The Complainant is OLX B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Arvand Sabetian, Arvixe, LLC of Calabasas, California, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 proceeding commenced on April 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2016.
The Center appointed David Taylor as the sole panelist in this matter on May 26, 2016. 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 a company based in the Netherlands founded in 2006. It operates online classified websites that enable users to buy and sell goods, solicit and offer services and search for jobs. The Complainant has several offices around the world including in Buenos Aires, Cape Town, Delhi, São Paulo, Rio de Janeiro, Lisbon and New York and subsidiaries in Argentina, Pakistan and China.
The Complainant owns trademark registrations for OLX in many jurisdictions around the world, including, for instance, the Dominican Republic, Mauritius, Rwanda, Germany, Pakistan, and the European Union. The Complainant also has registered trademark rights in the United States, including United States trademark registration numbers 3,626,901 (registered on May 26, 2009, first used in commerce in 2006) and 3,295,467 (registered on September 18, 2007, first used in commerce in 2006) in connection with online advertising services.
The Complainant (or its affiliated company) has registered over 1,000 domain names incorporating the OLX trademark, for instance, , and .
The Domain Name was registered on December 1, 2015. At the time of filing, it was resolving to an online classified advertisement website containing ad listings for a variety of goods and services, including "Cars", "Electronic & Appliances" and "Jobs", amongst others. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant's OLX trademark. It argues that the dominant part of the Domain Name is the term "olx" which is identical to its trademark OLX and that the generic Top-Level Domain ("gLTD") ".com" is not relevant for the purpose of assessing identity or confusing similarity. The Complainant further asserts that the addition of the geographical term "Rio" (short for "Rio de Janeiro") to the Complainant's OLX trademark only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant's trademark given that the Complainant is the largest online marketplace platform in Brazil and also has an office in Rio de Janeiro.
The Complainant further asserts that the Respondent does not have rights or legitimate interests in the Domain Name. It states that the Respondent is not sponsored by or affiliated with the Complainant in any way nor has it given permission to use the Complainant's trademarks in any manner, including in a domain name. The Complainant also contends that the Respondent is not commonly known by the Domain Name. The Complainant further asserts that the Respondent is using the Domain Name to operate an online commercial marketplace website, which at first glance appears rather similar to the Complainant's business.
It argues that the Respondent's website was purposely designed to replicate the Complainant's website, as a means to deceive Internet users into believing that the Domain Name and its website are associated with Complainant. The Complainant argues that the Respondent's use of the Domain Name to imply that he is affiliated with the Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.
The Complainant contends that the Domain Name was registered and is being used in bad faith. It argues that its OLX trademark is well-known in respect of online classified services and has acquired substantial and widespread reputation. The Complainant argues that it has used the trademark OLX since 2006, well before the Respondent's registration of the Domain Name on December 1, 2015. The Complainant further argues that the Respondent's choice of the term "olx" with the geographical term "Rio", which has a strong connection to the Complainant, shows that the Respondent had knowledge of and was familiar with the Complainant's brand and business at the time of registration. In addition, the Complainant argues that the Respondent's use of the Domain Name for an online commercial marketplace that is similar to the Complainant's business and features a similar layout to the Complainant's website shows that the Respondent must have been aware of the Complainant. In addition, the Complainant asserts that the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Finally, the Complainant contends that the Respondent has ignored the Complainant's several attempts to resolve this dispute and that the Respondent's failure to respond to the Complainant's cease-and-desist letter (and further communications) may be considered as additional evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has 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.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant's contentions. The Respondent's failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trademark rights. The Complainant has provided evidence that it has registered trademark rights in OLX in connection with online advertising services. The Panel is therefore satisfied that the Complainant has established relevant trademark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Domain Name incorporates the Complainant's OLX trademark in its entirety with the addition of the geographical term "Rio", which is short for the city of Rio de Janeiro in Brazil. Previous UDRP panels have held that "when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy". See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The addition of the geographical term "Rio" does not diminish the confusing similarity with the Complainant's trademark but rather reinforces it as the Complainant has a strong connection with Rio de Janeiro, Brazil, where it has offices and operates its business.
The gLTD ".com" is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's OLX trademark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 2.0
The Complainant has asserted that the Respondent is not sponsored by nor affiliated in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its OLX trademarks. There is no evidence either that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
The Respondent's use of the Domain Name which identically reproduces the Complainant's trademark for a website offering identical or similar services to those for which the Complainant's trademark has been registered, mainly online advertising classified services, cannot constitute a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. See, for instance, America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (holding that "it would be unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
Furthermore, the Domain Name is used in such a way that demonstrates that the Respondent is seeking to take advantage of the Complainant's rights and therefore such use cannot be considered legitimate non-commercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy.
The Complainant has therefore made a prima facie case of the Respondent's lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant's trademark rights in OLX in connection with online advertising services significantly predate the registration date of the Domain Name. As described above, the Complainant's trademark rights date back to 2006 whereas the Domain Name was registered in 2015. Furthermore, the Domain Name consists of the Complainant's OLX trademark in conjunction with the geographical term "Rio" (short for "Rio de Janeiro") which, as described above, is strongly related to the Complainant. Given this, together with the Respondent's subsequent use of the Domain Name, as described below, the Panel is of the view that the Respondent registered the Domain Name with prior knowledge of the Complainant's trademark rights with the intention of taking advantage of such rights. As such, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Panel further finds that the Respondent's use of the Domain Name also constitutes bad faith. The Domain Name, which is confusingly similar to the Complainant's trademark, is being used by the Respondent to resolve to a website also prominently displaying the Complainant's trademark and offering identical or similar services to those for which the Complainant's trademarks have been registered. Furthermore, the associated website has the same "look and feel" as that of the Complainant's official website. The Panel therefore finds that by using the Domain Name 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 trademark as to the source, sponsorship, affiliation, or endorsement of the its website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Panel draws an adverse inference from the Respondent's failure to respond to the Complainant's cease-and-desist letter (including several follow-up communications) as well as from the Respondent's unwillingness to take part in the present proceedings.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith.
The Complainant has therefore 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.
David Taylor
Sole Panelist
Date: June 9, 2016
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