The Complainant is OLX Inc. of New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
The Respondent is ev1 Soft Technologies Colombia Redes of Medellin, Colombia.
The disputed domain name <olxsex.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 17, 2011, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On March 18, 2011, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2011.
The Center appointed Anders Janson as the sole panelist in this matter on May 2, 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 duly registered and incorporated under the laws of Delaware. The company has also subsidiaries in Argentina and China. The idea of the company is to provide free online classifieds. The Complainant’s website hosts free user-generated classified advertisements for urban communities around the world and provides discussion forums sorted by various topics.
The Complainant has registered more than 60 domain names in different ccTLD´s bearing the trademark OLX. They are all in use for websites with ads, the core business of the company. The flagship domain name <olx.com> was registered in the year 1999.
The Complainant has, in the Complaint, put forward trademark registrations in several countries, including the following:
Argentine Trademark No. 2161666, filed on February 2, 2006 and registered on June 1, 2007, in class 35;
Colombian trademark, registration No. 355036, filed on January 28, 2009 and granted on August 10, 2009.
European Community Trademark No. 4883741, filed on February 6, 2006 and registered on March 5, 2007, in classes 35 and 38; and
United States Trademark No. 3295467, registered on September 18, 2007, in class 35 (advertising).
The Panel notes that the registration dates of the above-mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on January 11, 2011.
The Complainant contends that:
The disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights;
The Respondent has no rights or legitimate interests in respect of the disputed domain name;
The disputed domain name has been registered and is being used in bad faith; and
The disputed domain name <olxsex.com> should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Given the case file and Respondent’s failure to file a response the Panel, where appropriate accepts as true the contentions of the Complainant. The Respondents default does not however automatically lead to a ruling for the Complainant. To the contrary the Complainant still must establish a prima facie showing that under the Policy it is entitled to transfer of the domain name.
The Policy provides that, to justify a transfer of a domain name, a complainant must prove each of the following (The Policy , paragraph 4(a)):
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name is <olxsex.com>. The disputed domain name contains the Complainants trademark OLX in its entirety with the added suffix “sex” and the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall typically be disregarded.
The question is therefore if the addition of the suffix ”sex” renders the disputed domain name dissimilar from the Complainant’s registered trademark.
In a large number of previous decisions, UDRP panels have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc. v. the ASD Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The Panel finds it established that the trademark is widely known and that the ownership belongs to the Complainant. The Panel further finds that the suffix “sex” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “sex” to the trademark signifies a website associated with the Complainant. The Panel therefore finds that the addition of the term “sex” does not diminish the similarity between the disputed domain name and the Complainant’s trademark
The disputed domain name must therefore be considered confusingly similar to the Complainant’s registered trademark. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).
As mentioned above the Respondent has not filed a Response in accordance with the Rules, paragraph 5. In certain circumstances where a respondent clearly has no obvious connection with a disputed domain name, and indeed when the domain name has not been actively used, a prima facie showing from a complainant that the respondent has no right or legitimate interest may be enough to shift the burden of production of proof to a respondent to demonstrate that such a right or legitimate interest exists. Here, the Respondent has not submitted any Response. The Panel notes that registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Panel finds that the Complainant has made a prima facie showing and the Respondent has not participated in these proceedings or presented any evidence of rights or legitimate interests in using the disputed domain name.
The Panel therefore holds, also in view of the Panel’s further findings below, that the Complainant has established the second element of the Policy, paragraph 4(a).
Finally, the Panel has to consider the question of the disputed domain name having been registered and being used in “bad faith.” Paragraph 4(b) of the Policy lists four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(i) of the Policy states that a circumstance indicating bad faith is registration of a 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. Paragraph 4(b)(iv) of the Policy states that another circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the 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.
The Complainant has asserted that the Respondent’s registration and use of the disputed domain name is undoubtedly made in bad faith with regard to the widely known character of the OLX mark and also with regard to that the Respondent has been posting tons of spam in OLX’s and OLX related websites in the adult sections.
With reference to the above-mentioned and the fact that it is highly unlikely that the Respondent by utter accident registered the disputed domain name, which differs from the Complainant’s trademark only by the addition of the suffix “sex”, the Panel finds it more likely than not that the Respondent by creating a likelihood of confusion with the Complainant’s mark as to the source either is trying to mislead consumers in order to attract them to an intended website making them believe that the website is associated or recommended by the Complainant or that the Respondent never had intention to make a corresponding website, but registered the domain name primarily for selling, renting or otherwise transferring the domain name registration to the Complainant or its competitors. The Panel finds that both these acts constitute bad faith.
The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
For all 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 <olxsex.com> be transferred to the Complainant.
Anders Janson
Sole Panelist
Dated: May 16, 2011