WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Radio Maria v. Masanori Toriimoto, PLAN-B co.,Ltd

Case No. D2017-0300

1. The Parties

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

The Respondent is Masanori Toriimoto, PLAN-B co.,Ltd of Osaka, Japan.

2. The Domain Name and Registrar

The disputed domain name <radiomaria-suedtirol.org> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing the registrant, Masanori Toriimoto, PLAN-B co.,Ltd, and its contact information for the disputed domain name which differed from the named respondent, and its contact information in the Complaint. On February 20, 2017, the Registrar confirmed by email that previously-named entity was related to the privacy service. The Center sent an email communication to the Complainant on February 21, 2017 providing the registrant and its 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 February 22, 2017, which identifies Masanori Toriimoto, PLAN-B co.,Ltd, as the Respondent.

On February 21, 2017, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On February 22, 2017, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.

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 February 28, 2017. In response to an email communication from the Registrar of March 1, 2017, the Complainant requested a suspension of the administrative proceedings for 30 days in order to explore a settlement on the same date. The administrative proceeding was suspended on March 2, 2017. On March 30, 2017 the Complainant requested re-institution of the proceeding. On the same date, the proceeding was reinstituted. The Center notified the Parties that the due date for Response was April 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2017.

The Center appointed Haig Oghigian as the sole panelist in this matter on May 9, 2017. 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

As there is no submission from the Respondent, in principle, the facts are taken from the Complaint and generally are accepted as true.

The Complainant is an Italian moral association formed in 1987 by laymen and priests to expand the evangelical scale of the Catholic parish radio station “Radio Maria”, originally set up in 1983. From 1983 to the present, Radio Maria has developed from a small parish radio station to a world-wide radio station with presence in around 55 countries.

The Complainant owns numerous trademark rights for the RADIO MARIA mark for a long period of time all over the world, including international trademark registration granted on May 17, 1993 in class 38 (Registration Number 600288) and Japanese trademark registration granted on July 4, 1997 in class 38 (Registration Number 4023885).

The disputed domain name was registered on August 7, 2016 and used to resolve to an apparently unrelated Japanese civil engineering website. It currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant requests transfer of the disputed domain name.

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark RADIO MARIA. The RADIO MARIA mark has been filed, registered and widely used worldwide. Among others, the Complainant draws the Panel’s attention to a number of trademark registrations, including the international trademark registration No. 600288 RADIO MARIA granted on May 17, 1993 for class 38 and the Japanese trademark registration No. 4023885 RADIO MARIA granted on July 4, 1997 for class 38. The disputed domain name redirects to a Japanese civil engineering website, which has no connection with the Complainant, and which contains a link to an additional website, namely “www.thm-co.jp/yag.html”, sponsoring engineering products. The RADIO MARIA mark and the disputed domain name are almost identical, and the only negligible difference is “suedtirol”, which is a mere geographical indication and devoid of any distinctiveness.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has neither relationships nor links with the Complainant. The disputed domain name does not correspond to the name of the Respondent, and, to the best of the Complainant’s knowledge, the Respondent is not commonly known as “radiomaria-suedtirol”. The Complainant does not find any fair or noncommercial uses of the disputed domain name.

The Complainant further claims that the disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. Radio Maria is well known throughout the world and the Respondent is riding the coat-tail of its reputation and achieving an enhanced advertising of the Respondent’s company. It is more than likely that the disputed domain name would not have been registered if the Respondent were not aware of the Complainant’s trademark. It is clear that the Respondent had originally intended to exploit the reputation and goodwill of the Complainant’s trademark as well as the name of its association. Internet users may reasonably suppose that Radio Maria is somehow connected to the Respondent’s website and is receiving donations and contributions from the Respondent. Therefore, the Respondent is gaining undue benefits and taking unfair advantages of the renown of the Complainant’s trademark RADIO MARIA.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Although the language of the Registration Agreement for the disputed domain name is Japanese, the Complainant in its Complaint and its request dated February 22, 2017 requests that the administrative proceeding be conducted in English.

