In A UDRP issued today a one member panel denied the complaint of a trademark holder on the domain name MariahRadio.com

While we often write about questionable to outright awful UDRP decisions where domain names are taken away from the holders this one might drive the trademark crowd crazy.

The complainant had a TM on the exact term “Mariah Radio”

The Domain name was going to a parked page.

The domain holder didn’t file a response to the UDRP.

The case seems to have turned on the fact that the domain holder has a daughter with the name Mariah.

Here are the relevant facts and findings:

“The Complainant is Associazione Radio Maria, an Italian organization which operates the Radio Maria radio, a Catholic parish radio created in 1983.”

“Radio Maria is broadcasted in many countries around the world, including in the United States of America, and in more than a dozen languages.”

:The Complainant owns trade marks in the term RADIO MARIA and has submitted trade mark registration certificates for its Community trade mark RADIO MARIA n°003471562, registered on March 7, 2006, its USPTO trade mark n°1924809 registered on October 3, 1995, and its International trade mark n°600288 registered on May 17, 1993.”

“The Domain Name was registered on 10 May 2008”

“The Complainant is the owner of a number of domain names that incorporate the term ”radio maria” or its translation in other languages, including <radiomaria.org>, <radiomary.com> and <radiomarie.com>.”

“The Domain Name resolves to a parking page containing sponsored links to the websites of other radio stations, which are direct competitors of the Complainant, and to third party websites.””

“The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.”

“The Respondent has submitted an unsolicited Supplemental Filing to the Center on January 21, 2012.”

“No explicit provision is made under the Policy or the Rules for supplemental filings. Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”

“”In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. It is therefore at the discretion of the Panel whether it will consider such supplemental filings.””

“”The Panel has reviewed the Respondent’s Supplemental Filing, in which the Respondent claims that he has a daughter named Mariah, for whom he registered the Domain Name. The Respondent did not, however submit any corresponding evidence.””

“The Panel is satisfied that the Respondent does have a daughter named Mariah.”

“The Panel therefore makes its decision on the basis of the factual statements contained in the Complaint, the documents made available by the Complainant to support its contentions, and the Respondent’s Supplemental Filing.”

“”Based on the evidence provided by the Complainant to substantiate its trade mark rights, the Panel is satisfied that the Complainant owns extensive trade mark registrations in the phrase RADIO MARIA.”

“The panel finds that, when combined, the terms “radio” and “maria” in the Complainant’s trade mark become distinctive of the Complainant and its radio, even though used separately these words may be generic.”

“”In the present case, the situation is similar, the Disputed Domain Name is composed of two words that are in reverse order from Complainant’s mark and in which one of the words – “Mariah” – is also a common English translation of Complainant’s “maria” word element.

The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.””

B. Rights or Legitimate Interests

Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the panel should find for the complainant unless the respondent demonstrates a plausible case of rights or legitimate interests.

“The Panel does not consider that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name.”

“What has emerged in the Respondent’s Supplemental Filing, and has been ascertained by the Panel’s personal research, is that Mariah is the name of the Respondent’s daughter. The Domain Name registered by the Respondent thus contains the name of its daughter, which is a common woman’s name, and the descriptive term “radio”. Based upon the facts apparent, this is therefore not a case of cybersquatting where a registrant merely wishes to exploit a trade mark for business purposes by registering a domain name identical or confusingly similar to a third party’s trade mark.””

“”In the present case, the Domain Name incorporates the descriptive term “radio” in its entirety. The links posted on the Respondent’s website and pointing to the websites of other radio stations are therefore merely related to the descriptive meaning of the term “radio”. The term “Mariah”, also incorporated into the Domain Name, being the name of the Complainant’s daughter, the Panel is satisfied that the Respondent is not taking undue advantage of the Complainant’s trademark.””

“The mere fact that the website to which the Domain Name resolves displays sponsored links to other radio stations does not, in itself, constitute evidence of bad faith registration and use.

“As previously explained, in the present case, the links on the Respondent’s website are related to the descriptive meaning of the term “radio” incorporated in the domain name at issue, and are therefore genuinely automated.”

“Thus, the Panel does not find that the inclusion of such advertising links constitutes a basis for finding bad faith registration or use of the Domain Name. The Panel does however question the role of registrars in automating such content and also the ability of the domain name registrant to control this, or even whether registrants are aware of the practice. In some cases this very practice can pave the way for a finding of bad faith on the part of the registrant without them even being aware that it is has been put into place by the registrar.”

“The present case is not such that the Respondent deliberately created confusion to profit from the RADIO MARIA trade mark. On the contrary, the fact that “Mariah” is the name of the Respondent’s daughter as well as a common woman’s name, and that the term “radio” is purely descriptive weighs heavily against a finding of bad faith.”

“Under these circumstances, the Panel finds that the Domain Name was not registered in bad faith and that the Complainant therefore failed to establish the requirement of paragraph 4(a)(iii) of the Policy.”