The Complainant is OLX B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Malik Muhammad Ali / OLX Dubai of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2015. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. The Respondent did not submit any response.
On November 13, 2015 (and subsequently), the Center received several communications from the Respondent.
On December 9, 2015, the Center notified the Parties of the Commencement of Panel Appointment Process.
The Center appointed Adam Samuel as the sole panelist in this matter on December 16, 2015. 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 operates online classified websites that enable users to buy and sell goods, solicit and offer services and search for jobs. It is based in the Netherlands. The Complainant owns trademark registrations in a number of different countries for OLX, including No. 3626901 in the United States of America, registered on May 26, 2009. It markets its products and services through numerous domain names including in the United Emirates, which it registered on March 19, 2007. The disputed domain name was registered on January 20, 2014. 5. Parties’ Contentions
In this section, there appear the parties’ contentions with which the Panel may or may not agree. A. Complainant
The disputed domain name incorporates the Complainant’s OLX trademark in its entirety, merely adding the geographically descriptive term “Dubai”. The addition of a geographic term or place name does not negate the confusing similarity between the dispute domain name and the Complainant’s trademark. The top-level domain does not affect the decision on this subject. There is a considerable risk that the trade public will mistakenly perceive the Respondent’s domain name either to be owned by the Complainant or as possessing some commercial relationship with the Complainant. This is particularly true because the Respondent is running a business from the disputed domain name which at first sight appears similar to the Complainant’s. The re-branding of Dubizzle, a leading free classified website in the Middle East which has been owned by the same group of companies since 2013, as OLX may add confusion as regards ownership of the disputed domain name.
The Respondent has not registered any trademarks or names corresponding to the disputed domain name. It has not been using OLX in any other way that would give them any legitimate rights in the name. If the Respondent had a legitimate interest in the disputed domain name, it could have easily forwarded evidence of it during the correspondence with the Complainant that took place after the Complainant sent the Respondent a cease and desist letter on September 22, 2015. The Respondent has never had a business relationship with the Complainant.
The fame of the Complainant’s trademark motivated the Respondent to register the dispute domain name. The Respondent is using it to operate an online commercial marketplace website which appears at first sight to resemble the Complainant’s business. The Complainant owns trademark registrations for the OLX mark covering the provision of an online marketplace. The Respondent has done nothing on his website to disclose his lack of any relationship to the Complainant.
The registration of the disputed domain name occurred a significant time after the Complainant’s trademarks were registered and the most of the Complainant’s domain names were launched.
In response to the Complainant’s cease and desist letter, the Respondent offered the disputed domain name for USD 408,719. The disputed domain name is connected to a website that is being used to run an online marketplace. This is misleadingly diverting to the Respondent’s website consumers seeking the Complainant’s websites for the Respondent’s commercial gain. The Respondent has failed to provide any explanation as to why he has been using the Complainant’s trademark in the disputed domain name. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. However, he did in correspondence prior to the expiry of the deadline for filing a Response communicate to the Center certain views on the Complaint. He claimed that the addition of the word “Dubai” to the disputed domain name rendered the disputed domain name wholly different from the Complainant’s trademark and that his business was totally different from the Complainant’s in that he was offering a catalogue of products and not classified advertisements. The Respondent is entitled to payment for the disputed domain name to pay for hosting, domain and development charges and the investment of his own time in developing his business’ goodwill in the market and collecting valuable customer data. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark, OLX, the geographic indicator, “Dubai”, and the generic Top Level Domain (“gTLD”), “.com”. Although the Complainant’s trademark is an acronym for “online-exchange”, this is not necessarily obvious from the initials concerned. The Complainant’s trademark is thus in this sense a made-up name. The addition of a place name to such a distinctive trademark does not remove the confusing similarity between the resulting domain name and the trademark concerned for purposes of the Policy. The trademark name remains the predominant element of the domain name. The addition of the gTLD, “.com”, is of no relevance here since it has no impact on the meaning or sense of either disputed domain name.
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not called “OLX Dubai” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In response to the cease and desist letter, the Respondent had an opportunity to explain why he registered the disputed domain name. He did not use that opportunity. The Complainant’s trademark, while not strictly speaking a made-up name, does not have an independent meaning. So, there is no obvious reason to register this domain name and use it to run a business other than to exploit the goodwill in the Complainant’s trademark in some way. The business run by the Respondent through the disputed domain name may be different from that of the Complainant’s. Nevertheless, they both pursue the notion of online exchange.
In the circumstances, it is impossible to know exactly why the Respondent registered the disputed domain name. In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register the disputed domain name: to disrupt the Complainant’s relationship with their customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. The first two options are suggested by the Respondent’s use of the disputed domain name as an online trading site. The third appears from the extraordinarily large sum of money that the Respondent has persistently sought from the Complainant in exchange for the transfer of the disputed domain name. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint. 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.
Adam Samuel
Sole Panelist
Date: December 17, 2015
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