Paragraph 11(a) of the Rules provides that in principle the language of the administrative proceeding shall be the language of the Registration Agreement, “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. There are a number of rulings by UDRP panels that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition.

See for example General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334, and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400.

Despite the Center’s notification regarding the language of the proceeding to the Respondent in both Japanese and English on February 21, 2017, the Respondent made no objection regarding the language of the proceeding, nor did it submit any response by the due date. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese, and further that English is a neutral language for both of the Parties and would not give the Complainant unfair advantage over the Respondent.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

6.2 Substantive Matters

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the addition of other descriptive and generic terms does not mitigate the confusing similarity between the disputed domain name and the complainants’ trademark. See for example Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect, WIPO Case No.D2014-0125, and J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126.

Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

The Panel notes that the Complainant owns in numerous countries, including Japan, the trademark rights in the RADIO MARIA mark since a number of years before the registration of the disputed domain name. The Panel further finds that the disputed domain name <radiomaria-suedtirol.org> reproduces the Complainant’s trademark RADIO MARIA in its entirety, with the additions of the indistinctive, geographical term “-suedtirol” and the generic Top-Level Domain (“gTLD”) “.org”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the complainant must establish that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:

- Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;

- An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

It is established that where the complainant successfully makes out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

See for example Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, and Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912.

Annex E of the Complaint suggests that the disputed domain name previously resolved to a website which appears to advertise rental services of civil engineering machinery, and that the website showed statements “Rent workable special machines l Company supporting disposal of waste soil” on the top thereof and “Copyright © 2016 Rent workable special machines l Company supporting disposal of waste soil All Rights Reserved.” at the bottom of the website (the words in Italics are originally in Japanese). According to Annex E and F of the Complaint, it appears that the website under the disputed domain name previously contained a link to the website of THM Co., Ltd, which shows explanations on a YAG laser welding machine as well as the company’s contact information.

The Panel finds that the RADIO MARIA mark is widely known at least within the targeted religious community in connection with radio services. The Panel infers that the website under the disputed domain name, reproducing the widely known RADIO MARIA mark in its entirety, misleadingly diverted Internet users from the websites of the Complainant and exposed such users to advertisements of the rental services of civil engineering machinery as well as YAG laser welding machine.

The Panel notes that as at the date of this decision the website under the disputed domain name is an inactive website, and that the Respondent has never submitted any response for the purposes of the proceeding.

Accordingly, in the absence of any response from the Respondent, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, and that the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or to tarnish the Complainant’s trademark.

In addition, the Panel notes that there is no evidence to suggest that the Respondent has been or is commonly known by the disputed domain name. Further, the Panel notes that no evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name, the RADIO MARIA mark, or any other mark confusingly similar thereto.

Therefore, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and therefore the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests. The Respondent did not respond to the Complaint and therefore has failed to rebut the Complainant’s prima facie showing.

Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the disputed domain name has been registered and is being used in bad faith. Although paragraph 4(b) lists 4 circumstances that are evidence of the registration and use of the disputed domain name in bad faith, these circumstances are illustrative only and bad faith may be found otherwise.

It is recognized in a number of UDRP cases that registration of a well-known trademark by the respondent with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.

See for example Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483.

As stated above, the Panel finds that the RADIO MARIA mark is widely known within the targeted religious community in connection with radio services, that as at the date of this decision the website under the disputed domain name is inactive, and that the Respondent has never submitted any response for the purposes of the proceeding. Given the otherwise unlikely choice of domain name, these findings indicate that the Respondent was or should have been aware of the RADIO MARIA trademarks prior to registering the disputed domain name. See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Panel also notes that the disputed domain name reproduces the RADIO MARIA mark in its entirety, and that no evidence has been submitted that shows that the Respondent was in some way connected to the Complainant or was authorised by the Complainant to own or use the disputed domain name. As stated in 6.2 B above, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, and that the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or to tarnish the trademark. Accordingly, the Panel cannot conceive of any bona fide use that the Respondent could make of the disputed domain name.

Therefore, in the absence of any response to the Complaint, the Panel considers that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirement of 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, <radiomaria-suedtirol.org>, be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: May 23, 2017