WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associazione Radio Maria v. Private Whois Escrow Domains Private Limited/ Comdot Internet Services Private Limited
Case No. D2008-0477
1. The Parties
The Complainant is Associazione Radio Maria, Erba, Como, of Italy, represented by Studio Legale Perani, Italy.
The Respondent is Private Whois Escrow Domains Private Limited, Mumbai, Maharashtra, of India, and Comdot Internet Services Private Limited, Maharashtra, of India.
2. The Domain Name and Registrar
The disputed domain name <radiomariatanzania.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2008. On March 31, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. No verification was received despite repeated requests for the same made on April 3, 10, 14 and 17, 2008. Finally, on April 22, 2008, after commencement of the administrative proceedings on the basis of the publicly-listed WhoIs registrant data, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center a belated verification response confirming that the initially named Respondent, (hereinafter, the “First Respondent”) was not listed as the registrant. Instead, Lead Networks provided the name and contact details of another entity, Comdot Internet Services Private Limited, (hereinafter, the “Second Respondent”). The First Respondent appears to be a privacy service apparently used to conceal the identity of the Second Respondent, the latter having been identified by the Registrar, only after formal commencement of the Complaint (as discussed further below).
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 18, 2008. 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 the circumstances, the Panel is satisfied that the Complaint was appropriately notified by the Center, on the basis of the best available registrant information. The Center endeavored on a number of occasions to obtain a registrar verification from the Registrar, to which no timely reply was forthcoming. The Center had little choice in the circumstances but to commence the proceedings on the basis of the registrant information in the Registrar’s publicly listed WhoIs database.
The Center formally notified the Complaint to the First Respondent, as being the registrant named in the Complaint and confirmed by the Registrar’s WhoIs database, and the proceedings commenced on April 22, 2008. Subsequently, upon the apparent disclosure of an underlying registrant by the Registrar only after commencement, the Center forwarded the notification of Complaint to the Second Respondent, in accordance with the contact details provided by the Registrar, later the same day. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2008. The Respondents did not submit a response by the deadline. Accordingly, the Center notified the Respondents’ default on May 15, 2008.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on May 23, 2008. 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.
On May 21, 2008, nine days after the deadline for Response, the Second Respondent submitted a Response. The Second Respondent attempted to excuse its late filing by stating that it was expecting an amendment to the Complaint to be made and hence did not file a Reply to the original Complaint. The Panel finds this excuse unacceptable for several reasons. First, nothing in the Policy, Rules or Supplemental Rules requires the Center to request an amendment to the Complaint after formal commencement of the administrative proceedings. This is especially so in cases involving a privacy provider,the effect of whose appointment is at least in part to shield the identity of the registrant/principal. That the provider/agent carried out its agency too well, or due to inaction or belated action failed to carry out its agency duties, is a risk which must be borne by the registrant/principal, not by the Complainant or the Center. . See Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886 (wherein the panel found that a respondent is, at the least, “prima facie the entity that is recorded in the registrar’s register as revealed by a Who-Is search.” See also, The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438 (finding the respondent to properly be both the privacy protection service and the later disclosed underlying registrant). Moreover, the Second Respondent does not and cannot complain that it was unaware of the proceedings against it, that it had insufficient time to respond to the Complaint, or that it was unaware that the domain name it owned was at issue in this proceeding. In light of The iFranchise Group, further support for the consolidation and identification of both the initial and disclosed registrants of record as the proper party Respondents rests in the successful notification to both Respondents of the ongoing administrative proceedings, i.e. actual notice was effected to the parties of interest. Therefore, the Panel shall not formally admit the late-filed Response. Even were the Panel to do so, however, it finds that the Respondents’ arguments would not have changed the Panel’s decision.
One day later, a further Response was submitted by the First Respondent, Private Whois Escrow Domains Private Limited. The First Respondent disclaimed ownership of the domain name at issue, confirming the Registrar’s advice that the First Respondent was merely a company which held the domain name for the actual registrant in order to maintain the latter’s privacy. Private Whois Escrow Domains confirmed that the actual domain name owner was Comdot Internet Services Private Limited but otherwise made no substantive representations on behalf of the Second Respondent. Accordingly, the Panel finds that Comdot Internet Services Private Limited, the Second Respondent, ought properly be deemed and included as a party respondent, as the beneficial owner of the domain name at issue. However, the Panel does not subtract the First Respondent (the party listed in the un-amended Complaint as Respondent) from the proceedings despite its assertions. See Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886 (wherein the panel maintained the privacy protection service as a respondent despite its statement disavowing ownership of the disputed domain name and identification of the underlying registrant as the proper respondent). If the First Respondent had wished to disassociate itself from the Second Respondent and the domain name at issue, it should have done so earlier. For convenience, unless other specified, the Panel will hereafter refer to the First and Second Respondents collectively as the “Respondent.”
On May 28, 2008, the Center acknowledged receipt of the supplemental filing by the Complainant, addressing the late-filed Reply by Comdot Internet Services Private Limited. Because the rules make no express provisions for supplemental filings by either party, and because Complainant’s supplemental filing does not take issue with the assertion that the actual Respondent and domain name registrant is Comdot Internet Services Private Limited, the Panel shall not otherwise consider Complainant’s supplemental filing.
