The Complainant is OLX, Inc. of New York, New York, United States of America (the “USA”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, Fundacion Private Whois of Panama, Panama. The Respondent appears to be self-represented (see discussion below as to identity of the Respondent). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2014, 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 October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. On October 3 and 9, 2014, the Center received by email three informal communications referring to the Complaint. These were from one of the email accounts to which the Complaint had been notified and were written in the name of a “J. Alfonso”. It appears from the content of those emails that Mr. Alfonso has an interest in the Disputed Domain Name and is connected to the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 28, 2014. 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 relevant facts are straightforward and can be summarized as follows:
The Complainant is a company incorporated in the USA. The Complainant operates online classified advertising sites. It has numerous such sites targeted at different markets and countries and operating in different languages. Its services are available in over 100 countries in some 42 different languages.
The filed evidence (which was not challenged by the Respondent) establishes that the Complainant maintains offices in cities in many countries, for example, Buenos Aires, Sao Paulo, Delhi, Lisbon, and New York, and that its websites receive more than 100 million monthly unique users, generating over 1.8 billion monthly page views, or 60 million page views per day.
The Complainant is the holder of a number of registered trademarks which are for the letters OLX, these trademarks being generally in class 35. One example is USA trade mark No. 77603813 applied for on the October 23, 2008. Another is Community Trade Mark No. 010881456 registered on the September 25, 2012. The Complainant also hold a very large number of domain names which are or include the letters “olx” – it has over 200 such names in generic or country level top level domain spaces. One such domain name is which the Complainant uses in relation to a website in Portuguese targeted at the Portuguese market.
The name “olx” derives from an acronym for the words “On Line eXchange”. Those letters do not form a meaningful word and have no other independent meaning so far as the Panel is aware. In common with many three letter acronyms there may be other bodies or organisations whose name could be represented in this manner but none has been relied on by the Respondent and the Panel accordingly does not consider this possibility further.
The Disputed Domain Name was registered on August 6, 2014. It has been used in relation to a web site with text in Portuguese which appears to contain advertising material and sponsored links. That web page is visually very similar to the Complainant’s web pages and includes a logo which is similar to that of the Complainant. The Respondent has no connection with the Complainant and has not been authorised or licensed by the Complainant in any respect.
A cease and desist letter from the Complainant’s representatives sent on August 21, 2014 produced an exchange of correspondence with an individual named “Mr. Alfonso” which concluded with Mr. Alfonso indicating that the Complainant should make its best offer above USD 1500 to purchase the Disputed Domain Name or he would sell the Disputed Domain Name to another company. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Disputed Domain Name incorporates and is similar to its trade mark OLXin which it clearly has rights.
The Respondent has no rights or legitimate interests in the term “olx”. There is no other meaning associated with that term other than in relation to the Complainant. The Respondent registered the Disputed Domain Name in bad faith to profit from the reputation of the Complainant.
It is well established that the addition of generic or descriptive terms such as here “pt” (which is the standard country code for Portugal) to a trademark used in a domain name is insufficient in itself to negate the confusing similarity between a trademark and a domain name.
The Respondent is not a licensee of the Complainant nor is it authorized by the Complainant to use the trademark OLX in the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith. The registered trademark OLX has been used extensively and exclusively by the Complainant since 2006. The Respondent is taking unfair advantage of that reputation to mislead consumers and attract then to a website which offers services similar to those provided by the Complainant. That website further misleads consumers in that its look and feel is very similar to that of the Complainant’s websites and consumers would believe it to be operated by the Complainant.
By using a domain name incorporating a well-known trademark, it is likely that Internet users assume that some kind of legal or economic affiliation exists between Respondent and Complainant. The Respondent was well aware of the Complainant’s trademark at the time of registration and use of the Domain Name and considering the obvious similarity of the Disputed Domain Name with the trademark OLX, the Respondent, by using the Disputed Domain Name, indisputably intended to create confusion with the Complainant and to take advantage of such confusion in order to attract, for commercial gain, Internet users to its web site. Such use amounts to bad faith.
