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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Radio 2 Comunicaзŏes Ltda. v. Simon Cristiano Dias

Case No. D2007-1906

1. The Parties

The Complainant is Radio 2 Comunicaзŏes Ltda., of Sгo Paulo, Brazil, represented by Biazzo Simon Advogados, Brazil.

The Respondent is Simon Cristiano Dias, of Vitoria, Espнrito Santo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <radiodois.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2007. On December 21, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 25, 2007 OnlineNic, Inc. d/b/a China-Channel.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. The Center verified that 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 January 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2008.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 6, 2008. 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 mark upon which the Complaint is based is RADIO 2. According to the documentary evidence and contentions submitted, Complainant has filed three trademark applications in Brazil which are still pending review by the Brazilian Patent and Trademark Office (INPI). On November 17, 2000, Complainant filed two applications for registration of a service mark consisting of the expression RADIO 2 and its stylized form to distinguish radio services and production and supply of radio programs, and on September 5, 2006, Complainant filed a third application for registration of a service mark consisting of the expression RADIO 2 to distinguish Internet services.

According to documentary evidence and contentions submitted, Complainant has used the trade name RADIO 2 to distinguish the company and its services since 1985, and owns, directly or through affiliates, the <radio2.com.br> and <radiodois.com.br> domain names, registered in 2002. Both domain names resolve to Complainant’s website.

According to the contentions submitted, Complainant is in the business of offering radio services, including online radio, and producing and offering radio programs. Pursuant to an independent survey conducted by the Panel by visiting the Complainant’s website, the Panel verified that Complainant’s website provides information about Complainant’s activities and online radio services (access on February 16, 2008).

Respondent registered the domain name <radiodois.com> with OnlineNic, Inc. d/b/a China-Channel.com on June 25, 2007. Respondent operates a website to which the disputed domain name resolves. Pursuant to an independent survey conducted by the Panel by visiting the Respondent’s website, the Panel verified that Respondent’s website provides information about Respondent’s activities and online radio services (access on February 16, 2008).

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name <radiodois.com> reproduces the <radiodois.com.br> domain name, that the disputed domain name is identical and confusingly similar to the Complainant’s service marks because the expressions “radio2” and “radiodois” are identical, and that the disputed domain name is a partial reproduction of Complainant’s trade name.

Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent is not the owner of any trademark or service mark for the use of the expressions “radiodois” and “radio2” in Brazil; (ii) since Respondent is an individual, he has also no trade name or business name rights in connection with the expressions “radiodois” and “radio2”; (iii) Respondent has not mentioned any rights in respect to the domain name, and has not provided any reasonable justification concerning the use of the expression “radiodois”.

Finally, Complainant argues Respondent registered the disputed domain name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks.

In accordance with paragraph 4(i) of the Policy, the Complainant requests that the Panel orders that the disputed domain name be transferred to Complainant.

B. Respondent

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

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to reply to all of the Complainant’s contentions by submitting a complete Response. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

The threshold element for Complainant under the UDRP is that Complainant must establish that there is a trademark or service mark in which it has rights.

The Panel notes that pursuant to the evidence submitted by Complainant, the two applications filed by Complainant on November 17, 2000 for registration of a service mark consisting of the expression RADIO 2 and its stylized form appear as “stayed”. An independent survey on such marks was conducted by the Panel by visiting the website of the Brazilian Patent and Trademark Office (INPI), and the Panel has verified that the reason for the stay order has been removed since the conflicting trademark registration has been cancelled (access on February 14, 2008).

Based on the record, it does not appear that Complainant has registered trademarks. However, it is well-established that an unregistered or common law trademark is sufficient to give a complainant standing to bring a UDRP complaint. According to documentary evidence and contentions submitted, Complainant has used the trade name RADIO 2 to distinguish the company and its services since 1985, and owns, directly or through affiliates, the <radio2.com.br> and <radiodois.com.br> domain names, registered in 2002. Accordingly, the Panel is satisfied in this case that Complainant has established goodwill and has trademark rights to the term “radiodois” for the purposes of these proceedings.

This Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

The expression “radiodois” is phonetically equivalent to the expression “radio2” because any Portuguese speaking person would read both expressions the same way. Therefore, both expressions are, graphically, confusingly similar and, phonetically, identical. Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. The likelihood of confusion is reinforced by the fact that the websistes which the Parties operate under similar domain names provide similar contents and offer similar online radio services, as further discussed below.

Therefore, the Panel finds that the <radiodois.com> domain name is confusingly similar to Complainant’s mark RADIO 2 and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The consensus view in WIPO Panel decisions has been that “[w]hile the overall burden of proof rests with the complainant, …. this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel finds that the Complainant has established a prima facie case, and by defaulting the Respondent has failed to provide the Panel with any evidence of his rights or legitimate interests to the disputed domain name. In addition, none of the three nonexclusive methods for the sole panelist to conclude that Respondent has rights or a legitimate interest in the disputed domain name [paragraph 4(c) of the Policy] shows a result in favor of the Respondent.

In fact, the disputed domain name is not the name of Respondent or the name by which he is commonly known, and the disputed domain name is not the Respondent’s trade name or service mark.

Paragraph 4(c)(i) of the Policy provides that respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) would be demonstrated by “before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services.” Paragraph 4(c)(iii) further provides that respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) would be demonstrated by “making a legitimate … fair use of the domain name, without intent for commercial gain to misleadingly divert consumers …”

As decided in other WIPO UDRP cases, the Panel is of the opinion that the requirement of “bona fide” in paragraph 4(c)(i) is sufficient to prevent a respondent who knowingly adopted another’s known mark as a domain name from relying on this provision to claim the benefit of use or demonstrable preparations to use the domain name in connection with a prior offering of goods or services. See Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169. Also, efforts to misleadingly divert customers with the intent of commercial gain is not evidence of bona fide use of the domain name but rather evidence of bad faith [Policy para. 4(c)(i) and 4(b)(iv)].

Respondent has used the disputed domain name in connection with the offering of services which are similar to and in direct competition with those offered by Complainant in the websites to which its <radio2.com.br> and <radiodois.com.br> domain name resolve. Respondent’s website is written in Portuguese and is directed to Portuguese speaking, Brazil resident Internet users. Complainant has been in the business of offering radio services, including online radio, and producing and offering radio programs for more than 20 years before Respondent registered the disputed domain name. Therefore, it is conceivable that Respondent, before registering the <radiodois.com> domain name, was aware of the existence of the domain names, trade name and service mark related to Complainant’s website. Finally, the Panel notes that Respondent’s website provides also advertisement.

In short, the Complainant has made a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

On September 24, 2007, Complainant sent a cease and desist letter to Respondent requesting the transfer of the disputed domain name by arguing that the operation of the <radiodois.com> domain name creates great confusion in the market. In his response dated October 8, 2007, Respondent argued that (i) his activities are different from those conducted by Complainant, and that (ii) he uses the brand name “RADIO HIT DOIS”, and, therefore, they operate under different designations.

The Panel has found before, for the purpose of determining whether Respondent has rights or legitimate interests in respect of the domain name, that Respondent, prior to registering the <radiodois.com> domain name, was aware of the existence of the domain names, trade name and service mark related to Complainant’s website.

Paragraph 4(c)(iv) of the Policy provides that if, by using the domain name 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 the respondent’s website or location or of a product or service on the respondent’s website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.

This Panel takes the view that the content of a website (whether it is similar or different to the business of a mark owner) is relevant to the finding of bad faith registration and use. This is particularly so where the website site offers for sale goods or services that are in direct competition with those of the complainant’s. Such use may also suggest an element of unfair competition.

The fact is that, contrary to what Respondent contended in reply to Complainant’s cease and desist letter, Respondent’s website offers services which are similar to and in direct competition with those offered by Complainant, and to the very same market and customers. In fact, Respondent’s website displays a message with the following lettering: “Your 24-hours Web Radio”. As a result, the Panel concludes that Respondent operates a website under the disputed domain name that misleandingly diverts customers from Complainant’s website for commercial gain.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <radiodois.com> be transferred to the Complainant.

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Manoel J. Pereira dos Santos
Sole Panelist

Dated: February 20, 2008