Complainant is OLX B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Javed Iqbal of Islamabad, Pakistan. 2. The Domain Names and Registrar
The disputed domain names
are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 25, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed further amended Complaints on January 30, 2018 and February 1, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint and 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 28, 2018. 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
Complainant, founded in 2006 and based in Hoofddorp, the Netherlands, is a leading online marketplace. Complainant operates a free online classified platform, currently present in over 40 countries, including Pakistan. Complainant promotes its services through its primary website at . Complainant’s online service is available in 50 languages. Complainant’s online marketplace is one of the largest in Pakistan, India, Brazil, and several other countries. Complainant has offices in Buenos Aires, Cape Town, Delhi, Sao Paulo, Rio de Janeiro, Lisbon and New York, and operates subsidiaries in Argentina, Pakistan and China.
Complainant operates online classifieds websites that enable users to buy and sell goods, including vehicles, real estate, tickets, and electronics; solicit and offer services, such as babysitting, event services, and repairs; design ads to post on Complainant’s website; display ads on profiles across social networking sites, such as Facebook; and search for jobs across numerous locations and industries. Together with its affiliated company OLX Inc., Complainant has registered numerous domain names incorporating the OLX trademark.
Complainant owns, inter alia, the following registrations for the OLX trademark:
JURISDICTION
TRADEMARK
REG.
No.
REG. DATE
FILING DATE
CLASS
FIRST USE IN COMMERCE
United States
OLX
3295467
September 18, 2007
February 3, 2006
35
January 2006
United States
OLX
3626901
May 26, 2009
October 30, 2008
35
February 2006
Pakistan
OLX (logo)
354699
February 7, 2014
February 7, 2014
36
N.A.
Brazil
OLX (mixed mark)
829901299
September 8, 2010
May 28, 2008
35
N.A.
Complainant also has registered numerous domain names incorporating the OLX mark.
The disputed domain names were registered on February 11, 2017.
Presently, the website at the disputed domain name is inactive, since it returns a legend stating, “The service is unavailable.” The disputed domain names , , , and are also inactive; an attempt to connect a browser to them brings no result. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to Complainant’s OLX mark. The term “olx” is short for “online exchange”. Respondent has added the descriptive term “zameen” to Complainant’s OLX trademark, thereby making the domain names confusingly similar to Complainant’s trademark. “zameen” – is a noun in Urdu, the official language of Pakistan, where Complainant maintains a large market share in land/property sales and rental classified ads market. “zameen” translates to “land”, “earth”, “floor” or similar. Further, Z is the name of Complainant’s competitor in online property ads market in Pakistan.
Prior panels have found that the addition of descriptive words such as “ad”, “ads”, or “repair” to the OLX trademark does not distinguish a disputed domain name from Complainant’s famous mark, and that such domain names are confusingly similar to the OLX trademark. The addition of a hyphen also does not diminish the confusing similarity between the disputed domain names and Complainant’s trademarks. Respondent’s use of the disputed domain name contributes to the confusion. Respondent is using this disputed domain name to host an online property classified services website in Pakistan that aims to copy Complainant’s business. This suggests that Respondent intended this disputed domain name to be confusingly similar to Complainant’s trademark, presumably as a means of attracting users. Although the content is usually disregarded when assessing confusing similarity, “in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at section 1.15 (“WIPO Overview 3.0”)).
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in disputed domain names. Further, Respondent is not commonly known by the disputed domain names. The pertinent WhoIs information identifies the Registrant as “Javed Iqbal”.
Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain names. On the website , Respondent is hosting online property listings for the Pakistan market, which directly compete with Complainant’s own offerings (see Annex 4 to the Complaint). Past panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services. Thus, Respondent should be held to possess no rights or legitimate interests in the disputed domain name .
Further, Respondent is using the disputed domain names , , , and to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with Complainant’s business. For instance, the websites at these disputed domain names feature multiple third party links for “Motorbikes for Sale”. Further, Respondent’s websites also feature links that directly references Complainant and its business, for example “Olx Cars” and “OLX com”. Presumably, Respondent receives pay-per-click fees from the linked websites. As such, Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy paragraph 4(c)(iii).
