complainant was apparently founded in 1982, dedicated to broadcasting Italian music only. It broadcasts programming in Italy and a number of other European countries. It is also available in the United States of America (USA) via satellite through Echostar and the Dish Network.
Amongst other things, it is the owner of Italian registered trademark No. 0001132339 for
Trademark No. 0001132339 is registered in respect of goods and services in International Classes 9, 16 and 38. It is dated August 7, 2008, but has a first filing date from June 7, 1995.
The Complainant operates a website at “www.radioitalia.it”. Apparently, the Complainant also held the registration for the disputed domain name between 1996 and 2000. For reasons which the Complainant describes as a mistake, the registration was not renewed in 2000.
When the domain name was not renewed, it was registered by Ultimate Search Ltd in Hong Kong, in circumstances which are not fully clear from the record. Subsequently, the Respondent's parent corporation, Marchex Inc., acquired Ultimate Search Ltd in 2005. Although the record does not fully disclose the circumstances, the registration of the domain name was transferred around that time to the Respondent. Exhibit H to the Response explains the nature of the Respondent's activities:
Marchex purchased Name Development Lts. from Hong Kong based UltSearch. UltSearch buys up expired domain names that have strong incoming links and traffic, and then signs up those domains as search affiliates. Users who arrive at the domain name see a list of search terms; clicking on the search terms results in a page of pay per click ads.
When the Complaint was filed, the disputed domain name did in fact resolve to a website which was little more than a fairly generic “parking” page, a print out of which is included in Annex 6 to the Complaint. It is headed RadioItalia.com “Your Radio Resource”. It then has links to “Air Conditioning”, “Alarm Security”, “Appliance Electrical”, “Audio” and “Audio Visual”. There are also “sponsored listings” for “Italia”, “Radios – Incredible Prices”, “Free Internet Radio”, “Listen to UK Radio”, “About a Radio Cheap”, an advertisement for DirecTV and an image of a young woman wearing headphones.
After the Complaint was filed, the website which the disputed domain name resolved to was changed so that it displays a page from Ypeek.com (a yellow pages directory in New York) showing results for “radio control”.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
Before addressing these requirements, the Panel needs to resolve the status of the Complainant's proposed Reply filed on May 6, 2010.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
The Complainant here has not sought to explain the proposed Reply in these terms. Having reviewed the proposed Reply, the Panel declines to admit it. It either reiterates points made in the Complaint or seeks to introduce new evidence about matters such as the extent, if any, of the Complainant's rights in the USA which should have been dealt with in the Complaint. In any event, as discussed below, the proposed Reply would not have affected the outcome for the reasons discussed below.
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant has clearly proved ownership of trademark No. 0001132339 set out above (the “Trademark”). There can also be no doubt that RADIO ITALIA is very well-known in (at least) Italy.
The Complainant also seeks to assert common law rights in, amongst other places, the USA in the Trademark and/or “Radio Italia”. Neither the Complaint nor the proposed Reply provide details about revenues, the number or the geographical spread of subscribers or listeners to the transmissions in the USA or advertising expenditures referable to the Trademark. While the Panel accepts that the Complainant's programming is broadcast by satellite in the USA either by reference to the Trademark or “Radio Italia”, it is not able to infer the acquisition of secondary meaning in the term in the USA from the information in the Complaint (or the proposed Reply for that matter) having regard to the matters discussed below, including the approach to descriptive signs taken in the USA as revealed by the decisions. Accordingly, on the record in this case, the Panel finds that for the limited purpose of this UDRP proceeding the Complainant has not proved the existence of rights in “Radio Italia” or the Trademark at common law in the USA.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. At this stage, it is not relevant what goods and/or services the trademark is registered for or what jurisdiction(s). It is simply a comparison of trademark to disputed domain name. On the other hand, the goods and services for which registration has been secured (or the trademark used in “use” cases) and the relevant jurisdiction(s) may well be relevant on the second and third limbs of the inquiry.
The Respondent contests the relevance of Trademark No. 0001132339 on several grounds. First, it notes that the date of registration on August 7, 2008 is well after the disputed domain name was registered and also well after the Respondent itself acquired the disputed domain name. While this would usually not be a factor for consideration under this head (although potentially relevant on the subsequent issues), it can be dealt with easily in the present context as it appears to proceed on a misapprehension of Italian trademark procedure. Unlike the position in many other countries, a trademark is issued a new registration number when its registration is renewed under Italian law. Thus, while Trademark No. 0001132339 is a different number to that given to the original registration, it is in fact the renewal of the trademark originally registered in June 1996.
Secondly, the Respondent points to the figurative nature of Trademark No. 0001132339 and appears to invite the Panel to find that the trademark registration is invalid for non-use. The Panel would decline any such invitation. If Trademark No. 0001132339 is vulnerable to removal for non-use, the proper course is to seek its removal through the appropriate channels. In this case, the Complainant has provided satisfactory evidence that it does in fact own the registered trademark as a valid and subsisting registration in Italy. It is not part of the Panel's role under the Policy to adjudicate on the validity of rights existing in a Register of Trademarks under national law.
