The Complainants are OLX Inc. and OLX S.A. of New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
The Respondent is Aamir Nehal, Aamir Nehal of Islamabad, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 21, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. The Respondent did not submit any formal response, but transmitted to the Center an email communication on January 9, 2012. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on January 24, 2012. A further email communication was sent by the Respondent to the Center on January 29, 2012.
The Center appointed Francine Tan as the sole panelist in this matter on January 27, 2012. 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 Complainants are incorporated under the laws of Delaware, United States of America, with subsidiaries in Argentina and China. The Complainants’ website hosts free user-generated classified advertisements for urban communities around the world and provides discussion forums sorted by various topics.
The Complainants state that their OLX trademarks (i.e. in plain word and stylized forms) have been applied for in India, Pakistan, China, and Brazil, and registered in a number of countries including Argentina, Australia, United States of America, Philippines and European Union. The Complainants also own many gTLDs and ccTLDs containing the OLX trademark, which were registered before the disputed domain name was registered. These domain names are said to be all in use for websites with classified advertisements, i.e. the Complainants’ core business. The domain name was registered in the year 1999.
The OLX trademark was allegedly coined by the Complainants’ founders to identify an “Online eXChange market”, i.e. the provision of free online classified advertisements. Between December 1, 2008 and February 1, 2009, the total number of visitors of the Complainants’ website at “www.” was 46,989,290, with 276,270,057 page views. On August 5, 2011, the said webpage attained a monthly page view number of 1,006,316,408 visitors.
The disputed domain name was created on October 14, 2011. 5. Parties’ Contentions A. Complainants
The bases for the Complaint are that:
(1) the disputed domain name is confusingly similar to the Complainants’ OLX trademark;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name was registered and is being used in bad faith.
On the first ground, the Complainants assert that the OLX mark is incorporated in its entirety in the disputed domain name and differs only in the letters “ad” which is generic and a common term describing the nature of the Complainants’ main business. The addition of “ad” to the OLX trademark in the disputed domain name does not eliminate the confusion between the Complainants’ mark and the disputed domain name. Further, the word “olx” is the most prominent element in the disputed domain name and the public may be led to think that the disputed domain name is somehow connected with the Complainants which it is not.
On the second ground, the Complainants submit that they have not authorized, licensed or permitted the Respondent to use the OLX mark in the disputed domain name, and there is no evidence to show that the Respondent has any rights in any trademark or service mark which is identical, similar or related to the disputed domain name. The Respondent’s use of the disputed domain name in relation to free online classified advertisements which is the primary business of the Complainants does not amount to showing the Respondent has rights or legitimate interests in respect of the disputed domain name.
As regards the third ground for the Complaint, the Complainants point out that the disputed domain name was registered after the Complainants’ website at “www.” was in use and after the Complainants’ OLX marks were registered. It is not possible that the Respondent did not know of the Complainants’ OLX trademarks and domain names when he registered the disputed domain name in view of the high volume of Internet traffic that the Complainants were attracting to their website, and the fact that “ad” reflects the Complainant’s main business activity (i.e. advertising), and OLX is an original coined term. The Respondent must therefore have been seeking to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ mark. B. Respondent
The Respondent did not file a response to the Complainants’ contentions but transmitted to the Center an email communication on January 9, 2012 in which he stated as follows:
“Hello
I Am a Hosting provider.
this domain : is not my domain, it is my client's domain.
I Have Read what you have told me.
i am really sorry if i hurt anyone due to my any mistake.
i have redirected/closed
please tell me what you want more from me please.
i belong to a noble family, i dont want to be involved in any bad activity, so honestly help me to solve the issue
please.if you want me to just close the site, i have redirected it to other website.
if you want me to sale it to you, then please tell me what you offer for this domain.
what you want please clear me in simple words.
Thanks.
Regard Aamir Nehal.”
A further email communication of January 29, 2012 was transmitted to the Center in which the Respondent stated:
“I have already told you that i dont want to keep this domains. tell me how i can give it to you?
i dont want to be involve in any case you can see that i have already redirected this domain to
then why are you teasing me.
i am agree to give this domain to you, but please for GOD sake tell me how i give it to you.
simple tell me the method.
thanks.” 6. Discussion and Findings A. Identical or Confusingly Similar
There is no doubt that the Complainants have trademark rights in OLX for the purposes of paragraph 4(a) of the Policy. It is well established by numerous previous UDRP cases that the “.com” extension, being a necessary function of the domain name, may be disregarded for the purpose of comparison.
The Panel is of the view that the disputed domain name is confusingly similar to the Complainants’ OLX mark as it is incorporated in its entirety. The letters “ad” in the disputed domain name do not serve, in the context of the case and the manner of use in relation to the Respondent’s website, to distinguish itself from the Complainants’ OLX mark as “ad” is a common abbreviated form for “advertisement” or “advertising”. On the contrary, its addition in the disputed domain name serves to reinforce the impression that would be given to Internet users, that the Respondent’s website is related to advertising and that it is associated with or authorized or endorsed by the Complainants.
The Panel concludes that the disputed domain name is confusingly similar to the Complainants' OLX mark. The first element of paragraph 4(a) of the Policy has therefore been met. B. Rights or Legitimate Interests
The Panel is of the view that the circumstances surrounding this case do support a finding that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants contend that they did not authorize, license or permit the Respondent to use the OLX mark in the disputed domain name. The Complainants are also not associated or affiliated with the Respondent. On the face of the evidence submitted, it does appear that the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name because the Respondent’s website was used in relation to classified advertisements, the intention of which appears to have been to misleadingly attract customers to the Respondent's website for his commercial gain.
The Respondent also did not, in his two email communications to the Center, refute the Complainants’ contentions or seek to prove to have rights or legitimate interests in respect of the disputed domain name. Considering the circumstances in their totality therefore, the Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has therefore been met. C. Registered and Used in Bad Faith
The Panel is of the view that paragraph 4(b)(iv) of the Policy reflects what the Respondent has sought to do in this case, which constitutes registration and use in bad faith:
“(iv) by using the 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The Respondent has registered and used the disputed domain name which incorporates the Complainants’ OLX trademark, with the addition of a generic and commonly-used abbreviated term for the words “advertisement” and “advertising”, namely the letters “ad”. The disputed domain name was used to resolve to a website where online classified advertisements were posted. The Respondent also did not assert rights or legitimate interests in the disputed domain name in both email communications to the Center. Potential customers of the Complainants who are directed to the Respondent’s website would quite naturally mistake that the Respondent’s website to which the disputed domain name resolves is affiliated to the Complainants, or that the services found on the Respondent’s website are offered or endorsed by the Complainants.
In view of the apparent high volume of Internet traffic which the Complainants’ website attracts, the Panel finds it inconceivable that the Respondent could have registered the disputed domain name without the knowledge of the Complainants and or their OLX trademark.
The Panel concludes that the disputed domain name was registered and used in bad faith. The third element of paragraph 4(a) of the Policy has therefore been met. 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 be transferred to the Complainants.
Francine Tan
Sole Panelist
Dated: February 14, 2012
Full & Egal Universal Law Academy