The Complainants are OLX Inc. and OLX S.A. of New York, New York, United States of America and Buenos Aires, Argentina (the “Complainant”), represented by Allende & Brea Law Firm, Argentina.
The Respondent is Privacy Protect / Generic Domains of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2012, 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 the Complainant on July 23, 2012 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 July 23, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 4, 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 Complainant is an Internet advertising company with offices in both New York and Buenos Aires. The Complainant provides classified advertising and online discussion forums for urban communities around the world, and holds numerous trademarks for MUNDOANUNCIO in connection with these services. The MUNDOANUNCIO mark has been registered since 2006.
The Complainant maintains a large number of domain name registrations which it utilizes in connection with its business activities, including and over 30 ccTLD domain names containing the MUNDOANNUNCIO mark. The domain name was created in 2003 and acquired by the Complainant in 2005.
The disputed domain name was created on May 1, 2007, and is being used in connection with pay-per-click advertising. The Complainant’s evidence demonstrates that many of the links displayed on the page direct Internet visitors to the Complainant’s competitors in the online classifieds market. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is nearly identical to its MUNDOANUNCIO mark because the domain name contains the entirety of its registered mark with the addition of a dash between the two component words.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it has not been licensed to use the Complainant’s marks in any way. The site is being monetized by the Respondent by capitalizing on misdirected Internet traffic intended for the Complainant’s website. The Complainant states that its trademark is a coined term and therefore that the advertisements shown on the Respondent’s website are not connected with any dictionary meaning of the word. The Complainant further notes its far-reaching use of the term in international online commerce.
Concerning the third requirement of the Policy the Complainant notes that its MUNDOANUNCIO mark was registered, and in use in online commerce, prior to the Respondent’s registration of the disputed domain name. The Complainant states that its website at “www.” receives a high volume of traffic, and that the Respondent likely targeted the Complainant’s mark for that reason. The Complainant further argues that its trademark consists of a coined term, and that for all these reasons the Respondent was clearly aware of the Complainant at the time it selected the disputed domain name. The Complainant alleges that the Respondent registered the disputed domain name with the intent to mislead Internet users for commercial gain pursuant to paragraph 4(b)(iv) of the Policy, through the use of pay-per-click ads. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said trademark.
By virtue of its numerous trademark registrations for MUNDOANUNCIO, the Panel is satisfied that the Complainant has demonstrated its rights in the mark for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin,WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The textual string of the disputed domain name, “mundo-anuncio” represents the entirety of the Complainant’s trademark with a dash introduced between the two component words, “mundo” and “anuncio”. The addition of the dash does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity. See Guinness UDV North America, Inc. v. UKJENT,WIPO Case No. D2001-0684.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MUNDOANUNCIO trademark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1; See also Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its MUNDOANUNCIO mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, the website is used to host a pay-per-click landing page, from which the Respondent presumably generates revenue, that contains links to the Complainant’s competitors, including MultiMuros, NuevosA, Repuestos Nuevos and ArgenP. Thus, the Respondent clearly is not making any noncommercial or fair use of the domain name. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has provided evidence that its MUNDOANUNCIO trademark was registered well prior to the Respondent’s registration of the disputed domain name. The disputed domain name contains the entirety of the Complainant’s MUNDOANUNCIO trademark, and the Respondent has used the disputed domain name in connection with pay-per-click links connected to the same industry in which the Complainant operates. Thus, it is clear to the Panel that the Respondent was aware of the Complainant and its mark when it selected the disputed domain name.
By registering the disputed domain name and using it to host a pay-per-click landing page to garner referral revenue, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987 and Luigi Lavazza S.p.A. v. Satoshi Shimoshita,WIPO Case No. D2011-1299.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also 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 domain name be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: September 18, 2012
Full & Egal Universal Law Academy