Thirdly, the Respondent points out that the trademark is a figurative mark, with the verbal element consisting of two descriptive terms “Radio” and “Italia”. It contends that the combined term is purely descriptive like the terms “British Meat” and “Brisbane City”: respectively Meat and Livestock Commission v. David Pearce aka OTC/The Recipe for BSE, WIPO Case No. D2003-0645 and Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047.
The Panel considers the present case is not on all fours with the two earlier decisions. In the two earlier decisions, the verbal expression was plainly, directly descriptive. The verbal element of the Complainant's trademark, however, may not be perceived as so directly descriptive: the grammatically correct descriptive term would be “radio italiano” or, in English, “Italian radio”. Thus, while the expression does consist of two ordinary Italian words, it is not totally descriptive and devoid of distinctive character. In addition, the figurative elements of the mark – the plain rectangular border and the angled lettering with both words slanting at the top towards the center of the mark – are not in the Panel's view dominant or characteristic. The plain, unadorned expression is used on the website and, no doubt orally in the station's call sign.
The Respondent also draws attention to a number of other users of the term “Radio Italia”. Disregarding uses not associated with radio broadcasting, these include “Radio Italia Network, Radio FM Italia, Radio Sud Italia, Radio Italia Cinque, Virgin Radio Italia, Gruppo Radio Italia Alfa Tango, Top Italia Radio, Radio Italia Pittsburgh” and a “Radio Italia” program broadcast on Sunday evenings in Cincinnati, Ohio in the USA.
The Panel notes that in all but one of these cases the sign used by the third party includes additional elements to “Radio Italia”, e.g., Virgin Radio Italia. Unlike these uses, the disputed domain name does not include any additional features apart from the gTLD. It is well established that that component can be disregarded in this context. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation vs. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
The verbal element of the disputed domain name (disregarding the gTLD component), therefore, is identical to the verbal element of the Complainant's trademark. The Panel has no doubt that persons familiar with the Complainant's trademark would naturally associate the disputed domain name with the Complainant. It is unlikely for example that a significant section of the public in Italy would wonder whether or not the disputed domain name was associated with the program broadcast in Cincinnati Ohio. Accordingly, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant's Trademark.
In the circumstances of the present case, the Panel next proceeds to consider the third requirement: whether or not the domain name has been registered and is being used in bad faith.
In this connection, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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 a 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 that 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.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
The Complainant invokes paragraph 4(b)(i) above as the basis for its allegation of registration and use in bad faith. In support of this allegation, it contends that the Respondent has not used the domain name in connection with a bona fide offering of goods or services. Rather, it just uses the disputed domain name for a “parking” page and has a website dedicated to selling domain names.
As noted above, the Respondent frankly acknowledges that it seeks to register “high traffic” domain names which have expired in the hope of generating revenue through pay per click advertising. The Respondent contends that there is nothing per se illegitimate in its conduct and points to nine previous Panel decisions concerning descriptive terms which have upheld the legitimacy of its business model.
Each case must of course depend on its own facts and the fact that a respondent has been held on one or more previous occasions not to have registered particular domain names in bad faith would not by itself necessarily mean that it did not register a different domain name the subject of a later dispute in bad faith.
In Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc., WIPO Case No. D2008-1946, however, the learned panel identified the principle applicable in these types of cases as follows:
“…a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain was to profit from and exploit the complainant's trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra. The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant's rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 0285459.
The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the Policy has generally not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254, and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant's mark in mind when registering the disputed domain name. See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661.”
The difficulty for the Complainant in the present case lies in the largely descriptive nature of the verbal element of its trademark. While the Panel has noted above that the expression “Radio Italia” is not totally descriptive, the Panel also acknowledges that the expression does not have a strong inherent capacity to distinguish. It is not for example a particularly surprising juxtaposition of terms as the examples identified by the Respondent demonstrate.
Thus, in terms of the verbal element of the Complainant's trademark, it seems equally plausible or almost equally plausible that it may have been registered for its descriptive significance as for its trademark significance. The website to which the disputed domain name resolved before the Complaint was filed (included in Annexure 6 to the Complaint) does not disclose any of the usual indicia of an intention to trade on the Complainant's trademark. In this connection, the Respondent's location in the USA is a factor to be taken into account. It is difficult to imagine that someone located in Italy would be unaware of the Complainant and its commercial activities. That inference is far more difficult in the case of the Respondent who is not located in Italy and does not seem (at least on the record in this case) to have acquired the disputed domain name as part of a specific exercise in targeting the Complainant.
The Panel also notes the very lengthy passage of time between the Complainant losing the registration of the disputed domain name and the commencement of this dispute. The Policy does not recognize a doctrine of laches as such. Nor, as the Panel understands it, does Italian law. However, if the Respondent had turned its mind specifically to this domain name when it acquired UltSearch and investigated the history of the domain name, it may well have concluded the Complainant was not interested in the disputed domain name any longer.
Finally, the Complainant does not gain any assistance from the attempt to purchase the domain name from the Respondent. The Respondent's appreciation of the value of the disputed domain name could be attributed just as much to its potentially descriptive significance as to any trademark significance.
Accordingly, the Panel finds that the Complainant has not shown that the disputed domain name was registered and is being used in bad faith.
In view of the Panel's conclusion in relation to the “bad faith” element, it is not necessary to consider this element of the Policy.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie | |
Massimo Introvigne | Alan L. Limbury |
Dated: May 14, 2010