The Complainant is OLX, Inc. of New York, New York, United States of America (“U.S.”) represented by Allende & Brea Law Firm, Argentina.
The Respondent is Y.K.P. of Bangalore, Indonesia.
The disputed domain name <bestolxclassifieds.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2011. On September 5, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 6, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 September 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2011. The Respondent submitted informal email communications on September 12, September 13 and September 14, 2011.
The Center appointed James Bridgeman as the sole panelist in this matter on October 6, 2011. 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.
The Complainant is a company registered and incorporated under the laws of Delaware with subsidiaries in Argentina and China.
The Complainant hosts free user-generated classified advertisements for urban communities around the world and provides discussion forums.
The Complainant has provided evidence that it is the owner of registered trade marks in the U.S. and a CTM registration in the European Union namely:
U.S. registered trademark OLX (device), registration number 78/806887, registered on September 18, 2007.
U.S., registered trademark OLX, registration number 77/603813 registered on May 26, 2009.
European Union Community Trademark OLX (device), registration number 4883741, registered on March 5, 2007;
European Union Community Trademark OLX, registration number 007225717, registered on August 7, 2009.
No Response was filed.
However an email was received by the Center from the named Respondent on September 12, 2011, stating:
“Now this domain doesn’t belongs to me. I don’t know who is using my information. I am not the owner of this domain. From http://www.whois-search.com , I have seen that some “RESELLERCLUB” is using this domain with my name and my all information (including email, etc) So, please contact them for any clarifications.”
A further email was received by the Center from the named Respondent on October 7, 2011, denying that he owns the disputed domain name registration stating: “I am not the owner of this domain.... please take the domain.....contact reseller club It is fully irritating for me.....”
There is no information available about the Respondent except that in the Complaint and in the details provided in the registrar’s WhoIs.
The disputed domain name was registered on June 28, 2011.
The Complainant claims to have rights in the OLX trademark and in addition to its rights in the above-listed registrations the Complainant also claims to be the owner of a portfolio of registrations for the trade mark OLX in letters and device form in the a number of other countries across the world namely:
Australia registered trademark OLX, registration number 1281092 registered on September 1, 2009;
Australia Device registered trademark OLX (device) registration number 1281088 registered on September 1, 2009;
Chile Device registered trademark OLX (device), registration number 839587 registered on January 27, 2009;
Colombia registered trademark OLX (device), registration number 355036 registered on August 10, 2009;
Mexico registered trademark OLX (device), registration number 1050271, registered on July 17, 2008;
Monaco registered trademark OLX, registration number 102696, registered on March 13, 2010;
Turkey registered trademark OLX (device, registration number 2008/3455 6, registered on July 4, 2018;
Philippines registered trademark OLX (device), registration number 4-2008-007 3 5 7, registered on December 1, 2008.
The Complainant also claims to in the process of having Argentina registered trademark No. 2,161,666, registered on June 1, 2007, assigned to it from one of its founders Alejandro Oxenford.
In addition the Complainant has a number of applications for registration of the OLX mark in letter and device form pending in Saudi Arabia, Brazil, China, India, Indonesia, OAPI, Pakistan and the Russian Federation.
The Complainant also claims to be the owner of a large portfolio of Internet domain names incorporating the OLX mark and has provided a list of same in an annex to the Complaint.
The Complainant submits that the letters OLX form a coined trademark having been devised by the founders of the Complainant Alejandro Oxenford and Fabrice Grinda. The letters are taken from the words Online Exchange Market.
The Complainant carries on its business through its website established at its principal domain name <oxl.com>. The Complainant submits that it has developed a successful business. Between January 1, 2008 and November 30 2010 it had a total of 2,393,964,683 visitors with 8,861,422,105 page views at its “www.olx.com” website.
At the date of registration of the disputed domain name on June 28, 2011 the Complainant had an average monthly visit total of 114 million users.
The Complainant submits that the disputed domain name is confusingly similar and almost identical to the Complainant’s OLX mark. The disputed domain name incorporates the Complainant’s trademark in its entirety only adding the descriptive words “classified” and “best” together with the gTLD “.com” extension. The Complainant argues that the “.com” extension should be ignored for the purpose of the comparison and that the descriptive words add to the potential for confusion because the word “classified” is a direct reference to a business in which the Complainant has acquired a substantial international reputation and the word “best” has no distinguishing character. In this regard the Complainant cites the following cases where the Complainant was successful under the Policy: OLX Inc. v. Domain Bridge Technologies, Ali Akbar Khan / PrivacyProtect.org, WIPO Case No. D2010-2197; OLX Inc. v Ev1 Soft Technoliges of Colombia Redes, WIPO Case No. D2011-0501; and OLX Inc. v. PrivacyProtect.org/Faheem mumtaz, WIPO Case No. D2011-1123.
