Coderio SRL v Jose colina, coderslab

WIPO Case No. D2025-0420

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Coderio SRL v. Jose colina, coderslab

Case No. D2025-0420

1. The Parties

The Complainant is Coderio SRL, Argentina, represented by Hoyos & Associates P.C, United States of

America (United States).

The Respondent is Jose Colina, coderslab, United States, represented by Alessandri Abogados, Chile.

2. The Domain Name and Registrar

The disputed domain name <coderio.tech> 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 January 31, 2025. On February 3, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verif ication 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 the Complainant on February 4, 2025, providing the registrant and contact

information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the
Complaint. The Complainant f iled an amendment to the Complaint on the same day.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2025. The Respondent sent email communications to the Center on February 4, and 21, 2025.

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The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 6, 2025. The Panel f inds 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.

As it appeared Annexes 7 and 8 were missing from the Complaint as filed and notif ied to the Respondent, the Panel issued Administrative Panel Order No. 1 on March 21, 2025, pursuant to paragraph 12 of the Rules, inviting the Complainant to submit those Annexes if it wished to rely on them and providing the Respondent with an opportunity to submit comments in response.

On March 23, 2025, the Complainant submitted Annexes 7 and 8.

No further response or comments were received f rom the Respondent.

4. Factual Background

According to the Complaint, the Complainant provides customized web design services and has been doing so since 2017.

It appears f rom Annexes 3 and 6 to the Complaint that the Complainant promotes its services f rom the website “ At the time this decision is being prepared, the URL for that website redirects to the website at “ which bears a copyright notice in the name of “Coderio” and has Terms of Service and a Privacy Policy in the name of Coderio LLC (“The Coderio website”).

The Coderio website which the Panel has viewed in the course of preparing this decision features the Complainant’s figurative trademark reproduced below. Amongst other things, the website states that the business has offices in Miami in the United States (its headquarters), Argentina, Chile, Colombia, Mexico, Peru and Uruguay. The website identifies that clients of the business include VISA, McDonalds, Coca Cola, IBM, Cinemark, Avon, Santander, and FedEx.

The Complaint includes evidence that the Complainant owns a number of registered trademarks:

(1) Argentina Registered Trademark No 3,145,132, CODERIO (f igurative), which appears to have been registered with effect from February 23, 2021, in respect of a range of services in International Class 42;

(2) Mexican Registered Trademark No 3004067, CODERIO (f igurative), which appears to have been registered with ef fect f rom August 21, 2023, in respect of a range of computer sof tware development services in International Class 42;

(3) European Union Trademark No 018992324, CODERIO (figurative), which has been registered since

June 20, 2024, in respect of customized design and development of computer sof tware services in
International Class 42.

The f igurative mark is:

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The Respondent, CodersLab, is also in the business of providing sof tware development services which, when the Panel viewed its website at “ has of f ices or agents under the name and sign “CodersLab” in “LATAM”, Argentina, Uruguay, Colombia, Ecuador and Peru.

The emails submitted by the Respondent disclose that the Respondent, or at least the entity known as Coderslab SAS, owns a registered trademark in Ecuador for the f igurative version of CODERIO shown below:

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It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

The Complainant has proven ownership of registered trademarks for the f igurative version of CODERIO.

The comparison of the disputed domain name to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of inf ringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

For that reason and because this requirement under the Policy is essentially a standing requirement
(WIPO Overview 3.0, section 1.7), the Respondent’s arguments based on the Respondent’s registered
trademark are more appropriately addressed under the other elements of the Policy.

In undertaking the comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

In addition, it is also usual to disregard the design elements of a trademark under the f irst element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The f igurative elements of the Complainant’s trademark are not so dominating that the verbal element cannot be considered an essential or important part of the trademark in this case. Accordingly, it is appropriate to apply the usual rule.

Disregarding the gTLD and the figurative elements, therefore, the disputed domain name consists of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademark and the requirement under the f irst limb of the Policy is satisf ied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy sets out three examples of circumstances which can be situations in which the Respondent has rights or legitimate interests in a disputed domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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There is no dispute between the Parties that:

(1) The Respondent registered the disputed domain name af ter the Complainant began using the

trademark in 2017 and also af ter the Complainant had registered its trademark;

(2)	The Respondent is not af f iliated with the Complainant;
(3)	The Complainant has not otherwise authorised the Respondent to use the disputed domain name;

(4) The disputed domain name is not derived from the Respondent’s personal name or the name of the company or entity (“CodersLab”) by which the disputed domain name has been registered.

In his email on February 4, 2025, the Respondent described himself as the Managing Director of both “Coderslab” and “Coderio LLC”. Further, in that email the Respondent relied on the trademark registered in Ecuador to establish rights and legitimate interests. According to that email, Coderslab Ecuador (which the Panel takes to refer to Coderslab SAS) has been using the trademark “continuously and legitimately … in the Ecuadorian market and other countries where we operate.”

The Respondent’s email is adamant that the disputed domain name is CodersLab’s and Coderio LLC “is not the owner of the domain, nor does it hold any rights over the trademark in question.”

Even if (contrary to what appears to be the case) the Respondent has not disclaimed any entitlement to the disputed domain name from Coderio LLC, nonetheless the existence of that company under that name does not assist the Respondent.

It is well established that the mere incorporation of a company under a particular name does not automatically confer rights or legitimate interests in a domain name for the purposes of the Policy. That is because the name of a company is a matter of choice. Therefore, it is necessary to examine when the company’s name was adopted and all relevant circumstances of that adoption.

