The Complainant is Associazione Radio Maria, Vimercate (MI), Italy, represented by Studio Legale Perani, Milan, Italy.
The Respondent is Satnet S.A., Quito, Ecuador, represented by Estudio Jurídico
Vivanco & Vivanco, Quito, Ecuador.
2. The Domain Name and Registrar
The disputed domain name <radiosantamaria.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2006. On March 24, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On March 31, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 7, 2006. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on April 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2006. The Response was filed with the Center on April 24, 2006.
The Center appointed Willem J. H. Leppink as the sole
panelist in this matter on May 17, 2006. 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 was born in 1983, as a Catholic parish radio station in Italy. In 1987, the Complainant was founded in order to fully commit itself to evangelization (independent from the parish) by means of radio broadcasts. As from 1990, Radio Maria covered all Italian regions and was considered a national radio station. In 1998, the Complainant established The World Family of Radio Maria and currently the Complainant broadcasts Radio Maria throughout the world, in over 30 countries, including Ecuador, and in more than a dozen languages, including Spanish. In Ecuador, the Complainant has broadcasted Radio Maria since 1998, and reaches via 19 different broadcasting centers and via the website “www.radiomariaecuador.org”, a large number of catholic listeners.
The Complainant is the owner of a very large portfolio of trademark registrations covering the whole world for the mark RADIO MARIA.
In Ecuador, the Complainant is the owner of Ecuador trademark nr. 1717/97 RADIO MARIA registered on October 19, 1995. The Complainant also holds similar trademark registrations for RADIO MARIA for the other Central and South American countries.
Furthermore, the Complainant owns nearly 30 domain names connected with its name, including but not limited to <radiomaria.com>, <radiomaria.org>, <radiomaria.info>, <radiomaria.biz>, <radiomaria.tv>, and <radiomaria.it>.
The Respondent is a company organized under the laws
of Ecuador. The Respondent is an Internet service provider and also offers related
services, such as web page design, hosting, etc.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant contends that the domain name <radiosantamaria.com> is confusingly similar to the trademark RADIO MARIA, since it differs solely in the addition of the word “santa”. This word – meaning “saint” in English – is commonly used as a general adjective in religious language and, in particular, with the name “Maria”: therefore, it has to be considered a descriptive term with no relevance in evaluating the similarity between the two signs.
Furthermore, the Complainant alleges that the Respondent does not have any rights in the trademark involved and has no legitimate interests relating to the same. According to the Complainant, the Respondent does not have any trademark covering the name “RADIO MARIA”. The Domain Name neither corresponds to the business name of Respondent nor is there any particular service or product offered by Respondent under the name “Radio Santa Maria”. Furthermore, the Complainant has never licensed or otherwise authorized the Respondent to use its RADIO MARIA name and trademark.
Moreover, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Respondent, by registering and using the contested domain name, was intending to exploit the notoriety of the trademark RADIO MARIA. According to the Complainant, its trademark is well known and therefore the choice of the Domain Name by the Respondent could not be the result of a mere coincidence. By choosing a domain name consisting of the Complainant’s trademark, the Respondent intentionally wanted to exploit the fame of Complainant’s trademark for attracting Internet users to a website which is not related to the Complainant. Furthermore, the Complainant alleges that the use of the Domain Name is clear evidence of an attempt to attract, for commercial gain, Internet users to a website that could not be equally noted or located by Internet users. On the website to which the Domain Name resolves, a company named EcuaTrofesa offers for sale cups, medals, plates and other trophies. It is therefore, according to the Complainant, evident that the Domain Name is used to attract Internet users.
B. Respondent
The Respondent states that it executed an agreement with a legal entity named “Radio Santa Maria” in order to host its web page and it therefore was necessary to route the <radiosantamaria.com> domain name through the Respondent’s systems.
The Respondent furthermore contends that although it appears from Bulkregister.com that the Domain Name was registered by the Respondent, it was never used by the Respondent. According to the Respondent, the Domain Name was originally registered and, to its knowledge, was used by Radio Santa Maria. The Respondent alleges that it did not register the Domain Name. Moreover, after expiration of the agreement between the Respondent and Radio Santa Maria in 2004, due to a technical pre-set configuration which was not under the control of the Respondent, the Domain Name displayed Trofesa S.A.’s webpage.
