The Complainant is Associazione Radio Maria of Erba (Como), Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Scot Weise of Nisswa, Minnesota, United States of America.
The disputed domain name <mariahradio.com> (“the Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2011. On November 23, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 23, 2011, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.
The Center appointed David Taylor as the sole panelist in this matter on January 18, 2012. 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 Respondent has submitted an unsolicited Supplemental Filing to the Center on January 21, 2012.
No explicit provision is made under the Policy or the Rules for supplemental filings. Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. It is therefore at the discretion of the Panel whether it will consider such supplemental filings.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a party submitting a supplemental filing “would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional circumstances’”.
The Panel has reviewed the Respondent's Supplemental Filing, in which the Respondent claims that he has a daughter named Mariah, for whom he registered the Domain Name. The Respondent did not, however submit any corresponding evidence.
In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence, and for that purpose, as paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) reads, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision”. The Panel therefore deemed necessary to make factual research on the Respondent's contentions in order to ascertain their authenticity and thus reach the right decision.
The Panel is satisfied that the Respondent does have a daughter named Mariah. Various online articles, including articles of local online newspapers from the Respondent's region refer to the Respondent and his daughter “Mariah Weise”. These online newspapers include “www.pineandlakes.com” and “www.brainerddispatch.com”. The Panel therefore accepts the Respondent's contentions as part of the record to the extent that these have sufficient probing force to influence the panel's decision under the Policy.
The Panel therefore makes its decision on the basis of the factual statements contained in the Complaint, the documents made available by the Complainant to support its contentions, and the Respondent's Supplemental Filing.
The factual background is taken from the submissions contained in the Complaint, the exhibits annexed thereto and the Respondent's Supplemental Filing, given that no Response was filed.
The Complainant is Associazione Radio Maria, an Italian organization which operates the Radio Maria radio, a Catholic parish radio created in 1983.
Radio Maria is broadcasted in many countries around the world, including in the United States of America, and in more than a dozen languages. The Complainant also broadcasts Radio Maria online via its website at “www.radiomaria.org”. Due to its spiritual mission, Radio Maria excludes all types of advertising and relies solely on financial contributions.
The Complainant owns trade marks in the term RADIO MARIA and has submitted trade mark registration certificates for its Community trade mark RADIO MARIA n°003471562, registered on March 7, 2006, its USPTO trade mark n°1924809 registered on October 3, 1995, and its International trade mark n°600288 registered on May 17, 1993.
The Domain Name was registered on 10 May 2008 via the registrar eNom.
The Complainant is the owner of a number of domain names that incorporate the term ”radio maria” or its translation in other languages, including <radiomaria.org>, <radiomary.com> and <radiomarie.com>.
The Domain Name resolves to a parking page containing sponsored links to the websites of other radio stations, which are direct competitors of the Complainant, and to third party websites.
The Respondent is Scot Weise of Nisswa, Minnesota, United States of America.
The Respondent has a daughter named Mariah, for whom he registered the Domain Name
(i) The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s RADIO MARIA trade mark.
The Complainant asserts that the Domain Name is almost identical to its RADIO MARIA trade mark, the term “Mariah” merely being an English translation, as well as a translation in other languages, of the name ”Maria”.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant considers that the Respondent has no rights in respect of the Domain Name since he has nothing to do with the Complainant and the Respondent has never been authorized or licensed by the Complainant to use the Domain Name.
The Complainant further asserts that to the best of its knowledge the Respondent is not commonly known as “Mariahradio”.
Furthermore, the Complainant contends that it is unquestionable that the Domain Name is not being used for bona fide offerings. According to the Complainant, on the contrary, the use made of the Domain Name is evidently unfair since the website to which the Domain Name resolves contains links to websites offering commercial services and products, as well as links to other radio stations, which are not affiliated to Radio Maria. Besides, those links merely redirect to other pages of the Respondent’s website on which commercial products such radio antennas, FM transmitters etc. are advertised, thus generating high confusion for the public and a relevant damage to both the Complainant’s image and reputation.
(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that it is evident that the trade mark RADIO MARIA is well known around the world and that the Respondent has registered and is using the Domain Name to benefit from the goodwill of the trade mark RADIO MARIA in order to attract Internet users to a website which is not related to the Complainant.
The Complainant further argues that it is very hard to believe that the Respondent did not know of the Complainant’s trade mark at the time the Domain Name was registered since the Domain Name is a "typosquatting" of the Complainant’s trademark RADIO MARIA.
The Complainant contends that WIPO panelists have often recognized the attractiveness proper to the trademarks of religious associations and institutions, citing a certain number of WIPO decisions.
The Complainant further contends that it is suffering serious damage from the current use made by the Respondent of the Domain Name since Internet users might reasonably suppose that radio Maria is sponsored by, and thus receives money from, the entities to which the sponsored links appearing on the Respondent's website redirect, or that it is connected with a commercial activity. Because of such use, Internet users might be discouraged from making donations to the Complainant.
The Complainant further asserts that it is also suffering serious damage because of the links redirecting to some of its competitors on the Respondent’s website, such as, for example, “www.musicaradio.it”. Besides, the Complainant explains that some of the links appearing on the Respondent's website are fake, merely redirecting to other sections of the said website.
The Complainant also argues that there is a serious risk that Internet users might be led to believe that the Domain Name is legitimately connected to “Radio Maria”.
