WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc.
Case No. D2010-2181
1. The Parties
1.1 The Complainant is Associazione Radio Maria, Erba (Como), Italy, represented by Perani Pozzi Tavella, Italy.
1.2 The Respondent is Mary Martinez, Las Vegas, Nevada, United States and Domains by Proxy, Inc., Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <talkradiomary.com> (the “Domain Name”) is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. The Complaint as initially filed named “Domains by Proxy”, as the Respondent, that being the name that at that time was recorded as the registrant on the publically available WhoIs record for the Domain Name. “Domains by Proxy” is the WhoIs privacy service offered by the Registrar. On December 15, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2010, the Registrar GoDaddy.com, Inc. transmitted by email to the Center its verification response. That response disclosed that the underlying registrant for the Domain Name was “Mary Martinez”. The Center sent an email communication to the Complainant on December 20, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 The Complainant filed an “Amendment to the Complaint” on December 21, 2010, in which it amended the Complaint so that “Mary Martinez” was formally identified as the Respondent in place of “Domains by Proxy”.
3.3 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” 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”).
3.4 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 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2011.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 21, 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
4.1 The Complainant is a religious radio station. It was founded in 1983 as a Roman Catholic parish radio station and the Complainant was formed in 1987 so as to control its activities. Within three years the radio station had expanded its broadcasts so as to cover Italy and then it began to expand its activities to other parts of the world. The Complainant now operates in over 55 countries and broadcasts in more than a dozen languages with a signal that covers 300 million people. It also broadcasts on line from the website operating from “www.radiomaria.org”.
4.2 The Complainant is the owner of various trade marks that incorporate or comprise the words “Radio Maria”. They include:
(i) Community Trade Mark registration no. 003471562 for the word mark RADIO MARIA in classes 9, 16 and 38, filed on October 29 2003.
(ii) United States registered trade mark no. 1924809 the word mark RADIO MARIA in class 38 filed on September 13, 1993.
4.3 The Complainant is the owner of a number of domain names that incorporate translations of the term “Radio Maria”. For example, “Mary” is the English language equivalent of the Italian “Maria” and the Complainant owns the domain name <radiomary.com>.
4.4 The Respondent (which for reasons that are set out later in this decision, the Panel takes to be Mary Martinez), appears to be an individual located in Las Vegas, Nevada.
4.5 According to the relevant WhoIs record, the Domain Name was first registered on May 1, 2010. The Domain Name appears to have then been parked with the Registrar’s domain name parking and pay per click service and thereby used to display various sponsored listings and links. As at December 12, 2010 the pay per click page operating from the Domain Name (presumably as viewed by the Complainant’s lawyers in Italy) displayed links predominantly but not exclusively with some radio connection. They included:
- Radio House and Dance
- Radio per ascoltatori
- Ascolta la radio sul PC
- Radio In Store
4.6 The Domain Name continues to display sponsored links generated by the Registrar’s domain name parking and pay-per-click service as at the date of this decision.
5. Parties’ Contentions
5.1 The Complaint first filed with the Center asserted that “Domains by Proxy”, the Registrar’s privacy service, was the appropriate respondent for the purposes of the proceedings (citing WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975; and TDS Telecommunications Corporation v. Registrant Nevis Domains and Registrant Moniker Privacy Services WIPO Case No. D2006-1620). However, in its Amendment to the Complaint, the Complainant appeared to ask for the Respondent in the proceedings to be changed to “Mary Martinez”.
5.2 The Complainant set out the history of the development and expansion of the radio station that it operates. It states that is raises its running costs from listener contributions made by its listeners and does not rely on any form of sponsorship or advertising.
5.3 The Complainant refers to is portfolio of registered trade marks around the world. It also states that “[t]he ownership issue concerning the trade mark RADIO MARIA has been considered by several decisions of the [Center]” and then proceeds to cite no less than ten cases under the Policy in which it was the Complainant. It is not entirely clear what is the “ownership issue” to which it refers. However, it states that it has recently changed its address and not all the addresses recorded in the trade mark registrations that it owns have been updated. Therefore, it would appear that the Complainant is simply citing these cases as corroborative evidence of the fact that it is the owner of the marks it claims.
