WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associazione Radio Maria v. Slamet Wijaya
Case No. D2014-1523
1. The Parties
Complainant is Associazione Radio Maria of Erba, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Slamet Wijaya of Jawa Timur, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <radiomarianewyork.org> (the "Domain Name") 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 September 4, 2014. On September 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 September 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2014. On September 14, 2014 the Center received an informal communication from Respondent. Respondent did not submit any further formal response. Accordingly, the Center notified the commencement of the Panel appointment process on October 7, 2014.
The Center appointed Clive L. Elliott, QC as the sole panelist in this matter on October 10, 2014. 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 Domain Name was registered with GoDaddy.com, LLC on January 9, 2010.
5. Parties' Contentions
Complainant states that Radio Maria was started as a Catholic parish radio in Italy in 1983. In 1987 laymen and priests, hoping to give Radio Maria independence from the parish and a larger scale in its commitment of evangelization, formed Associazione Radio Maria. Complainant further states that within three years the program schedule had been completely redesigned and all of Italy's regions were covered with the signal. This made Radio Maria a national broadcasting station, and then in the 1990's the radio began expanding to the rest of the world. In 1998 The World Family of Radio Maria was established and Complainant advises that the Association now operates, with several stations placed throughout the world, in over 55 countries and in more than a dozen languages, and its signal now covers nearly 300 million people all over the world.
Complainant asserts that Radio Maria also broadcasts on-line through its website "www.radiomaria.org" and that, due to its spiritual mission, it excludes all types of advertising, which means that the organization survives solely on the contributions of its listeners and does not rely on sponsorships.
Complainant states that its International trade mark RADIO MARIA was registered in 1993, the US trade mark RADIO MARIA was registration in 1995 and the Community trade mark RADIO MARIA was registered in 2003. Complainant further asserts that it is the owner of a number of domain names bearing the name "Radio Maria".
Complainant contends that the Domain Name is linked to a blog concerning laptops and computers, in which several well-known brands are mentioned and sponsored in the various articles posted therein. Complainant submits that the Domain Name is almost identical to its trade mark RADIO MARIA, with the sole difference being the addition of the name "New York".
Complainant asserts that Respondent has no rights in the Domain Name, since Respondent has no association with Complainant and Respondent has never been authorized or licensed by it to use the Domain Name. The Domain Name does not correspond to Respondent's name and, to the best of Complainant's knowledge, Respondent is not commonly known by that name.
Complainant contends that the Domain Name was registered and is being used in bad faith, and that Respondent must have known of Complainant's trade mark when Respondent registered the Domain Name as the Domain Name consists of Complainant's trade mark in its entirety, with the addition of the city name "New York". Complainant further contends that the Domain Name is almost identical to its domain name <radiomariany.org>, wherein the abbreviation for New York, "NY", is added after its trade mark RADIO MARIA.
Complainant alleges that Respondent has intentionally exploited the fame of Complainant's trade mark and association name by attracting Internet users to a website which is not related to "Associazione Radio Maria", and submits that it is suffering serious damage from Respondent's use of the Domain Name, as Internet users might get the impression that Radio Maria is sponsoring (and therefore receiving money from) the companies connected to the laptops and computers sponsored and described on Respondent's website. Complainant alleges that this in turn might discourage Internet users from making donations to Complainant, or at least has the impression that Radio Maria is connected with a commercial activity, which is incompatible with its mission.
Finally, Complainant asserts that Respondent is making a commercial gain from the Domain Name by way of remuneration from its sponsors who in turn are gaining undue benefits by taking advantage of the renown of Complainant's trade mark RADIO MARIA.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it has functioned since 1983 when it started operating a Catholic parish radio in Italy. The radio expanded rapidly and by 1998 The World Family of Radio Maria was established. Complainant asserts that it now operates several stations throughout the world, in over 55 countries and its signal now covers nearly 300 million people. Radio Maria also broadcasts online through its website "www.radiomaria.org".
Complainant registered the International trade mark RADIO MARIA in 1993, the US trade mark RADIO MARIA in 1995 and the Community trade mark RADIO MARIA in 2003 (hereinafter "Complainant's Trade Mark").
The Panel accepts that Complainant's Trade Mark is exclusively associated with Complainant. It is clear that by virtue of its long-standing, geographically widespread and quantitatively significant use that an unrelated entity or person using a domain name containing or comprising as a material part Complainant's Trade Mark is likely to lead the members of the public being confused and deceived.
The Domain Name is a combination of the descriptive geographical term "New York" and the characterizing name "Radio Maria". The addition of the geographic term "New York" does not prevent likelihood of confusion in the minds of Internet users. The Domain Name is at least confusingly similar to Complainant's Trade Mark in so far as it incorporates "Radio Maria" in its entirety with the addition of a geographical description, which fails to distinguish the Domain Name from Complainant's Trade Mark.
As noted above, Complainant asserts that Respondent has been using the Domain Name by linking to a blog, which displays or promotes a range of laptops and computers. This conduct is likely to confuse and deceive consumers who might mistakenly get the impression that Radio Maria is sponsoring (and therefore receiving money from) the companies connected to the laptops and computers sponsored and described on Respondent's website. Further, the overall impression must be that the Domain Name is endorsed or supported in some way by Complainant.
On this basis, the Panel finds:
a) Complainant has rights in respect of Complainant's Trade Mark.
b) The Domain Name is identical to or confusingly similar to Complainant's Trade Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent has been using the Domain Name to help promote a blog or website, which displays or promotes laptops and computers. It is not difficult to infer, in the absence of any denial that through these activities, Respondent is using or has used a deliberately similar version of Complainant's Trade Mark and Complainants' significant goodwill and reputation to attract Internet traffic and increase hits to or sales from its blog.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible.
On this basis, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent has attempted to attract Internet users to its or another's blog for commercial gain, thereby creating a likelihood of confusion with Complainant and/or Complainant's Trade Mark, in the absence of any explanation from Respondent, the Panel finds that Respondent registered and is using the Domain Name in bad faith. That is, so as to take advantage of Internet users who may wish to purchase goods because they have been attracted to the relevant blog or website and been influenced by Complainant's good name and reputation as a Catholic parish radio network.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant's Trade Mark significantly pre-dated Respondent's registration of the Domain Name and in light of the long-established use and reputation that Respondent knew or ought to have known of Complainant's prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <radiomarianewyork.org> be transferred to Complainant.
Clive L. Elliott QC
Date: October 24, 2014