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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diagnosticos Especializados S.A. v. Rio Turnadi

Case No. DCO2015-0026

1. The Parties

Complainant is Diagnosticos Especializados S.A. of Bogota D.C., Cundinamarca, Colombia, represented by Velasco Ordóñez Abogados, Colombia.

Respondent is Rio Turnadi of Padang, Sumatera Barat, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <desa.com.co> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 31, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 2015.

The Center notified the parties on August 31, 2015 that the Complaint was filed in Spanish being the language of the registration agreement English, according to the information provided by the Registrar. In the mentioned notification the Center invited the parties to send its comments regarding the language of the proceeding. Complainant filed its request for the Spanish to be the language of the proceeding by email to the Center on September 2, 2015. Respondent did not file to the Center any comments in this regard.

The Center verified that the Complaint together with the amended 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 proceeding commenced on October 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 26, 2015.

The Center appointed Pablo Palazzi as the sole panelist in this matter on November 5, 2015. 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

Complainant is a company incorporated in Bogota, Colombia, dedicated to provide medical services and medical diagnosis.

Complainant is the owner of the trademark DESA (word mark and design marks) registered in Colombia in classes 5, 9, 10, 35, 42 and 44, with registration date April 30, 2003.

According to independent research performed by the Panel, the Complainant operates two websites located at "www.desa.co" and "www.idime.com.co".

Respondent registered the disputed domain name on June 26, 2012.

Respondent is using the disputed domain name to resolve to a website with a static picture.

5. Parties' Contentions

A. Complainant

Complainant is the owner of the trademark DESA, registered in Colombia.

Complainant argues that the disputed domain name is identical to the trademark DESA.

Complainant states that Respondent does not have rights or legitimate interest in the disputed domain name because the disputed domain name is not being commercially used, containing only a list of ten best schools in Indonesia. The disputed domain name was registered in June 26, 2012 and has not been used since then, such lack of use being evidence of lack of legitimate interest in the disputed domain name.

In addition, Complainant states that according to the list obtained from the trademark database of the Colombian trademark registry, the only entity in Colombia with registered rights over the term DESA is Complainant. Therefore, Complainant concludes that no other entity in Colombia, except for Complainant, would have interest over the disputed domain name.

With respect to bad faith Complainant states that:

- Complainant is the unique owner of a trademark with the term DESA in Colombia.

- The registration of the disputed domain name by a person other than Complainant would have as a unique aim to sell it to Complainant or a competitor of the Complainant in bad faith.

- The trademark DESA was registered by Complainant nine (9) years before Respondent registered the disputed domain name.

- The fact that the disputed domain name is inactive is evidence that the disputed domain name is used in bad faith.

The Complaint requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainants must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding, Complainant must prove that each three of these elements are present.

A. Language of the proceeding

The Center notified the parties that the Complaint was filed in Spanish. The Center invited the parties to send its comments regarding the language of the proceeding.

Complainant filed its request for the Spanish to be the language of the proceeding by email to the Center. Respondent did not file to the Center any comments in this regard.

Complainant admits that the registration agreement was in English but it explains that it filed the Complaint in Spanish and requests Spanish to be the language of the proceeding taking into account that Complainant is doing business in Colombia and is incorporated in that country. In addition, Complainant states that this case is about a domain name registered in the country code Top-Level Domain ("ccTLD") ".co" for Colombia. Finally, Complainant states that the documents in the Complaint are all in Spanish.

The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules.

The Panel notes that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full considerations to the parties' level of comfort with each language (see Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679). In the present case, Respondent is located in Indonesia and presumably he does not understand Spanish. In addition the content of the disputed domain name has some phrases in English. On the other hand, the Complainant filed the Complaint in Spanish.

Taking into account these circumstances and in light of fairness to both parties, the Panel accepts the Complaint in Spanish but will render its decision in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in DESA as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

The Panel is also prepared to find that the disputed domain name <desa.com.co> is identical to the Complainant's trademark DESA. The term "desa" is wholly incorporated in the disputed domain name. The country code Second-Level Domain ("ccSLD") "com" and the ccTLD ".co" do not serve to distinguish the disputed domain name from the Complainant's trademark.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

According to paragraph 4 (a) of the Policy, all three elements listed in items (i) to (iii) need to be established cumulatively. Since the element of bad faith is not proven, the Panel will not address the question of rights or legitimate interests of Respondent in the disputed domain name.

D. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

Each of those circumstances requires, or implies, that Respondent must have known, or ought to have known, of Complainant's rights. The Panel finds on the balance of probabilities that Respondent did not have such knowledge.

In addition, Respondent's default does not automatically result in a decision in favor of Complainant. Complainant must establish and prove each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (see paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).

Complainant has failed to prove its case because there is no compelling evidence showing the Respondent's bad faith registration of the disputed domain name.

Complainant states that the registration of the disputed domain name by a person other than the Complainant would have as a unique aim to sell it to Complainant or a competitor of the Complainant in bad faith. Complainant cannot rely on an offer to sale the disputed domain name (to Complainant or to a competitor) if that offer has never taken place. The Complaint does not mention previous communications between the parties nor any statement related to a specific knowledge of Complainant´s trademarks by Respondent.

The bad faith element can be demonstrated by any of the examples enumerated on paragraph 4(b) of the Policy, or other circumstances. However, the Complaint is devoid of any evidence of bad faith.

There is no suggestion in the Complaint or evidence on whether Respondent knew or was aware of the Complainant trademarks at the time of registration of the disputed domain name. In addition, Complainant seems to be only active in Colombia, with no presence in Indonesia or other parts of the world.

There is no material evidence before the Panel to indicate that the Respondent has attempted to profit from confusion between the Complainant's mark and the disputed domain name. There appears to be no advertising, nor pay per click uses of the disputed domain name, beyond a landing page with a photo of kids running and a list of schools in Indonesia under the "Top ten schools in Indonesia".

In this case, the evidence does not show that Respondent knew or should have known that the disputed domain name reflected the Complainant's trademark. There is also no evidence of Respondent targeting the Complainant. In these circumstances, Complainant has not proved registration and use in bad faith. Therefore, the third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Finally, while this dispute does not appear to be a clear case of cybersquatting that the Policy was designed to address, naturally this decision is without prejudice of any recourse to the trademark law and the jurisdictions where Complainant may choose to pursue legal actions.

7. Decision

For the foregoing reasons, the Complaint is denied.

Pablo A. Palazzi
Sole Panelist
Date: November 23, 2015

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