The Complainant is Diaco S.A., Colombia, represented by Holland & Knight Colombia SAS, Colombia.
The Respondent is Ana Sonia Romero de Guerrero, Colombia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2021, the Registrar 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 disputed domain name. The Center verified that 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. The Respondent submitted an informal response on April 23, 26, 29, and May 14, 2021. The Center sent a possible settlement email to the Parties on April 26, 2021. The Complainant did not request a suspension of the proceeding to explore settlement options. The Center informed the Parties of the commencement of Panel Appointment process on May 14, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on May 26, 2021. 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 Complainant is a company affiliated to the Gerdau Group, one of the largest producer of steel in Latin America. This multinational has presence in 10 countries with steel manufacturing facilities, 21.7 million tons of annual installed capacity and 30,000 members around the world. Gerdau manufactures long and special steel products for the agriculture, energy, industrial, automotive and manufacturing markets. Gerdau purchases, sorts, processes, prepares, packages and sells all grades of ferrous and non-ferrous scrap metal. The Complainant owns several trademarks registered in Colombia, for example DIACO (Word mark), International class 6, registration No 298944, registered on June 21, 2005. The dipsuted domain name was registered on November 22, 2018. According to the evidence provided by the Complainant the disputed domain name resolves to a website purporting to be connected to the Complainant’s group of companies, displaying the message “Bienvenidos al portal del grupo siderurgico Diaco” (translated into English by the Panel as “Welcome to the site of the Diaco group producers of steel”). 5. Parties’ Contentions A. Complainant The Complainant owns in Colombia seven distinctive signs with the expression “diaco” (including three trademarks) creating a family of trademarks, which necessarily leads to associate each of these signs with the particular business of the Complainant. The disputed domain name is confusingly similar to DIACO registered trademarks. The disputed domain name is identical to the trademarks owned by the Complainant in Colombia, as the disputed domain name The Complainant has also registered the domain name The Respondent has registered the disputed domain name with the purpose of misleading consumers in thinking that it is a domain name related with products and services provided by the Complainant. The Respondent has not been commonly known by the disputed domain name, and neither has acquired or registered a trademark related to the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Given that the Respondent is based in Colombia, a country where the Complainant has registered its DIACO trademarks and where Gerdau Group is present with the Complainant, it is evident that the Respondent is aware of the reputation of this multinational in different countries of the world and therefore, the registration of the disputed domain name has been conducted in bad faith. The disputed domain name is being used by the Respondent for misleading consumers. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The Respondent’s email communications were sent through the email address identified by the Registrar as corresponding to the registrant (but signed with a name different to the Respondent’s name). In any case, noting the use of the mentioned email address, the Panel will consider these email communications as coming from the Respondent. The Respondent claimed the lack of bad faith, he claimed to “buy a lot of documents with a focus on SEO and advertising”, and offered the disputed domain name for sale. The Respondent claimed that the disputed domain name was penalized by Google, and “bear the cost of cleaning the domain and decriminalizing it”. The Respondent initially offered the disputed domain name for USD 500, and after declaring that he was not interested in the disputed domain name lowered the offer to USD 50. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel finds that the disputed domain name is identical to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark DIACO in full in the disputed domain name, without any added terms or elements, leads the Panel to conclude that the disputed domain name is identical to the Complainant’s marks. The mere addition of “.com.co” does not prevent a finding that the disputed domain name is identical to the Complainant’s trademark, as “.com.co” is a technical requirement. The Panel is satisfied that the disputed domain name is identical to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case, shifting the burden of production to the Respondent, and if Complainant’s prima facie case is not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a formal Response supported by evidence, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name. Nothing from the Respondent’s email communications is sufficient to give rise to rights or legitimate interests in the disputed domain name under the Policy. Registering a domain name identical to the Complainant’s trademark, and its use to refer to the Complainant’s group of companies is not a bona fide registration or use of a domain name under the Policy. Furthermore, the disputed domain name is being used for a site that initially refers to the "Diaco Group", and that contains information dated 2008. Moreover, the website at the disputed domain name contains a YouTube video that promotes Gerdau Group products and services in Colombia, and that is directly related to the Gerdau Diaco official channel in YouTube to the Complainant’s official website. Such misleading use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. In addition, noting the disputed domain name is identical to the Complainant’s trademark, the Panel finds that there is a risk of implied affiliation see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (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 has engaged in a pattern of such conduct; (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 online 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 its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent knew or should have known of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark DIACO is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant. As such, the Panel is satisfied that by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its content and website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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, Daniel Peña
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: June 5, 2021
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