5.4 The Complainant contends that the Domain Name is “almost identical to the trade mark RADIO MARY” given that “Mary” is the English form of “Maria” and that it is “almost identical, with the only adding of the generic word ‘talk’ to the domain name [<]radiomary.com[>] already owned by the Complainant”.
5.5 The Complainant denies that the Respondent has any rights in the Domain Name given that the Respondent has “nothing to do with Radio Maria” and “is not commonly known as ‘Talkradiomary’. It asserts that there has been no fair or noncommercial use of the domain name and that the current pay per click use is evidently unfair.
5.6 The Complainant contends that the RADIO MARIA trade mark is well known around the world and that the Respondent by registering and using the Domain Name “was certainly planning to exploit the reputation of the trademark RADIO MARIA for attracting Internet users to a website which is not related to Radio Maria”.
5.7 The Complainant claims that it is suffering serious damage from the current use of the Domain Name. In particular, it claims that since Internet users “might reasonably suppose that Radio Maria is sponsored (and, thus, is receiving money) by the entities whose links appear on the Respondent’s website” and thereby might be discouraged from making donations. It also claims that the Respondent’s gain is evident “since it is obvious that the Respondent’s sponsoring activity is being remunerated”.
5.8 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 In this case, the Complainant amended the Complaint to replace the Respondent. Whilst the Complainant was entitled to do this, for the reasons that are set out in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987), WIPO Case No. D2010-0894, the Panel is of the view that this was not strictly necessary. However, given the Claimant’s decision in this respect, the decision proceeds on this basis and the term Respondent should be understood accordingly.1
A. Identical or Confusingly Similar
6.5 The Panel accepts that the Domain Name is confusingly similar (as the term “confusingly similar” is understood under the Policy) to a trade mark in which the Complainant has rights. The Complainant has a number of trade marks for the words “Radio Maria” and the Panel accepts that “Radio Mary” is the anglicised version of those words. The Domain Name can only be understood as the terms “Talk” and “Radio Mary” in combination, together with the “.com” TLD. The addition of the term “talk”, which is often associated with radio stations (particularly in the phrase “Talk Radio” ) and the “.com” TLD do not so change the meaning of the Domain Name so as to prevent a finding of confusing similarity, bearing in mind the low threshold test that is applicable in conducting that assessment2.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 Many UDRP panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the respondent carries the burden of showing such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.8 It is clear that the Domain Name has been and continues to be used by the Respondent for use with a “domain name parking” or “pay-per-click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark, then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.9 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; was the Respondent at the time of the Complaint using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.10 This is a question that is addressed later on in this decision when assessing the question of bad faith. For the reasons that are explained further in that context, the Panel has reached the conclusion that the Domain Name was at that time being used with a view to taking unfair advantage of the reputation of the Complainant's trade marks. In the circumstances, the Panel finds that at the relevant time the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The Complainant has brought forward evidence in the form of Internet print outs that show that the Domain Name has been used at least since at least December 2010 to promote pay-per-click links. It is now well known how these sorts of pay-per-click or “domain name parking” pages operate. The domain name is “parked” with a provider who will then generates a webpage for that Domain Name upon which are placed various links. The links themselves are usually generated automatically either by the provider of the pay-per-click service or more often by some third party (for example Google). The exact workings of the algorithm that generates these links are usually kept a closely guarded commercial secret, but it will commonly undertake some automated examination and analysis of the words or terms to be found in the domain name. The owner of the domain name will also usually have the ability to influence the links that appear through the selection of certain “keywords”. However, he is unlikely to have actively selected the exact links that appear.
6.12 As the phrase “pay-per-click” suggests, if internet users click on the links supplied, this is likely to generate revenue for the operators of the algorithm and/or the entity that operates the pay per click page. Usually, the owner of the domain name will receive a proportion of the revenue, but this is not invariably the case. Further, sometimes registrars will by default use domain names that have been registered with them in a “pay-per-click” manner, unless and until the domain name registrant instructs them otherwise.
6.13 In this case the form of the links displayed are not particularly compelling evidence as to the Respondent’s motives for registration and use. The Complainant contends, and the Panel accepts, that some of these links are to the Complainant’s competitors. But given that the Domain Name contains the word “Radio” and the term “Talk Radio”, that is not particularly surprising.
