WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associazione Radio Maria v. Yasutaka Sakatani
Case No. D2019-1754
1. The Parties
The Complainant is Associazione Radio Maria, Italy, represented by Perani Pozzi Associati, Italy.
The Respondent is Yasutaka Sakatani, Japan.
2. The Domain Name and Registrar
The disputed domain name <radiomariapanama.org> (the “Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 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 July 29, 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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on September 2, 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.
4. Factual Background
The Complainant, a non-profit organisation, operates several radio stations under the name “Radio Maria” throughout the world, in more than 55 countries and in more than a dozen languages, covering nearly 300 million people. The Complainant also broadcasts online, through the website at “www.radiomaria.org”.
The Complainant has registered RADIO MARIA as a trade mark in a number of countries around the world, including:
- Panamanian trade mark registration No. 73359 RADIO MARIA, registered on February 27, 1996; and
- Japanese trade mark registration No. 4023885 RADIO MARIA, registered on July 4, 1997,
(collectively, the “Mark”).
The Complainant’s rights in RADIO MARIA have been recognised in a large number of WIPO UDRP decisions.
The Complainant is also the owner of a large number of domain names incorporating “Radio Maria”, including:
- <radiomariapanama.com>; and
The Domain Name was registered on July 25, 2018. It currently resolves to a parking page containing seemingly sponsored links to online radio stations, none of which has a connection to the Complainant.
5. Parties’ Contentions
The Complainant contends that it has rights in the Mark and that the Domain Name is almost identical to the Mark, with the only difference being the addition of the geographical word “Panama” and the generic Top-Level Domain (“gTLD”) suffix “.org”. The Complainant submits that this difference is negligible and a mere descriptive indication, which is devoid of any distinctiveness.
The Complainant also asserts that the Respondent has no rights or legitimate interest in respect of the Domain Name since it has no relationships or links with the Complainant and the Complainant has not authorised the Respondent to make any use of the Mark. It notes that the Domain Name does not correspond to the Respondent’s name.
Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith, given its confusing similarity to the Mark and the likelihood that the Respondent was aware of the Mark at the time of registration. Even if the Respondent had not been aware of the Mark, a basic Internet search for it would have revealed the Complainant’s interest in it. The Complainant submits that the Domain Name would not have been registered were it not for the earlier existence of the Mark.
The Complainant argues that the Respondent’s use of the Domain Name to generate income from advertising, which the Complainant eschews, and to promote services in competition with the Complainant is further evidence of bad faith since not only is it likely to confuse users into believing that the Domain Name is associated with the Complainant, but it is also liable to tarnish the Mark.
The Complainant also notes that the Domain Name is for sale for USD 499, which it says is a sum well in excess of out-of-pocket expenses directly related to the Domain Name and therefore is further evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where 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 Panel therefore finds that the Domain Name is confusingly similar to the Mark, since RADIO MARIA is recognisable within the Domain Name. The addition of the geographic term “Panama” and the gTLD suffix “.org”, does not in any way prevent a finding of confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case, having alleged that the Respondent has not been authorised by it to use the Mark, whether in the Domain Name or otherwise. Furthermore, there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Name in any descriptive manner. Finally, the Respondent is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it, since the receipt of income from sponsored links to competitors of the Complainant is evidently neither a noncommercial nor a fair use of the Complainant’s intellectual property.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was chosen by reference to the Mark and the Complainant. The Panel notes that the Domain Name was registered many years after the Mark was registered. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it incorporated, without the consent or authorisation of the Complainant, the Complainant’s Mark in the Domain Name.
The Panel also notes that the Respondent has not participated in these proceedings and therefore there is no basis upon which to conclude that the Respondent’s particular use of the Domain Name is justified. Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the Domain Name to provide access to sponsored advertising for services that compete with the Complainant is without justification, is inconsistent with the Complainant’s exclusive rights in the Mark, and accordingly is in bad faith.
As a result of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <radiomariapanama.org> be transferred to the Complainant.
Date: September 16, 2019