WIPO Domain Name Decision: D2005-0062

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Radio Maria v. Mr. Hong Hee Dong

Case No. D2005-0062

1. The Parties

The Complainant is Associazione Radio Maria, Milano, Italy, represented by Notarbartolo & Gervasi S.p.A., Italy.

The Respondent is Mr. Hong Hee Dong, Kyungbuk, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <radiomaria.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2005. On January 19, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 20, 2005, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 8, 2005. 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 February 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Response was filed with the Center on March 4, 2005.

The Center appointed Torsten Bettinger as the Sole Panelist in this matter on March 9, 2005. 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 was founded in 1983 as a parish radio in the province of Como, Italy. According to the Complainant, the purpose of the radio is to provide news to parishioners. Until 1991, the Complainant was considered a national radio station. In 1998, the Complainant created an organization called “Associazione Radio Maria” with the aim of expanding its program and creating a worldwide Catholic radio network. Today, Radio Maria broadcasts in more than 35 nations in 13 languages.

The Complainant is the registered proprietor of the following trademark registrations:

- Italian trademark registration No. 00512267 RADIO MARIA, filing date July 2, 1987, in class 38;

- Community trademark application No. 003471562 RADIO MARIA, filing date October 29, 2003, in international classes 9, 16, 38;

- International registration No. 600288 RADIO MARIA registration day, May 17, 1993, in international classes 37 for 37 countries.

The Complainant also owns the domain names <radiomaria.org> and <radiomaria.it> and operates a website in Italian, English and Spanish language.

The Respondent is a private individual domiciled in the Republic of Korea. Respondent uses the domain name <radiomaria.com> to host a search engine service that contains links to a variety of commonly searched subjects such as “shoes”, “gifts”, “auto” and “clothing”. The Respondent displays the following banner at the website at “www.radiomaria.com”: “This domain name is registered for our future business, it is being forwarded into myhub.com. But if you really want to use this domain, Contact Us.”

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name <radiomaria.com> incorporates fully the Complainant’s trademark, the sole difference being the addition of “.com”. The Complainant therefore contends that the Domain Name is identical to the Complainant’s RADIO MARIA trademark registrations.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that the Domain Name is not used for any bona fide offering of goods or services as the Respondent merely uses the Domain Name to redirect Internet traffic to its website at “www.myhub.com”.

The Complainant further states that the Respondent is not authorized or licensed to use the Complainant’s mark RADIO MARIA and that there is no indication that the Respondent was known by the name “Radio Maria” prior to registration of the Domain Name.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant contends that Respondent had actual knowledge of Complainant’s rights on the trademark RADIO MARIA when he registered the disputed domain name and that the banner displayed on the Respondent’s website is clear evidence that Respondent registered or acquired the domain name <radiomaria.com> primarily for the purpose of selling, renting or transferring it to the Complainant.

Complainant furthermore contends that the Respondent is disrupting the business of the Complainant and is using its famous mark as a means to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

He contends that he “had no knowledge whatsoever of the Complainant’s trademark” and that he registered the Domain Name “for a future business”.

He denies the Complainant’s argument that the banner displayed on the website at <radiomaria.com> should be interpreted as an intent to sell the Domain Name and stresses that the Domain Name consists of two common words that anyone is allowed to register.

Respondent denies that the Complainant’s mark is widely known.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent has registered the domain name <radiomaria.com>. This domain name is identical to Complainant’s trademark RADIO MARIA, except for the addition of the generic top-level-domain “.com”.

It is well established that the specific top level of a domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; see also Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel thus finds that the domain name <radiomaria.com> is identical to the trademark in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

Although paragraph 4(c) of the Policy requires the Complainant to prove the presence of this element, Panels in a number of cases found that once a Complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the Domain Name.

The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.

The Complainant has not yet licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating the trademark.

Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

The combination of words “Radio Maria”, although consisting of the common word “radio” “and the name “Maria”, is obviously connected with the Complainant’s trademark and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.

Respondent’s use of the Domain Name to divert Internet users to its website capitalizing on the Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Further, nothing in the record suggests that the Respondent trades under the Domain Name or the name “Radio Maria” or is commonly known by said domain name or the name “Radio Maria” or is making a legitimate non-commercial or fair use of the Domain Name.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Complainant alleges that Respondent has registered or acquired the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name.

In fact, there are certain circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling it to the Complainant.

The Complainant’s trademark is long established and widely known. The words “Radio Maria” connote a connection with a radio station. The Respondent is not a radio station nor does he provide any evidence that he prepares to provide radio broadcasting or related services. He merely states that he intends to use the Domain Name “for a future business”.

The Respondent is known to the Panel from various other UDRP administrative proceedings (see for example Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340; Deutsche Lufthansa AG v. Postech, WIPO Case No. D2001-1251; Karl Ochsner v. Postech, WIPO Case No. D2001-1126), in which UDRP Panels held that the Respondent registered and used domain names in bad faith.

The “www.radiomaria.com” website, stating that Internet users who are interested in using the domain name <radiomaria.com> should contact the Respondent, creates the presumption that there is an opportunity to purchase the Domain Name.

When these facts are combined with the fact that the Respondent has not provided any plausible argument why the Respondent registered the Domain Name it is possible to infer that the Respondent registered the domain name <radiomaria.com> knowing that it was the trademark of the Complainant and had the objective to sell it to the Complainant for a valuable consideration well in excess of the Respondent’s out-of-pocket expenses.

However, the Panel does not have to decide whether the Respondent in fact registered the disputed domain name in order to sell it to the Complainant as there are other grounds which suggest bad faith.

The Complainant stated, and Respondent did not deny, that Respondent is using the <radiomaria.com> domain name to operate a website where he hosts a search engine service that contains links to a variety of commonly searched subjects such as “shoes”, “gifts”, “auto” and “clothin”.

The Panel notes that, 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.

In the absence of any explanation why the Respondent uses the disputed domain name for such activities and regarding the fact that the Respondent is known to the Panel from various other UDRP administrative proceedings, in which Panels held that the Respondent registered and used domain names in bad faith, there is ground on which the Panel can conclude that the Respondent intentionally attempted to trade off the value Complainant has built in its mark RADIO MARIA and to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark.

The Panel therefore concludes that Respondent registered and is using the domain name <radiomaria.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <radiomaria.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist

Dated: March 23, 2005