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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester

Case No. D2015-1556

1. The Parties

The Complainant is Associazione Radio Maria of Erba (Como), Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

The Respondent is Privacy Protection Service, Communigal Communication Ltd of Netanya, Israel / Gustavo Winchester of Belo Horizonte, Brazil.

2. The Domain Name and Registrar

The Disputed Domain Name <radiomariamalawi.com> is registered with Communigal Communication Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2015. On September 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 10, 2015, 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 September 11, 2015 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 September 14, 2015.

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 September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2015.

The Center appointed Anders Janson as the sole panelist in this matter on October 16, 2015. 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 started as a Catholic parish radio in 1983. In 1987, Associazione Radio Maria was formed by laymen and priests hoping to give Radio Maria independence from the parish and a larger scale in its commitment of evangelization. Within three years all of Italy's regions were covered with the signal, making Radio Maria a national broadcasting station. In the 1900's, the Radio began expanding to the rest of the world. In 1998 The World Family of Radio Maria was established and now the Association operates, with several stations placed throughout the world, in over 55 countries and in more than a dozen languages, so that its signal now covers nearly 300 million people all over the world. Radio Maria broadcasts also online through the website "www.radiomaria.org".

The Complainant has several trademark registrations, International trademark registration no. 600288 RADIO MARIA, granted on May 17, 1993 and duly renewed, in class 38; Malawian trademark registration no. MW/TM/2008/00281 RADIO MARIA, granted on January 30, 2009, in class 16; Malawian trademark registration no. MW/TM/2008/00280 RADIO MARIA, granted on January 30, 2009, in class 9; Community trademark registration no. 3471562 RADIO MARIA, filed on October 29, 2003, granted on March 7, 2006 and duly renewed, in classes 9, 16 and 38; United States of America trademark registration no. 1924809 RADIO MARIA, filed on October 3, 1995 and duly renewed, in class 38; as well as other trademark registrations.

The Disputed Domain Name <radiomariamalawi.com> was registered on February 21, 2015.

5. Parties' Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights according to the Policy, paragraph 4(a)(i) and the Rules, paragraph 3(b)(viii), (b)(ix)(1). It is clear that the Disputed Domain Name <radiomariamalawi.com> is almost identical to the trademark RADIO MARIA, with the solely addition of the name "Malawi". The Disputed Domain Name is also substantially undistinguishable from the webpage "www.radiomaria.org/malawi", used by the Complainant for its activity in that country. The Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services which have no connection to the Complainant.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name according to the Policy, paragraph 4(a)(ii) and the Rules, paragraph 3(b)(ix)(2). The Respondent has no rights in the Disputed Domain Name, since the Respondent has nothing to do with Associazione Radio Maria. Any use of the name "Radio Maria" has to be authorized by the Complainant. The Respondent has never been authorized or licensed by the above mentioned association to use the Disputed Domain Name.

The Disputed Domain Name does not correspond to the Respondent's name and the Respondent is not commonly known as RADIOMARIAMALAWI. In addition, there is no fair or noncommercial use of the Disputed Domain Name and it is not used for bona fide offerings. The actual use of the Disputed Domain Name is evidently unfair.

The Disputed Domain Name was registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3). It is evident that the trademark RADIO MARIA is internationally recognized and the Respondent, by registering and using the Disputed Domain Name, was planning to exploit the reputation of the trademark RADIO MARIA to attract Internet users to a website which is not related to the Associazione Radio Maria. It is hard to believe that the Respondent did not know of the Complainant's trademark when the Disputed Domain Name was registered. The Respondent knowingly chose a domain name consisting of the Complainant's trademark with the mere addition of the name "Malawi".

It can also be noted that the UDRP panelists have often recognized the attractiveness proper to the trademarks of religious associations and institutions (see WIPO cases KSBJ v. John Michael Holland WIPO Case No. D2001-0481; Crystal Cathedrals Ministries, Inc. v. Edu Stuivenberg dba Bedroom Graphics WIPO Case No. D2002-0102; Society of St. Vincent de Paul, Council of the United States v. Alex Yip WIPO Case No. D2004-0121).

The Complainant is suffering damages from the Respondent's use of the Disputed Domain Name. Internet users might reasonably suppose that Radio Maria is sponsored by and receiving money from the entities whose links appear on the Respondent's website. Therefore, Internet users might be discouraged from making donations to the Complainant, or at least have the impression that Radio Maria is connected with such commercial activity, which is incompatible with its mission. The links to the aforementioned websites are all fake and deceptive, being connected only to the sponsorship of commercial products and radio competitors' websites. Lastly, there is a risk that users might be led to believe that <radiomariamalawi.com> is legitimately connected to Radio Maria, which is not true.

The Respondent's commercial gain is evident, since it is obvious that the Respondent's sponsoring activity is being remunerated. It is also evident that, thanks to this advertising activity, the radio competitors are gaining undue benefits, taking illicit advantage of the renown of the Complainant's trademark RADIO MARIA.

In accordance with the above mentioned paragraphs and reasons, the Complainant requests that the Disputed Domain Name <radiomariamalawi.com> should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Given the case file and the Respondent's failure to file a Response, the Panel accepts as true the contentions of the Complainant. The Respondent's default does not however automatically lead to a transfer of the Disputed Domain Name. On the contrary, the Complainant still must establish that it is entitled to a transfer of the Disputed Domain Name under the Policy.

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights to RADIO MARIA with reference to the trademark registrations.

The Disputed Doman Name is <radiomariamalawi.com> and therefore contains the entire words "Radio Maria", which is the Complainant's registered trademark. The fact that the Disputed Domain Name also contains the term "Malawi" does not diminish the risk of confusion. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In this case, the Complainant has offered convincing explanations and enough evidence of its exclusive right concerning the RADIO MARIA trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant's contentions. The failure to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant's trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant's trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bath faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record which displaces this presumption.

The Panel finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) of the Policy.

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 <radiomariamalawi.com> be transferred to the Complainant.

Anders Janson
Sole Panelist
Date: October 29, 2015

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