The Complainant is OLX B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Yacoub Hamidou, Yacoub International of Pondicherry, India. 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 June 21, 2018. On June 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2018, 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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 23, 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
The Complainant was founded in 2006 and operates as a free online classifieds platform present in over 40 countries, including Pakistan, India, Brazil, Argentina, China, United States of America, etc.
The Complainant is the owner of several trademark registrations for OLX including Pakistan Trademark Registration No. 254718 in class 35, registered on August 19, 2008 (Annex 6 to the Complaint). In addition to such trademark registrations, the Complainant also owns and operates over 1,000 domain names incorporating the OLX trademark (Annex 8 to the Complaint).
The disputed domain name was registered on December 5, 2014, and currently resolves to an active webpage which offers for sale clothing apparel. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is one of the world’s leading online marketplaces, being the largest in several countries such as Pakistan, India and Brazil. Operating in 40 countries and rendering its services in 50 languages it asserts that its domain name is one of the most popular websites in the world.
Furthermore, the Complainant asserts that its trademark OLX enjoys a worldwide reputation, as past UDRP panels have considered it to be “well-known”, “well recognized” and “in possession of substantial inherent and acquired distinctiveness”.
The disputed domain name , according to the Complainant, is confusingly similar to its
well-known trademark given that the “pro” suffix is a generic, descriptive term being its trademark clearly recognizable in the disputed domain name.
Also according to the Complainant, the disputed domain name is being used to offer classified ads services which directly competes with the Complainant’s business and suggests that the Respondent intended the disputed domain name to be confusingly similar therewith.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
i. the Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized by the Complainant to use the Complainant’s trademarks in any manner, including in domain names;
ii. the Respondent has not been commonly known by the disputed domain name;
iii. the website that resolves from the disputed domain name creates a false impression of affiliation with the Complainant given that the advertisement services being offered there directly compete with the Complainant’s own offerings; and
iv. the Respondent registered the disputed domain name several years after the Complainant had started using its trademark which has the status of a well-known trademark with a substantial and widespread reputation where it operates.
Furthermore, the Complainant asserts that the bad faith in the registration of the disputed domain name is evident given the fact that OLX is a well-known trademark and the Respondent knew or at least should have known of the existence of the Complainant’s trademarks and domain names, what constitutes bad faith per se. In addition to that, the Complainant operates the largest online marketplace platform, in Pakistan, which demonstrates the Complainant’s fame and that the Respondent was or should have been aware of the Complainant before the Respondent registered the disputed domain name.
As to the use of the disputed domain name in bad faith, considering that the Respondent is offering advertisement services which directly compete with the Complainant’s business, such use cannot be considered a bona fide offering of goods or services.
Lastly, the Respondent ignored the Complainant’s attempts to resolve this dispute outside the proceeding, having chosen not to reply to the cease and desist letter sent by the Complainant’s representatives (Annex 13 to the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed 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 disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the OLX trademark.
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the generic term “pro”, in this Panel’s point of view, does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable in the disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second element of the Policy.
In that sense, the Complainant indeed asserts that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use the Complainant’s trademarks in any manner, including in domain names. There is also no evidence that the Respondent has been commonly known by the disputed domain name.
According to the evidence submitted by the Complainant the website under the disputed domain name offers clothing apparel for sale, which can be considered a similar service to that offered by the Complainant, and what could (incorrectly) suggest that there is an affiliation between the Respondent and the Complainant.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to paragraph 4(b)(iv) of the Policy in view of the reproduction of the OLX trademark, as well as the offers for sale of clothing apparel on the website under the disputed domain name, which can be considered a similar service to that offered by the Complainant.
Other factors corroborate a finding of bad faith:
a. the disputed domain name was registered on December 5, 2014, which is long after the Complainant started its business in 2006.
b. the absence of reply to the three warning letters the Complainant sent to the Respondent before filing the Complaint (Annex 13 to the Complaint);
c. the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name; and
d. the use of a false address in the WhoIs data and, consequently, the Center not being able to have the communication delivered to it.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 disputed domain name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 6, 2018
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