WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Radio Maria v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-1295

1. The Parties

The Complainant is Associazione Radio Maria, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <radiomariaguatemala.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 17, 2019.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2019.

The Center appointed Christian Schalk as the sole panelist in this matter on July 26, 2019. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is a broadcasting station, which is especially committed in the dissemination of catholic theology and spirituality. The Complainant was founded in Italy in 1983 as a local radio broadcasting station and has since then expanded its broadcasting activities in more than 55 countries and in various languages. The Complainant broadcasts its program also online through its website “www.radiomaria.org”.

The Complainant owns various trademark rights in the term RADIO MARIA, among others:

- International trademark registration No. 600288 RADIO MARIA, registered on May 17, 1993, covering services in International class 38;

- Guatemalan trademark registration No. 95,805/104/203 RADIO MARIA, registered on March 5, 1999, covering services in International class 38.

- U.S. trademark registration No. 1924809 RADIO MARIA, filed on September 13, 1993, covering services in International class 38.

The Complainant owns also various domain names featuring the term “RADIO MARIA”, among others, <radiomaria.com>, <radiomaria.info>, <radiomaria.it>, <radiomaria.com.br>, <radiomariaperu.org>, <radiomariahispana.com>, <radiomaria.org.gt> and <radiomariapanama.com>.

The Respondent registered the disputed domain name on January 30, 2019. It redirects Internet users to a website where pop-up messages appear.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant argues in this context that the disputed domain name is almost identical to the Complainant’s trademark RADIO MARIA. According to him, the only and negligible difference is the addition of the geographical word “Guatemala” which is a mere descriptive indication and devoid of any distinctiveness. The Complainant refers in this context to Associazione Radio Maria v. Masanori Toriimoto,PLAN-B co., Ltd, WIPO Case No. D2017-0300 and Associazione Radio Maria v. Contact Privacy Inc. / ICS Inc, WIPO Case No. D2012-0826 in order to support his arguments.

The Complainant believes also that since he owns the domain name <radiomaria.org.gt> which is also the home page of his Guatemalan broadcasting services, there is a risk of confusion between it and the website to which the disputed domain name resolves.

The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states in this context that the Respondent has neither a relationship nor a link with the Complainant nor has the Respondent ever been authorized or licensed by the Complainant to use the disputed domain name. The Complainant argues also that the disputed domain name does not correspond to the Respondent’s name and that the Respondent is also not known under the term RADIOMARIAGUATEMALA. In addition, the Complainant is convinced that the disputed domain name is not used for bona fide offerings.

Finally, the Complainant believes that the disputed domain was registered and is used in bad faith. The Complainant states that given the fact that the disputed domain name is well known around the world, the Respondent must have known the Complainant’s trademark when she registered the disputed domain name. In order to support this argument, the Complainant refers in this context among others to Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071 and Benetton Group S.p.A. v. Azra Khan, WIPO Case No. D2002-0810. The Complainant states further that the disputed domain name is not used for any bona fide offerings since its use may mislead Internet users interested in the Complainant’s services. Furthermore the pop ups which appear on the website to which the disputed domain name resolves may carry the prorogation of malware and such activity is clearly remunerated. The Complainant cites in this context The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304, to support his arguments.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademark RADIO MARIA. The disputed domain name is confusingly similar to the Complainant’s trademark RADIO MARIA.

As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The disputed domain name features the word mark RADIO MARIA in its entirety.

Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2014-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

As set out in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “Guatemala” which is the name of a Central American country does not prevent a finding of confusing similarity with the Complainant’s trademark.

Furthermore, the gTLD “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark RADIO MARIA in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” is generally disregarded when determining if there is identity or confusing similarity.

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2000-1415.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.

The Respondent has directed the disputed domain name to a website where pop up windows appear in a prominent manner.

Therefore, the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.

Furthermore, searches for the term “RADIO MARIA” in a search engine such as Google revealed on its first pages only hits of websites where broadcasting services of the Complainant are offered. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panelist can find no plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071).

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non‑exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out‑of‑pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. The Complainant offers its broadcasting in many countries of the world including in Panama where the Respondent apparently lives. Furthermore, had the Respondent carried out even a basic search in search engines such as Google or Bing, she would have found a high number of references to the Complainant. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The disputed domain name resolves to a website where pop up windows appear in a prominent manner. Such pop up windows are often used to carry the prorogation of malware and such activity is often also remunerated. Such behavior is a clear evidence of bad faith. The Panel is convinced that the Respondent has selected the disputed domain name with the purpose to redirect Internet users seeking the Complainant’s broadcasting services to the website to which the disputed domain name resolves. Internet users could believe that such pop ups have to do something with the Complainant while this is not the case. For instance, if the pop up window would suggest downloading a certain software, Internet users may believe that this is necessary to enjoy the Complainant’s broadcasting services while in fact, they download malware. It could also be that they simply get redirected to advertisement websites and that the Respondent gets remunerated for every click on the pop up window.

Therefore, the Panelist finds that there cannot be any plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071).

Hence, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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

Christian Schalk
Sole Panelist
Date: August 9, 2019