4. Factual Background
Complainant is the owner of numerous trademark registrations for RADIO MARIA in International Class 38 (communication services) in many countries in the world. Several of these registrations issued from nations from the African continent, including Tanzania, as well as in the African Union (OAPI). Complainant has also registered RADIO MARIA in India in connection with services in International Class 38.
5. Parties’ Contentions
Complainant asserts that RADIO MARIA began as a Catholic Parish radio station in 1983, but became a formal association in 1987, independent from the Parish. By 1990, RADIO MARIA’s signal covered all of Italy. Complainant asserts that it established The World Family of Radio Maria in 1998 with several stations placed throughout the world, and it operates in over 30 countries, in more than a dozen languages, and reaches 300 million people worldwide. Complainant operates a website whose homepage is “www.radiomaria.org”. Complainant asserts that RADIO MARIA also operates in Tanzania where Complainant has a corresponding website “www.radiomariatanzania.co.tz”. Complainant asserts that the organization is supported solely by listener contributions and does not rely on sponsorships.
In addition to the aforementioned international trademark registrations, Complainant also asserts ownership of nearly 30 domain names connected with RADIO MARIA, including <radiomaria.com>, <radiomaria.us>, <radiomaria.fr>, <radiomaria.it>, etc. Complainant’s ownership of its RADIO MARIA trademark has already been established by previous Panelists. See Associazione Radio Maria v. Mr. Hong Hee Don, WIPO Case No. D2005-0062, Associazione Radio Maria v. Satnet S.A., WIPO Case No. D2006-0376.
Complainant asserts that the domain name at issue was registered on February 4, 2007, and links to a search page containing links to other websites including religious matter. One of the links which Internet users can find is named “Listen Radio Maria,” which itself is connected to a page containing several links promoting radio and musical services having nothing to do with Complainant. The Panel notes that the webpage provided by Complainant for the “www.radiomariatanzania.com” website also contains links for numerous other subjects of a non-religious nature, including “car insurance,” “ring tones,” “dating,” “houses for sale” and “mortgage”.
Complainant asserts that the domain name <radiomariatanzania.com> is nearly identical to its trademark RADIO MARIA, combining the identical words of Complainant’s trademark with the geographic area Tanzania, where Complainant’s radio station operates and has a webpage.
Complainant asserts that neither Respondents nor anyone other than Complainant has rights or legitimate interests in the disputed domain name or has received permission from Complainant to use it; that the domain name does not correspond to either the First or Second Respondent; and that actual use of the contested domain name is unfair because it links to religious and radiophonic websites not owned by Complainant.
Complainant asserts that the domain name is registered and is being used in bad faith because Respondents have intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Specifically, Complainant notes that Respondents intended to exploit the reputation of Complainant’s RADIO MARIA trademark, and that Complainant is damaged because Internet users might conclude from Respondents’ website that Complainant is sponsored by the entities whose links appear on Respondent’s website and therefore be discouraged from contributing to Complainant or at least receive the impression that Complainant is connected with a commercial activity incompatible with its mission.
Complainant requests that the Panel transfer the disputed domain name to Complainant.
As mentioned above, the late-filed Response has not been formally admitted into the record by this Panel, having been filed a week and a half after the deadline. In any event, none of the assertions were corroborated by any competent evidence. The only assertion made by the Respondent which this Panel was able to corroborate appear to be inaccurate. Specifically, the Respondent asserted that it registered the domain name for a client a few years ago, while the registration information reflects clearly that the registration is only a year old. The Panel finds, therefore, that it cannot place any credence in the Respondent’s remaining, unsubstantiated assertions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-inclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, 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; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Where a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
Respondent’s domain name <radiomariatanzania.com> combines Complainant’s registered trademark with the geographic term Tanzania. Rather than serving to distinguish Respondent’s domain name from Complainant’s registered trademark, the addition of the geographic term would likely confuse Internet users into believing that the domain name referred to Complainant’s Tanzanian broadcasts or website. See Inter-Ikea Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, Honda Motor Company Limited v. Lokita Enterprises, WIPO Case No. D2003-0507. The Panel finds, therefore, that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Complainant asserts, and Respondents have failed to rebut, that Respondent is not affiliated with or related to Complainant, that Respondents are not licensed by Complainant or otherwise authorized to use Complainant’s trademark, that Respondent is not generally known by the domain name at issue, has not acquired any trademark or service mark rights in the name, and is not making bona fide fair use of Complainant’s mark. In sum, Complainant has made a prima facie showing that Respondents have no rights or legitimate interest in the domain name at issue, which showing Respondents have failed to rebut. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the domain name, Respondent’ intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’ website.
Supporting this conclusion is the evidence that the Respondent combined Complainant’s internationally-registered trademark RADIO MARIA with the geographic location Tanzania where Complainant broadcasts and operates a website, and linked that domain name to a website for several commercial enterprises, including commercial radio stations, ostensibly to receive pay-per-click revenue from confused Internet users. As a result, the Panel finds that Respondent’s registration and linking of its domain name <radiomariatanzania.com> to a pay-per-click search page in the circumstances is in bad faith. See mVisible Technologies, Inc., bitm v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; see also Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teacher’s Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.
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 <radiomariatanzania.com> be transferred to the Complainant.
Jordan S. Weinstein
Date: June 6, 2008