The disputed domain names were registered and are being used in bad faith. The OLX trademark is
well-known in respect of online classified services provided by Complainant, with a substantial and widespread reputation. Complainant has marketed its services using this trademark since 2006, well before Respondent’s registrations of the disputed domain names on February 11, 2017, which in turn were made significantly after Complainant’s registrations of its domain names on February 8, 1999 and on March 6, 2007 respectively.
By registering the disputed domain names that incorporate Complainant’s famous OLX trademark in its entirety, and combining it with “zameen”, the Pakistani term related to Complainant’s business, Respondent has created domain names that are confusingly similar to Complainant’s trademark. Furthermore, Respondent has combined Complainant’s OLX trademark and the name of its competitor Z and created domain names that contain the names of the two leading companies of online property classified services market in Pakistan, to host an online property listings website, which directly competes with Complainant’s business. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. It is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the disputed domain name were registered. See Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
OLX is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products, … its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No., D2000-0226. Further, where the disputed domain names incorporate Complainant’s famous OLX trademark in its entirety while adding the Pakistani term “zameen” which is related to Complainant’s business, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No., D2007-1415.
The presence of a third party, pay-per-click links at the disputed domain names’ websites is evidence of bad faith registration and use. The websites at the disputed domain names , , , , and are parked pages featuring numerous pay-per-click links. A parked page may also appear at the website of a domain registered with GoDaddy if the registrant has instead expressly elected to participate in GoDaddy’s “CashParking” service, which allows the registrant to monetize its parked domain name by participating in the aforementioned domain monetization system.
Based on the above, one of two scenarios must follow: (i) Respondent registered the disputed domain names and thereafter took no further action to make use of the domain names; as such, they are not being actively used as websites, or (ii) Respondent registered the disputed domain names and voluntarily, proactively elected to participate in GoDaddy’s “CashParking” service, thus consenting to and pursuing monetization of Respondent’s parked pages. As such, the pay-per-click links found at the disputed domain names would be the result of, at minimum, Respondent’s inactive, non-use of the disputed domain names, or at worst, a concerted effort to participate in and facilitate the monetization of the disputed domain names by parking them and featuring third-party links. Regardless of which scenario, past Panels have established that a registrant will “be deemed responsible for content appearing on a website at its domain name even if [the registrant] does not exercise direct control over such content.” Thus, the presence of pay-per-click links at the disputed domain names’ websites, either through non-action or proactive participation in a domain monetization system, must be considered bad faith registration and use.
Respondent’s use of the disputed domain name constitutes a disruption of
Complainant’s business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii) because the disputed domain name is confusingly similar to Complainant’s trademarks and the website at this disputed domain name offers online property listings in Pakistan, which competes with and disrupts
Complainant’s business.
Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use.
Complainant’s classified advertisement website under the OLX brand is attracting a high number of visitors, especially in Pakistan; the “www..pk” website has a rank of 12 on the Alexa Traffic Rank in Pakistan, and 2,198 worldwide, clearly showing a very high level of popularity in Pakistan. Thereby, it is obvious that Respondent is targeting the fame and popularity of this website in order to direct traffic to its own commercial website. By using Complainant’s trademark, Respondent exploits its goodwill and fame, which may result in dilution and other damage.
The totality of the circumstances and facts dictate that Respondent must be considered as possessing actual knowledge of Complainant’s brand, business, and registered trademark at the point of the registration and thereafter. Indeed, OLX is a well-known trademark in all of its markets. There is no connection between Respondent and Complainant; nevertheless there is no disclaimer on the disputed domain name’ websites explaining the non-existent relationship. By using the disputed domain names for commercial purposes, Respondent is not making a legitimate or fair use, but is misleadingly diverting consumers for commercial gain.
In sum, Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of said websites, as stated in Policy, paragraph 4(b)(iv). Consequently, Respondent should be considered as having registered and used the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel notes that Complainant owns trademark registrations for the OLX mark in various jurisdictions. See Section 4 above. Thus, Complainant has shown that it owns trademark rights in such mark for purposes of Policy paragraph 4(a)(i).
