Pontificia Universidad Javeriana v Javeriana comco

WIPO Case No. DCO2025-0034

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pontificia Universidad Javeriana v. Javeriana comco

Case No. DCO2025-0034

1. The Parties

The Complainant is Pontificia Universidad Javeriana, Colombia, represented by Cavelier Abogados,

Colombia.

The Respondent is Javeriana comco, Colombia.

2. The Domain Name and Registrar

The disputed domain name <javeriana.com.co> (“the Domain Name”) is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2025. On March 26, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (PDR Ltd. d/b/) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2025, providing the registrant and contact information

disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The

Complainant filed an amended Complaint on April 1, 2025.

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 proceedings commenced on April 2, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was April 22, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 25, 2025.

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The Center appointed Ana María Pacón as the sole panelist in this matter on May 6, 2025. 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 private catholic University with its principal place of business in Bogota, Colombia. Founded in 1623, it has become one of the most prestigious universities in the country, widely recognized for its academic excellence and contribution to higher education. The Complainant engages in teaching,

research, and service, functioning as a university integrated within a diverse national context, and guided by

global and interdisciplinary outlook.

Relevant to this proceeding, the Complainant has registered the trademarks JAVERIANA and PONTIFICIA

UNIVERSIDAD JAVERIANA in Colombia, including:

- Colombian Registration No. 42580 for JAVERIANA, registered on May 16, 2011, covering services in class
41.
- Colombian Registration No. 304160, for PONTIFICIA UNIVERSIDAD JAVERIANA and logo, registered on
October 18, 2005, covering services in class4
- Colombian Registration No. 321361, for PONTIFICIA UNIVERSIDAD JAVERIANA and logo, registered on
August 23, 2006, covering services in class 41.
- Colombian Registration No. 321362, for PONTIFICIA UNIVERSIDAD JAVERIANA and logo, registered on
August 23, 2006, covering services in class 41.
Colombian Registration No. 321363, for PONTIFICIA UNIVERSIDAD JAVERIANA and logo, registered on

August 23, 2006, covering services in class 41.

The Complainant is also the registrant of the domain name <javeriana.edu.co> registered since July 6, 1999.

The Domain Name was registered on July 20, 2024. Although it is currently inactive, the Complainant has provided evidence showing that it has been used to send WhatsApp messages to the Complainant’s students, with the intent to redirect them to a fraudulent payment portal at the Domain Name.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant contends that the Domain Name incorporates its JAVERIANA trademark in its entirety, thereby satisfying the requirement under Paragraph 4(a)(i) of the Policy. According to several UDRP panels, the complete reproduction of a trademark in a domain name is sufficient to establish

confusing similarity. The addition of “.com” and the two-letter country code Top-Level Domain (“ccTLD”) “.co” (designating Colombia) does not avoid a finding of confusing similarity with the JAVERIANA mark.

Furthermore, the Complainant contends that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has not been commonly known by the Domain Name, either as an individual or an entity, prior to its registration. Moreover, the Complainant states that it has not authorized, licensed, or otherwise permitted the Respondent to use its JAVERIANA trademark, and there is no affiliation, association, sponsorship, or connection with the Complainant. The Complainant also indicates that the Respondent’s conduct is currently under investigation by Colombian criminal authorities for offenses related to fraud and impersonation.

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Under Paragraph 4(a)(iii), the Complainant alleges that the Respondent has registered and is using the Domain Name in bad faith. Given the well-known character and reputation of the JAVERIANA mark in Colombia, the Complainant argues that the Respondent must have been aware of the mark at the time of registration. In addition, the Complainant has submitted evidence indicating that the Domain Name was used in WhatsApp messages sent to students of the Complainant, seeking to redirect them to a fraudulent payment portal. The Complainant contends that prior UDRP panels have found bad faith registration and use in similar circumstances involving impersonation and fraud.

The Complainant requests the transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first 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 Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

In the present case, the Domain Name incorporates the JAVERIANA trademark in its entirity, with the
addition of the term “com” and the two-letter country code “co”. The inclusion of the country code Top-Level
Domain (“ccTLD”) “.co”, together with the Second-Level Domain “.com” is generally accepted that is merely a
technical registration requirement and as such is typically disregarded under the first element confusing
similarity test. WIPO Overview 3.0, section 1.11.1; see also Accenture Global Services Limited v. Fan zhi,
WIPO Case No. D2024-0285, and Arcelormittal (SA) v. Anonymous Anonymous, WIPO Case No.

DCO2021-0069.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not submitted any response and has failed to rebut the Complainant’s case or provide evidence of rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

In particular, the Panel notes the following:

- The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its

JAVERIANA trademark.

- Prior to any notice of the dispute, there is no evidence that the Respondent used, nor made demonstrable
preparations to use, the Domain Name in connection with a bona fide offering of goods or services.

Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2.

- There is no evidence that the Respondent has been commonly known by the Domain Name. Paragraph
4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

- The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain or to misleadingly divert consumers or tarnish the Complainant’s trademark. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

- The record does not support any other circumstances giving rise to rights or legitimate interests.

Rather, the Complainant has provided evidence that the Domain Name was used in connection with a fraudulent website purporting to represent the Complainant, including impersonation activity aimed at students. Panels have consistently found that the use of a domain name for illegal purposes, such as phishing or impersonation, can never confer rights or legitimate interest. See WIPO Overview 3.0, section 2.13.1.

Furthermore, the nature of the Domain Name, which incorporates the Complainant’s well-known trademark in its entirety, carries a clear risk of implied affiliation and is identical to the Complainant’s JAVERIANA trademark and can be perceived as a variation of the Complainant’s domain name <javeriana.edu.co>.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds that the Complainant’s JAVERIANA trademark is well known in Colombia and enjoys a significant degree of public recognition.

Several UDRP panels have concluded that registering a domain name with knowledge of a complainant’s rights and with the intent to divert Internet users can be evidence of bad faith. See Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

Given the notoriety of the JAVERIANA mark in Colombia, and the Complainant’s active use of the nearly identical domain name <javeriana.edu.co>, the Panel considers it highly implausible that the Respondent registered the Domain Name without knowledge of the Complainant’s trademark.

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The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith. As noted in WIPO Overview 3.0, section 3.3, “the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” This has been reaffirmed in recent cases, including QlikTech International AB v. Jonathan Liani, WIPO Case No. D2024-2173.

Moreover, the Complainant has provided credible evidence that the Domain Name was used in connection with fraudulent activity, specifically impersonation of the Complainant via WhatsApp messages designed to redirect students to a fake payment platform at the Domain Name. Panels have consistently found that use of a domain name for fraudulent purposes constitutes bad faith. See WIPO Overview 3.0, sections 3.1.4 and 3.4.

The Respondent has not provided any explanation or rebuttal in response to these serious allegations.

Having reviewed the record, the Panel concludes that the Respondent’s registration and use of the Domain

Name constitutes bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

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 <javeriana.com.co> be transferred to the Complainant.

/Ana María Pacón/
Ana María Pacón
Sole Panelist
Date: May 20, 2025