6.14 Nevertheless, the term “Talk Radio Mary” as embodied in the Domain Name has no obvious generic meaning and comprises a rather odd combination of words. It is a combination that inherently calls out for an explanation as to why it was chosen and, in the absence of any credible explanation, the most likely explanation (notwithstanding the fact that the Respondent’s forename name would appear to be “Mary”) is that it was chosen with the Complainant’s services and marks in mind.
6.15 Further, the Panel accepts that the Complainant has developed a presence and a reputation both worldwide and in the United States. Although the Complainant’s United States reputation is not expressly addressed in the Complaint, it is reasonably clear from the accompanying materials provided to the Panel that the Complaint directs some of its services to the United States. For example, the Complainant provides a copy of the web page from its website that lists its services worldwide. The list of North American services is as follows:
- Canada (English language)
- Canada (Italian language)
- U.S.A. (Houston-Spanish language)
- U.S.A. (New York – Italian language)
- U.S.A. (New York – Spanish language)
6.16 In other words, the Complainant’s evidence as to its activities and reputation supports the Panel’s conclusion as to the Respondent’s knowledge and intent.
6.17 The pay-per-click use made of the Domain Name also falls within the scope of paragraph 4(b)(iv) of the Policy. Internet users are likely to be drawn to the pay-per-click page by reason of the similarity and resulting confusion between the Domain Name and the RADIO MARIA marks. The Complainant contends that the Respondent has obtained a financial advantage by such activity. That may well be the case, but ultimately it does not matter. Some entity is likely to commercially benefit and provided that that commercial advantage is intended, then paragraph 4(b)(iv) is satisfied (see V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301 as followed in numerous cases including PepsiCo, Inc. v. Ali Khan WIPO Case No. D2004-0292 and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857).
6.18 Whether it was specifically with pay-per-click use in mind that the Domain Name was registered, or whether this is simply a temporary placing (by the registrant or the Registrar) pending some other use, is unclear. Nevertheless, in the absence of any credible explanation or evidence to the contrary, it seems more likely than not that it was with some similar intent to take unfair advantage of the reputation of the Complainant’s marks that the Domain Name was registered. That is sufficient for a finding of bad faith registration.
6.19 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii).
6.20 For the sake of clarity, the Panel would add that in reaching this conclusion it has not relied upon or accepted the Complainant’s contention that it is likely to be damaged by the Respondent’s activities because those reaching the pay-per-click page operated from the Domain Name (a) are likely to believe that the page is endorsed by the Complainant; (b) will believe that the Complainant is financially benefiting from the sponsored links; and (c) therefore are less likely to make a donation to the Complainant.
6.21 It is a chain of reasoning that strikes the Panel as tenuous and it is unsupported by any corroborating evidence as to how that page is actually perceived and what the consequences of that perception might be. Whilst there is a danger that those familiar with the way that the internet operates will credit too much knowledge to the average internet user, the Panel is sceptical that any person that reaches the relevant pay-per-click page is likely to think that the page is operated or endorsed by the Complainant. There is no reference to the Complainant on that page and it prominently displays the Registrar’s name and logo in a number of places. It also contains the text (albeit in relatively small type) “This web page is parked for FREE courtesy of GoDaddy.com”. It seems likely (although the Panel makes no finding of fact on this issue) that Internet users will realise that the page has nothing to do with the Complainant.
6.22 However, this makes no difference to the outcome of the case. It is sufficient for the purposes of paragraph 4(b)(iv) of the Policy that there is an intent on the part of the Complainant to rely upon a confusion between the Domain Name and another’s mark to draw Internet users to the relevant page, regardless of whether that confusion is dispelled one that page is reached (see for example AT&T Corp v. Yong Li, WIPO Case No. D2002-0960 and Injury Lawyers 4U Limited v. M A, WIPO Case No. D2008-2005).
7.1 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, <talkradiomary.com> be transferred to the Complainant.
Matthew S. Harris
Dated: January 28, 2011
1 Had it not done so, the outcome of this case so far as the assessment of bad faith and the existence or otherwise of rights and legitimate interests is concerned, is likely to have been the same in any event. For an explanation as to why this is the case, see paragraphs 6.17 and 6.18 of the Rapidshare decision supra.