To the Complainant, it makes no doubt that the Respondent is currently using the Domain Name for commercial gain since it is obvious that the Respondent’s sponsoring activity is being remunerated, and it is also evident that, thanks to this advertising, the radio competitors are gaining undue benefits, taking illicit advantage of the renown of the Complainant’s RADIO MARIA trade mark.
The Respondent did not reply to the Complainant’s contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows:
Based on the evidence provided by the Complainant to substantiate its trade mark rights, the Panel is satisfied that the Complainant owns extensive trade mark registrations in the phrase RADIO MARIA.
The panel finds that, when combined, the terms “radio” and “maria” in the Complainant's trade mark become distinctive of the Complainant and its radio, even though used separately these words may be generic.
The Domain Name reproduces the term ”Mariah”, which merely is another spelling of the name Maria, and the term ”radio”, which is identical to the term “radio” contained in the Complainant's RADIO MARIA trade mark, with the addition of the gTLD “.com”. The Domain Name is therefore composed of two terms in reverse order from the Complainant's RADIO MARIA trade mark, as it is widely accepted that the addition of the gTLD “.com” is irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name. The Domain Name is therefore confusingly similar to the term RADIO MARIA in which the Complainant has rights.
In Associazione Radio Maria v. Park Kyoung Suk, WIPO Case No. D2010-2173, in which the disputed domain name was <maryradio.com>, the panel took such view and stated that “Complainant’s trademark is composed of two word elements – ‘radio’ and ‘Maria’ - which when viewed independently, may be considered two generic words, but when viewed as a whole, are distinctive and unique. Here, the Disputed Domain Name is composed of two words that are merely in reverse order from Complainant’s widely known mark and in which one of the words – ‘Mary’ - is merely a common English translation of Complainant’s MARIA word element”.
In the present case, the situation is similar, the Disputed Domain Name is composed of two words that are in reverse order from Complainant’s mark and in which one of the words – “Mariah” - is also a common English translation of Complainant’s “maria” word element.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the panel should find for the complainant unless the respondent demonstrates a plausible case of rights or legitimate interests.
The Panel does not consider that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name.
What has emerged in the Respondent's Supplemental Filing, and has been ascertained by the Panel's personal research, is that Mariah is the name of the Respondent’s daughter. The Domain Name registered by the Respondent thus contains the name of its daughter, which is a common woman’s name, and the descriptive term “radio”. Based upon the facts apparent, this is therefore not a case of cybersquatting where a registrant merely wishes to exploit a trade mark for business purposes by registering a domain name identical or confusingly similar to a third party's trade mark.
The Complainant claims that the Domain Name is not being used for bona fide offerings since the website to which it resolves contains links to websites offering commercial services and products, as well as links to other radio stations. However, the mere fact that a domain name points to a website containing links to commercial websites is not sufficient to establish in itself that a respondent lacks legitimate interests in the said domain name. As paragraph 2.6 of the WIPO Overview 2.0 explains, "panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances" and "as an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value".
In the present case, the Domain Name incorporates the descriptive term “radio” in its entirety. The links posted on the Respondent's website and pointing to the websites of other radio stations are therefore merely related to the descriptive meaning of the term “radio”. The term “Mariah”, also incorporated into the Domain Name, being the name of the Respondent's daughter, the Panel is satisfied that the Respondent is not taking undue advantage of the Complainant's trade mark.
As the panel explains in G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537, “it is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names”.
The Panel has considered the evidence put forward by the Complainant and the Respondent's Supplemental Filing and considers that the Complainant has not succeeded in presenting a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent does not lack rights or legitimate interests in the Domain Name.
The third element that the Complainant must show is the Respondent’s bad faith registration and use of the Domain Name.
The mere fact that a domain name might be confused with a complainant’s trade mark cannot necessarily mean that the critical element of registration and use in bad faith are present. Indeed, were this to be the case it would mean that on proving the first element of the Policy, whereby the domain name is found to be identical or confusingly similar to the Complainant’s mark, a Complainant would automatically succeed on the second and third elements. This would serve to undermine the intent of the UDRP Policy and the safety valves which are in place and operate to protect genuine domain name registrations. With the upcoming opening of the domain name system to a raft of new gTLDs in 2013 this is all the more critical.
Besides, the mere fact that the website to which the Domain Name resolves displays sponsored links to other radio stations does not, in itself, constitute evidence of bad faith registration and use (see paragraph 3.8 of the WIPO Overview 2.0). As previously explained, in the present case, the links on the Respondent's website are related to the descriptive meaning of the term “radio” incorporated in the domain name at issue, and are therefore genuinely automated. Thus, the Panel does not find that the inclusion of such advertising links constitutes a basis for finding bad faith registration or use of the Domain Name. The Panel does however question the role of registrars in automating such content and also the ability of the domain name registrant to control this, or even whether registrants are aware of the practice. In some cases this very practice can pave the way for a finding of bad faith on the part of the registrant without them even being aware that it is has been put into place by the registrar.
The present case is not such that the Respondent deliberately created confusion to profit from the RADIO MARIA trade mark. On the contrary, the fact that “Mariah” is the name of the Respondent's daughter as well as a common woman’s name, and that the term “radio” is purely descriptive weighs heavily against a finding of bad faith.
Under these circumstances, the Panel finds that the Domain Name was not registered in bad faith and that the Complainant therefore failed to establish the requirement of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
David Taylor
Sole Panelist
Dated: February 1, 2012