Furthermore the Complainant submits that it is well established that a domain name that wholly incorporates a trade mark may be confusingly similar for the purposes of the Policy despite the addition of descriptive words and cites Sanofi-Aventis v. WhoisGuard Protected / Bogdan Mircea, WIPO Case No. D2007-0264; Sanofi-aventis v. Mircea Taralunga, WIPO Case No. D2008-0460; Sanofi-Aventis v. John Adams, WIPO Case No. D2006-0688; Hoffmann- La Roche Inc. v. Erik Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has prior established rights to the use of the OLX mark in the field of Internet classified advertising and has not granted the Respondent any authority, license or permission to use the OLX mark.
The Respondent appears to be using the disputed domain name as the address of a website on which classified advertisements are posted but because of the Complainant’s trademark rights and prior use of the OLX mark, the business carried on by the Respondent is not legitimate.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the disputed domain name was registered on June 28, 2011, subsequent to the dates on which the Complainant commenced use of the OLX trademark on its website at the domain name address “www.olx.com” and after the date on which the Complainant acquired its trademark rights through the aforementioned trademark registrations. The Complainant has furnished print outs from the Internet Wayback Machine as evidence that it had an established website at the “www.olx.com” address as early as February 2006, which was five years before the disputed domain name was registered.
The Complainant submits that it was using the OLX mark to provide services in the U.S., the European Union and Argentina before May 2010.
The Complainant further submits that by the date on which the disputed domain name was registered there was such a high volume of traffic on the Complainant’s website that the registrant must have been aware of the Complainant’s business and rights when the disputed domain name was registered.
The Complainant submits that the disputed domain name is being used in bad faith by the Respondent. The Respondent is using the disputed domain name to as the address of a website that posts classified advertisements. The confusingly similar character of the disputed domain name is very likely to mislead Internet users to believe that the website to which the disputed domain name resolves is in some way affiliated with the business of the Complainant.
The Complainant alleges that by using the disputed domain name in this way the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. In support of this submission the Complainant cites inter alia the decisions of the panels in Pfizer Inc. v. JG a/k/a Josh Green, WIPO Case No. D2004-0784; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623.
The Complainant submits that because the disputed domain name was registered with PrivacyProtect.org, there was no possibility to know the identity of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Preliminary Issue
This Panel notes the communications received by the Center from the Respondent stating that he is not the owner of the disputed domain name; however, according to the WhoIs information the disputed domain name is registered in the name of the Respondent. The Respondent appears to be claiming that he is the victim of identity theft. Because of the limitations of the procedures under the Policy, this Panel must proceed against the person named in the WhoIs database, whether this be the person named as such or an alias used by a third party.
Substantive Issues
In order to succeed in its application, paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
The Complainant has established that it is the owner of the OLX mark through its portfolio of registered trademarks listed above and its extensive use on the Internet through the business it carries on at its website at “www.olx.com”.
This Panel accepts that the disputed domain name <bestolxclassifieds.com> is confusingly similar to the Complainant’s OLX mark. The disputed domain name consists of four elements namely the letters “OLX”, the English language words “best” and “classifieds” and the gTLD extension “.com”.
It is well established under the Policy that for the purpose of comparison the gTLD extension “.com” can be ignored.
The dominant element and the only distinctive element of the disputed domain name is the letters “olx”, i.e., the Complainant’s trademark.
Neither of the words “best” or “classifieds” have any distinguishing character. The former is a laudatory epithet and the latter is descriptive of the Complainant’s business.
The Complainant has therefore succeeded in the first element of the test in paragraph 4 of the Policy.
There was no Response filed in this case. The named registrant sent an email to the Center stating that he has no connection with the disputed domain name.
The Complainant has shown that it has established significant reputation in the use of the OLX mark in Internet commerce in the years prior to the registration of the disputed domain name.
Under the Policy it is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a disputed domain name, the burden of establishing such rights or interest shifts to the respondent.
In the present case, the Complainant has established that it has a significant reputation and goodwill established in the OLX mark and has rights as the registered owner of the mark in a number of jurisdictions across the world. The Complainant has stated that it has not granted any right or license to the Respondent to use the OLX mark or to incorporate it into an Internet domain name.
The Respondent has failed to deliver a Response or give any explanation as to why the disputed domain name was chosen and registered.
The failure of the Respondent to deliver a Response in the circumstances outlined allows this Panel to infer that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant has therefore succeeded in establishing the second element of the test in paragraph 4 of the Policy also.
The Complainant has explained how the letters OLX were chosen as its mark. There is evidence that the Complainant had established a significant business in online classified advertisements prior to the date on which the disputed domain name was registered.
The disputed domain name is confusingly similar to the Complainant’s OLX mark and this Panel finds that on the balance of probabilities the disputed domain name was created and registered in order to create confusion with the Complainant’s business in the minds of Internet users. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith.
The disputed domain name has since been used as the address of a website that is offering classified advertisements in competition with the Complainant’s business.
In the circumstances this Panel accepts the Complainant’s submissions and finds that by using the disputed domain name in such a manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. This Panel finds that the disputed domain name is being used in bad faith.
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 <bestolxclassifieds.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: October 20, 2011