As the Complaint points out, the Complainant successfully opposed an attempt by a Coderio LLC to register CODERIO as a trademark in the United States in respect of technology, computer and sof tware services in International Class 42. The Panel has established f rom the United States Patent and Trademark Of f ice records online that:

(a)	The application was accorded serial number 97898334;
(b)	The application was f iled on April 20, 2023;
(c)	The application was f iled by a Wyoming corporation based in California called Coderio LLC;
(d)	The application was signed on behalf of Coderio LLC by “Jose Colina” as the company’s CEO; and

(e) The Complainant’s opposition to registration (initially f iled on April 4, 2024) was successful when Coderio LLC submitted an abandonment of the application on January 8, 2025.

In addition, the Panel’s search of the company records published online by the Wyoming Secretary of State discloses that Coderio LLC was incorporated under that name on March 23, 2023.

However, Annex 8 to the Complaint includes email correspondence in February 2021 in which the Complainant sent to a business proposal under the Complainant’s trademark to Jose Colina in his capacity as the representative of a different company which was a prospective client of the Complainant at that time. Accordingly, the Respondent was well aware of the Complainant and its trademark before the disputed domain name was registered and also before the Respondent’s company, Coderslab SAS, registered the trademark in Ecuador.

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Accordingly, by the time the Respondent’s company Coderio LLC was incorporated, the Respondent was already aware that the Complainant was providing computer technology services under and by reference to the CODERIO name and trademark.

Turning to the trademark registered in Ecuador, the different geographical locations of the Parties’ respective
trademark rights is not a decisive consideration in view of the global nature of the Internet (see e.g.,
WIPO Overview 3.0, section 3.2.2 (in the context of registration and use in bad faith)) all the more so where
the disputed domain name is registered in a gTLD and the Respondent’s website was presented in both
English and Spanish alternatives.

Where a respondent has a registered trademark corresponding to the disputed domain name, panels will typically find that the respondent has rights or legitimate interests in that domain name. However, that is not automatically the case. WIPO Overview 3.0, section 2.12.2. The panel is required to assess the legitimacy of the respondent’s claim in light of all the circumstances and form a view, if possible, about whether the trademark has been registered in good faith or merely as some sort of pretext. An example where the respondent’s registration of a trademark was not sufficient to confer rights or legitimate interests is Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin, WIPO Case No. D2013-1568. That case is not on all fours with the present case, however, as it appears at least that both parties were operating in the same f ield and the same region.

In the present case, the Respondent has not indicated when Coderslab Ecuador started using the trademark. The trademark application, however, was made on January 5, 2024, more than a year af ter the disputed domain name was registered. It is also almost three years after the Complainant’s correspondence with the Respondent about the business proposal in 2021.

Further still, Annex 3 to the Complaint is a document prepared by the Complainant which shows that the website to which the disputed domain name resolved at that time closely resembles the content of the website at “ save that the trademark and URL use CODERIO instead of CODERSLAB.

The landing page of “ (which the Panel has viewed in the course of preparing this decision) appears effectively to be the same or at least very similar to the landing page for that URL shown in Annex 3 to the Complaint. It also appears from the website that “CodersLab” has offices in at least some of the same countries as the Complainant.

In these circumstances, the Panel finds that the individual Respondent was well aware of the Complainant’s trademark before adopting:

(a)	the company name Coderio LLC;
(b)	the disputed domain name; and
(c)	the CODERIO trademark.

It also appears likely that the Respondent adopted the company name, the disputed domain name and
corresponding trademark deliberately for use in a business which is in direct competition with the
Complainant, a business which the Respondent was already carrying on under the name CodersLab.

Taking advantage of the Complainant’s trademark in that way does not qualify as a good faith of fering of goods or services under the Policy and the circumstances surrounding the registration of the company Coderio LLC and the trademark registered in Ecuador mean that neither the company name nor the

trademark registered in Ecuador can be relied on to justify the disputed domain name.

Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also.

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D. Registered and Used in Bad Faith

For the reasons discussed in finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel also finds that the Respondent registered the disputed domain name in bad faith.

The Respondent’s subsequent use of the disputed domain name in connection with a business in competition with the Complainant constitutes use in bad faith. See for example paragraph 4(b) of the Policy:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location.”

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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 <coderio.tech> be transferred to the Complainant.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: April 1, 2025

The Complainant also has pending applications for its trademark in the United States, Serial Nos. 98484278 and 98211031.

According to the WhoIs report, the disputed domain name was registered on October 17, 2023.
When the Complaint was filed, the disputed domain name resolved to a website promoting a business for
sof tware development and business services. At the time this decision is being prepared, however, the
disputed domain name does not resolve to an active website.
This trademark is also registered in respect of computer sof tware development and related services in
International Class 42. From the materials submitted, it appears the application was f iled on January 5,
2024, Application No. SENADI-2023-81387, and registration was granted on May 20, 2024, pursuant to
Resolution No. SENADI_2024_RS_9231.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the
Complainant must demonstrate each of the following:

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

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Preliminary Issue

The Center has received two emails from or on behalf of the Respondent. The f irst email was submitted on
February 4, 2025, by Jose Colina of Coderslab and Coderio LLC.

The second email was submitted on February 21, 2025, by a f irm of Attorneys in Chile pursuant to a power of attorney given by the Respondent. In these circumstances, the Panel proposes to proceed on the basis that the second email, requesting cancellation of the disputed domain name, supersedes the f irst email.

By email dated February 28, 2025, the Complainant advised the Center that the parties had not reached agreement on a settlement and requested that a decision be given. The Respondent has not withdrawn the request for cancellation made in his attorneys’ email on February 21, 2025 and, as noted, it appears that the disputed domain name no longer resolves to a website.

For the reasons discussed below, the Panel considers it appropriate to decide the proceeding on the merits rather than simply order cancellation.

B. Identical or Confusingly Similar

The f irst element that the Complainant must establish for the disputed domain name is that it is identical with, or confusingly similar to, the Complainant’s trademark rights.