WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associazione Radio Maria v. Park Kyoung Suk
Case No. D2010-2173
1. The Parties
Complainant is Associazione Radio Maria of Erba, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Park Kyoung Suk of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <maryradio.com> (“Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On December 16, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On December 17, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceeding on December 20, 2010. Respondent did not submit any request within the deadline, but in its email of December, 30, 2010, requested that Korean be the language of the proceeding. On December 28, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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 Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. Respondent sent email communications on December 30, 2010, January 1, 5, 19, and 22, 2011, but did not submit any formal response. Thereafter, Respondent submitted its late Response, in Korean, on January 30, 2011.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 25, 2011. 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
Radio Maria was first established in Italy in 1983 as a Catholic parish radio. In 1987, Complainant - Associazione Radio Maria - was officially formed. By the early 1990’s, the broadcast of Complainant’s Radio Maria expanded to other countries and by 1998, Radio Maria was broadcast in over 55 countries and in more than a dozen languages. It covered nearly 300 million people worldwide. 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 from its listeners.
Complainant’s trademark for RADIO MARIA has been widely used and registered throughout the world, including use and registration in the Republic of Korea (“Korea”). The trademark was registered in Korea on September 18, 1995 and has been subsequently renewed. Complainant is also the owner of several domain names referring to the trademark RADIO MARIA and its translations, including <radiomaria.org>, <radiomary.com>, and <radiomarie.com>.
5. Parties’ Contentions
Complainant argues that: (i) the Disputed Domain Name is nearly identical to a mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith.
Regarding the first element, Complainant contends that the Disputed Domain Name is merely an English translation of its famous RADIO MARIA trademark and that it is nearly identical to its <radiomary.com> domain name. Thus, Complainant contends that the Disputed Domain Name is nearly identical to trademark and domain names in which it has rights.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that Respondent has no connection to Complainant and has never been authorized nor licensed to use the Disputed Domain Name; that Respondent has never been commonly known by the Disputed Domain Name; and that Respondent has failed to make any fair or noncommercial use of the Disputed Domain Name.
Regarding the third element, Complainant argues that Respondent registered and used the Disputed Domain Name in bad faith because its RADIO MARIA mark is well-known and therefore Respondent sought to capitalize on the fame of Complainant’s mark to attract Internet users to its website. Complainant also argues that Respondent, by registering and using the Disputed Domain Name, is realizing commercial gain
to the extent that Respondent is being compensated for its sponsoring activities. Finally, Complainant argues that Respondent’s bad faith is further demonstrated by its offer to transfer the Disputed Domain Name to Complainant for the sum of USD 750, a figure which Complainant argues is much higher than Respondent’s out-of-pocket costs for the registration of the Disputed Domain Name.
Respondent did not submit a timely reply to Complainant’s contentions by the deadline of January 17, 2011. It did, however, submit a late Response in response to the Complaint on January 30, 2011. In that filing, Respondent argues that there is no similarity between the Disputed Domain Name and Complainant’s mark because the order of the words in the Disputed Domain Name is different from the order of words in Complainant’s mark and because the word “radio” is a common term that can be used by anyone. Respondent also argues that it has legitimate rights to the Disputed Domain Name and that it did not register the domain name in bad faith because it obtained proper and legal registration of the Disputed Domain Name.
6. Discussion and Findings
6.1 Admissibility of the Late Response
As noted above, Respondent failed to submit a timely Response to Complainant’s contentions but did eventually submit a late Response in response to the Complaint some 13 days after the filing deadline. In an apparent justification of the late filing, Respondent claims that it had made certain requests for assistance to the Center and that in the course of awaiting a reply - one that Respondent claims it never received - Respondent was caused to be late in submitting its Response. Based on a review of the record, this Panel finds that Respondent’s explanation is without merit and therefore unequivocally rejects same as an excuse for the late filing.
Indeed, this Panel finds that the delay was due to Respondent’s own doing. Nevertheless, in the interests of reaching a decision on the merits of the case and in the absence of undue prejudice to Complainant, the Panel, pursuant to paragraphs 10 and 12 of the Rules, has decided to admit and to consider Respondent’s late Response.
6.2 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, Complainant submitted a request for this dispute to proceed in English and Respondent in its email which was received by the Center well after the relevant deadline requested that Korean be the language of the proceeding. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the pre-Complaint letter Complainant sent to Respondent in English, and Respondent’s reply in English, it does not appear as though Respondent has any difficulty comprehending and communicating in English. The Panel also notes that the website at the Disputed Domain Name displays content that is entirely in English. Accordingly, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
6.3 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in the registered RADIO MARIA trademark. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant’s RADIO MARIA mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, 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.
Further, the Panel finds that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identity or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its RADIO MARIA trademark in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to sponsored links which relate to Complainant’s competitors is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of the Disputed Domain Name, but is using the domain name to attract Internet users to Respondent’s website and then providing links to other sites, some of which have little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent, in its late Response, however, argues that it has legitimate rights to the Disputed Domain Name merely because it obtained proper and legal registration of the Disputed Domain Name on a first come first served basis. This argument, however, is not dispositive of Respondent’s right or legitimate interest in the Disputed Domain Name and therefore, this Panel finds that Complainant has prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant has submitted evidence that Respondent would appear to be deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore accepts that Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Further, Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant’s website to its own website at the Disputed Domain Name, and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.
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 <maryradio.com> be transferred to Complainant.
Andrew J. Park
Dated: February 9, 2011