The Complainant is OLX, Inc. - OLX S.A. of New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
The Respondent is SaribSoft International of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Cloud Group Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2012, 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.
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 August 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2012.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 20, 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, OLX Inc and OLX S.A. (hereinafter OLX), is a company incorporated under the laws of Delaware, United States. The OLX website hosts free user-generated classified advertisements for urban communities around the world and provides discussion forums sorted by various topics.
The OLX trademarks are registered in several countries including Argentina, United States and the European Union. Application n. 254718 for the trademark OLX in Pakistan was filed on August 19, 2008 and is actually pending.
The Complainant holds, among others, the following OLX trademarks:
(i) European Union reg. No. 004883741 OLX trademark registered on March 5, 2007 Classes 35 and 38.
(ii) US reg. No. 3295467 OLX trademark registered on September 18, 2007 Class 35.
The Complainant registered more than one hundred domain names containing and or corresponding to the OLX trademarks. Among them the following: (February 8, 1999), (March 2, 2006), (March 1, 2006), (July 30, 2008), (July 1, 2010) and (November 13, 2009).
The above OLX trademarks and domain names were all registered a few years before the registration date of the Domain Name i.e. March 19, 2012.
Complainant has registered more than 60 domain names in the ccTLD bearing the trademark OLX and they are all in use for websites with advertisements, the core business of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) Use of the Domain Name by the Respondent began long after the OLX mark became known among the related public, therefore, the Respondent should have been aware of the Complainant and its OLX trademark. The Respondent’s use of a domain name that incorporates OLX indirectly indicates that it knew of both the Complainant and the OLX trademarks at the time the Domain Name was registered.
2) The Domain Name is confusingly similar to the OLX trademarks because it incorporates the Complainant’s entire trademark and differs from the Complainant’s registered trademark only for the addition of the generic term “pak”. Users may be led to believe that the Respondent is the Pakistan branch of OLX.
3) The Respondent holds no OLX trademarks and is not affiliated with the Complainant. The Complainant, being the trademark holder, has never authorized, licensed or permitted the
Respondent to use its OLX trademark or register it as a domain name.
4) The use of the Domain Name by the Respondent does not constitute a bona fide offering of goods or services. The acts of the Respondent do not satisfy the requirements of bona fide use provided for in the Policy.
5) The Respondent has no rights or legitimate interests in the Domain Name.
6) The Respondent has never been known by the Domain Name.
7) The Respondent registered the Domain Name in bad faith because it knew of the Complainant and its OLX trademarks at the time of registering the Domain Name.
8) The Respondent is using the Domain Name in bad faith because is using it without authorization, whilst being aware of the Complainant’s trademark OLX. In this regard the Complainant points out that the OLX trademark has a strong presence and activity in the Respondent’s jurisdiction.
9) It is impossible to have registered a domain name containing the terms “pak” (for Pakistan) and “OLX” (an original coined term) and using it for the same purpose the Complainant is using it, without knowing the existence of OLX.
10) The Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. Indeed, the Respondent, on its website, is using the OLX logo and phrases such as “My OLX, My Classifieds”.
The Complainant requests that the Panel issue a decision that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the OLX trademark and has stated that the Domain Name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that OLX is the only distinctive part of the Domain Name and that the addition of the term “pak” to the OLX trademark does not avoid the confusing similarity between the Domain Name and the Complainant’s mark.
This Panel agrees with the Complainant’s contention that OLX is the only distinctive part. Moreover, it is now well established by many previous UDRP decisions that the addition of a geographic term (in this case the term “pak” that presumably stands for Pakistan) to a trademark is generally not sufficient to avoid confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish rights or legitimate interests in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “OLX” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the Domain Name. The Respondent does not appear to make any legitimate use of the Domain Name for non commercial activities. In addition, it appears that the Respondent, when registering the Domain Name, provided an incorrect postal address, a further element supporting inference of a lack of legitimate interest. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
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; or
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 the holder’s 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 the respondent’s website or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the Complainant’s trademark registrations and the use and promotion on the Internet of OLX products and services on the one hand, and on the other, the Respondent’s use of the Domain Name, the non-contested claims that: a) the Respondent was targeting the Complainant and knew of the Complainant’s OLX trademarks when registering the Domain Name; b) the Respondent is trying to present itself as an “OLX –Pakistan branch”; c) the Respondent is using the Domain Name to offer the same services offered by the Complainant; and finally d) the Respondent places on its website the OLX logo and sentences such as “My OLX, My Classifieds”; in the absence of contrary evidence, the Panel finds that:
1) the Respondent knew of the Complainant’s trademarks, products and services and intentionally intended to create an association with the Complainant and its business.
2) the Respondent, as shown by the contents displayed on its website at the Domain Name, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the Domain Name;
3) the above described use of the Domain Name, i.e., to divert Internet traffic to the Respondent’s website supports an inference of bad faith registration and use of the Domain Name;
4) the Respondent provided incorrect and/or not updated information when registering the Domain Name. Namely, according to the DHL Company, the Respondent indicated an old postal address, i.e. an address from which it had moved several years earlier.
Accordingly, the Panel finds on the basis of the evidence presented that the Respondent has registered and is using the Domain Name in bad faith, Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: October 1, 2012
Full & Egal Universal Law Academy