The Complainant also relies upon Mr. Alfonso’s response to its cease and desist letter (see above) as further evidence of bad faith. B. Respondent
The Respondent has not submitted a Response.
As indicated previously, three short emails from Mr. Alfonso (see discussion below as to the identity of the Respondent) were received in relation to this case. It is convenient simply to set them out in full:
“I do not have nothing to say. I have buy a domain, and have pay for it. I am not illegal and I am not doing nothing [sic] illegal.”
“I am not doing the same as my domain have been payd [sic] and is my property. I am not going against any rull [sic].”
“And please dono [sic] put code that does not exist in my webpage. You can be acuses [sic] by falsificate [sic] documents”. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Domain Names that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Preliminary Matter: Identity of Respondent
As a preliminary issue the Panel notes this is a case where the named Respondent has not submitted a Response although substantive correspondence has been received from an individual called “J. Alfonso”. It seems likely given the content of those communications (see above), and Mr. Alfonso’s response to the earlier cease and desist letter (see above), that Mr. Alfonso is has an interest in the Disputed Domain Name and is connected to the Respondent. Accordingly this decision is directed to the Respondent but, in the absence of any Response from the Respondent, the Panel has determined that it is appropriate to take into account the communications from Mr. Alfonso in reaching its decision. For the avoidance of doubt, the Panel wishes to make clear that even if Mr. Alfonso were not to be connected to the Respondent (and his communications disregarded), the outcome of this proceeding would be the same. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark OLX. It is clear that the Complainant is the holder of numerous registrations for trademarks in respect of the conjoined letters OLX throughout the world. The filed evidence also establishes that since the OLX business was started in 2006 it has grown to be substantial and is carried on internationally under the name “OLX”.
The Disputed Domain Name is confusingly similar to the OLX trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the inclusion of the suffix “-pt”. “pt” is not a word which has any common meaning in English but is the internationally agreed standard designation for the country Portugal.
Accordingly the Panel finds the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. C. Rights or Legitimate Interests
OLX is in substance the Complainant’s name and brand and is a term which has no other meaning so far as the Panel is aware save in relation to the Complainant and those authorised by the Complainant to use it.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the OLXtrade mark. The Complainant has prior rights in the OLX trade mark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Nothing in the case file or in the public record suggests otherwise. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. D. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the OLXtrade mark, and the evidence as to the extent of the Complainant’s business, and the confusingly similar nature of the Disputed Domain Name to the OLXtrade mark, and the lack of any proper explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or the OLX trade mark. The website operated by the Respondent at the Disputed Domain Name comprises a website which in large measure copies the Complainant’s website design and is in Portuguese and presumably targeted at the Portuguese speaking market. The combination of the Complainant’s trademark OLX with a suffix denoting Portugal for use in this manner cannot have been coincidental and was obviously deliberately chosen. The Panel accepts the Complainant’s submissions that this was clearly part of a deliberate plan to confuse consumers and attract them to the Respondent’s website by misuse of the Complainant’s trademark and reputation.
Further the Panel notes that Mr. Alfonso’s communications do not seek to suggest otherwise. So far as the Respondent’s case as set out in these communications can be understood it simply seems to consist of Mr. Alfonso asserting that he had registered and paid for the Disputed Domain Name and is not doing anything illegal and hence the Respondent is free to do what it likes with it. That of course is not correct, as otherwise a very few UDRP case would ever succeed. Mr. Alfonso also seems to be suggesting that the Respondent is not doing the same as the Complainant. Whether what it is doing is identical, is not entirely clear to the Panel but the filed evidence establishes it is operating a website offering services and links in a very similar field to the Complainant and is doing so using a website which has a similar “look and feel” to those of the Complainant. Without a much fuller explanation from the Respondent, properly supported by appropriate evidence, the Panel does not accept that such differences as may exist between what the Respondent is doing and the Complainant’s business, are sufficient to negate a finding of bad faith based on the evidence currently before the Panel.
The Panel is unable to consider further the other points Mr. Alfonso makes in his emails as without further explanation it does not understand them.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled in respect of the Disputed Domain Name. 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 Complainant.
Nick J. Gardner
Sole Panelist
Date: November 11, 2014
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