The Respondent also alleges that there is no connection
or agreement between Radio Santa Maria and Trofesa S.A. In addition, Respondent
states that there is no connection, agreement or arrangement between the Respondent
and Trofesa. The Respondent therefore will neither declare whether the Domain
Name is identical or confusingly similar to the trademark RADIO MARIA nor will
it state whether it has rights or legitimate interests with respect to the disputed
domain name.
6. Discussion and Findings
For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):
(i) the Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.”
The Complainant bears the burden of proof on each of these elements.
After having reviewed both parties’ contentions, evidence and findings, the Panel, hereinafter, considers each of the criteria in the Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a large portfolio of registrations for the trademark RADIO MARIA. The trademark RADIO MARIA of the Complainant is included in its entirety in the disputed domain name <radiosantamaria.com>. The fact that the dictionary word “santa” is added to the Complainant’s trademark RADIO MARIA does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “santa” is a dictionary component of the disputed Domain Name.In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. Moreover, the fact that the dictionary word “santa”, meaning “saint” in English has been added even increases the confusion between the Domain Name and the Complainant’s trademark as many people in the world associate “Maria” with Maria the saint, i.e. “Santa Maria” in Spanish.
Therefore, under the Policy, paragraph 4(a)(i), the Panel considers the Domain Name confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests in the Domain Name by the Respondent:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant.
The Complainant in its Complaint has made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Panel considers it likely that Respondent solely selected the Domain Name to create an impression of association with the Complainant and to capitalize on the Complainant’s mark. Such use by Respondent obviously does not constitute use in connection with a bona fide offering of goods or services. Moreover, the Domain Name is not a name a trader would select to offer goods as shown on the website connected with the Domain Name, namely trophies.
The Respondent has also not previously been known under the disputed Domain Name. To the contrary, neither Respondent’s company name nor the name of EcuaTrofesa (the name of the company which is shown on the website to which the disputed domain name resolves) corresponds with the Domain Name.
Furthermore, the Respondent had not provided any evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name. Respondent does not offer any services or goods corresponding to the name “Radio Santa Maria”. The Complainant also has never licensed or otherwise authorized Respondent to use its trademark for commercial activities. In this respect, the Panel notes that Complainant has convincingly argued that Complainant never licenses its trademark for commercial activities.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a) (ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out the ways in which the Complainant can show the Domain Name is registered and used in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the 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 engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 from the record it is manifest that Respondent has registered and used the Domain Name to attempt to attract for commercial gain, Internet users to its website on which cups, medals, plates, wands and other trophies are offered for sale. The disputed Domain Name also does not in any way relate to “radio” broadcast or religious services. Moreover, Respondent is not a religious radio station, but an Internet service provider. Respondent intentionally created a likelihood of confusion with the Complainant’s trademark to benefit from the notoriety and fame of Complainant’s trademark and thus attract Internet users who are looking for the website of Complainant, to its website in order to sell goods to these misled Internet users.
Furthermore, the Panel underlines the contention of Complainant that the choice of the Domain Name by Respondent is not a result of mere coincidence. Considering the foregoing, the Panel finds it very likely that Respondent had actual knowledge of Complainant’s trademark RADIO MARIA when it registered the disputed Domain Name consisting of Complainant’s trademark.
Finally, Respondent has not denied Complainant’s assertions of bad faith, has not given any justification for the registration of the disputed Domain Name nor substantiated or at least alleged any concurrent right or legitimate interest to the disputed Domain Name. Respondent’s statement that it has not registered the Domain Name is rejected by the Panel. Respondent has not provided any evidence of circumstances which, in any way, support this statement. This also applies to Respondent’s other arguments, which are not, in any way, substantiated by factual evidence.
In addition, the Panel remarks that it was surprised to be confronted with the bold argument from an Internet service provider such as Respondent that it has not registered the Domain Name, whilst the Whois directory evidently shows the contrary. In this respect, the Panel further notes that Respondent’s statements also conflict with one another. Initially, Respondent states that the Domain Name has originally been registered by another entity, without giving any further explanation, clarification or factual evidence why the domain name is currently registered in the name of Respondent, and subsequently Respondent contends that is has never registered the domain name.
On the basis of the foregoing the Panel therefore concludes that the Respondent
registered and is using the Domain Name in bad faith and that the requirements
of paragraph 4(a)(iiii) of the Policy are satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <radiosantamaria.com>, be transferred to the Complainant.
Willem J.H. Leppink
Sole Panelist
Dated: May 31, 2006
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