The Panel also notes that each of the disputed domain names incorporates the OLX mark in its entirety, preceded or followed by the Urdu term “zameen”, with or without a hyphen. It appears that the term “zameen” means, inter alia, “earth” 1 or “land” in English, i.e., two common and descriptive terms. It is well established that the addition in a domain name of such kind of words and punctuation signs generally is inapt to distinguish the domain name from the mark it incorporates. See WIPO Overview 3.0 (Section 1.8: “Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
For these reasons, the Panel finds that the disputed domain names are confusingly similar to Complainant’s OLX mark. B. Rights or Legitimate Interests
Complainant denies that Respondent may have any rights or legitimate interests in the disputed domain names. In particular, Complainant has shown that Respondent is using the website at the disputed domain name , to host online listings of real estate agents and builders for the Pakistan market, in direct competition with Complainant’s own offerings on its “www.” website.
Complainant has also shown that Respondent is using the disputed domain names , , , , and to display links presumably generating pay-per-click income for Respondent.
In the Panel’s opinion, using in a domain name your competitor’s trademark without its authorization to offer competing goods or services, or to generate income via per-per-clicks, is neither a use in connection with a bona fide offering under Policy, paragraph 4(c)(i), nor a fair or legitimate noncommercial use pursuant to Policy, paragraph 4(c)(iii). In addition, according to the pertinent WhoIs database, the registrant for each of the disputed domain names is “Javed Iqbal”, which means that the circumstance of Policy, paragraph 4(c)(ii) also does not apply and there is no evidence that Respondent is known, commonly or otherwise, by any of the disputed domain names pursuant to Policy, paragraph 4(c)(ii). In sum, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in respect of any of the disputed domain names.
It was then up to Respondent to come forward with allegations, arguments or evidence that it may have at least some right or legitimate interest for having registered the disputed domain names. Since Respondent failed to do so, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names. The second requirement of the Policy is thus met. C. Registered and Used in Bad Faith
The Panel notes that the OLX trademark was registered over a decade before the registration of the disputed domain names. See Section 4 above.
In addition, the Panel agrees with previous UDRP panels that the OLX mark is well-known. See OLX, Inc. v. Berry Mhlongo,WIPO Case No. D2014-1657 (“In July and August 2014, the Complainant’s business was very well established and trading under the OLX trademark in numerous countries across the world.”). See also OLX, B.V. v. Glenn Monfort, Cyberthread Solutions Inc.,WIPO Case No. D2015-1899 (“Respondent is using the fame of Complainant’s trademarks to improperly increase traffic to his websites for Respondent’s own commercial gain.”) See also OLX, Inc. v. J D Mason Singh,WIPO Case No. D2014-1037 (“The Panel recalls that the trademark OLX is a well-known trademark and was used and registered before the disputed domain name was registered.”)
Moreover, each of the disputed domain names consist of a combination of the OLX mark with “zameen”, an Urdu term meaning “earth” or “land”, in the sense of real estate or property, as used in “www.z”, a website that describes itself as “Pakistan’s No. 1 Property Website”. This means that in each of the disputed domain names, Respondent has combined Complainant’s mark OLX with the name of one its main competitors in Pakistan. In the opinion of the Panel, this maneuver indicates that Respondent was perfectly aware of, and targeted, Complainant and its OLX mark at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.
As seen above, Respondent is using the website at the disputed domain name to host online property listings for the Pakistan market, in direct competition with Complainant’s offerings on its “www.” website. Complainant also has shown that the websites at the disputed domain names , , , and are parked pages displaying numerous pay-per-click links, presumably generating income for Respondent. This means that by using the disputed domain names as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with Complainant’s mark OLX as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product or service on Respondent’s websites or locations. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the disputed domain names.
Lastly, as seen at Section 4 in fine, supra, presently the disputed domain names are totally inactive, from which the Panel infers that Respondent did not contemplate any use of the disputed domain names other than creating confusion with Complainant’s well-known mark. This is a further sign of bad faith registration and use.
The Panel concludes that the third requirement of the Policy is 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 disputed domain names,
be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: March 13, 2018
1 See meaning of “zameen” on Google Translate at .
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