The Complainant is OLX B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Yudianto of Surabaya, Jawa Timur, Indonesia.
The disputed domain name <tokoolx.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 16, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2017, 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 August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. The Respondent did not timely submit a response. Accordingly, the Center notified the Respondent's default on September 14, 2017.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 21, 2017. 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.
On September 21, 2017, the Respondent submitted a late Response by email to the Center.
The Complainant was founded in 2006 and is now one of the world's leading free online classifieds platforms. The Complainant operates online classifieds sites 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 the Complainant's website; display ads on social networking site profiles; and search for jobs across numerous locations and industries. The term "OLX" is short for "online exchange". The Complainant has a presence in over 40 countries, and its service is available in 50 languages, making it one of the largest online marketplaces in the world. The Complainant is the largest online marketplace in several countries, including Brazil, India and Pakistan. The Complainant maintains offices in several major cities, including New York, Buenos Aires, Cape Town, New Delhi, São Paulo, and Lisbon.
The Complainant is the owner of the OLX trademarks and is the owner of multiple trademark registrations for the mark OLX and the OLX and design mark, including in Indonesia, the Dominican Republic, Rwanda, Mauritius, Pakistan, the European Union, Switzerland, and the United Republic of Tanzania, .e.g., European Union Trade Mark Registration No. 004883741, registered on March 5, 2017, for OLX (stylized). The Complainant has also registered over 1,000 domain names incorporating the OLX trademark, including <olx.com>, which directs to the Complainant's primary website.
The disputed domain name was registered on June 3, 2014. The disputed domain name resolves to an online retail website featuring healthcare, beauty and household products. The Respondent's website prominently features a logo that is highly similar to the Complainant's stylized OLX logo.
The Complainant sent three cease-and-desist letters to the Respondent requesting transfer of the disputed domain name. The Respondent did not respond.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's OLX trademarks. The Complainant has rights in the OLX trademarks by virtue of its trademark registrations. When comparing the disputed domain name to the Complainant's trademark, the comparison should be made to the second-level portion of the disputed domain name only. The Top-Level Domain ("TLD") ".com" should not be considered. The disputed domain name consists of the OLX trademark plus the term "toko", which means "store" in Indonesian. The addition of the generic term "toko" does not negate the confusing similarity. Additionally, the Respondent's use of the disputed domain name contributes to the confusion because the Respondent is using the disputed domain name to direct Internet users to a website featuring a modified version of the Complainant's OLX logo. This indicates that the Respondent intended the disputed domain name to be confusingly similar to the Complainant's trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The WhoIs data for the disputed domain name identifies the registrant as "Yudianto", which does not resemble the disputed domain name in any way. The Respondent is not making a bona fide offering of goods or services, or legitimate, noncommercial fair use of the disputed domain name. The Respondent's inclusion of the Complainant's logo on the Respondent's website is a direct attempt to take advantage of the fame and goodwill that the Complainant has built in its brand and the Respondent is not only using a confusingly similar domain name but is also imitating the Complainant by displaying its logo. This imitation is "passing off" and is not a bona fide offering of good or services or fair use.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant's OLX trademarks enjoy a substantial and widespread reputation and have been in use since 2006, well before the Respondent registered the disputed domain name. By registering a domain name that incorporates the Complainant's OLX trademark in its entirety and adding the term "toko" ("store"), the Respondent has created a domain name confusingly similar to the Complainant's mark and to the Complainant's own main domain name <olx.com>. The OLX mark is so associated with the Complainant that the Respondent's use of it strongly implies bad faith. It defies common sense to believe that the Respondent coincidentally chose the disputed domain name without knowledge of the Complainant because the Respondent added the term "toko" ("store"), related to the Complainant's business activities. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.
Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain name to create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainant's logo and attempting to profit from such confusion by using the website associated with the disputed domain name to sell products. Additionally, the Respondent ignored the Complainant's attempts to resolve this disputed outside of this proceeding, which further indicates bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not timely reply to the Complainant's contentions.
On September 21, 2017, the Respondent emailed the Center as follows:
"sorry late reply to your email because these few months my condition is not healthy, i have to take care of sick grandmother start morning, noon, and night and after my grandmother died I have to prepare the ceremony of his death before starting any further conversations between me and you, let me say as below
OLX = OnLine eXchange
O = online (True)
L = onLine (False)
L = not meaningful
X = eXchange (False)
X = (not meaningful)
I think the meaning and writing of the OLX letter is wrong and my domain name difference is only 7 digits (tokoolx) and olx domain name 3 digits (olx)
this is very far from the real meaning of olx
I never used this domain for crime and fraud
I only sell health food and share health product information to Indonesian society
My website is very different from olx ecommerce website
I don't have OLX account, I don't understand about OLX, I bought the domain Tokoolx.com because I have dream of opening an online store that has a meaning 'one life xchange' I want when the sick person comes and buy, consultation my product they get health changes in their life. the meaning of the OLX word of my domain is (One Life Xchange)
why do I choose the letter 'X' with the meaning of Xchange? because I can not get the symbol + (health) on writing the domain name
I submit a problem that is quite disturbing my online store
I almost every day since my domain appears to this day I still receive so much spam on my store's comment column, so my store is suspected of google as a bad online store and of course my rank is getting lower, and now I'm getting sued from a OLX company to close my online store by reason of OLX name duplication.
I hope the panel members can work well and make a wise decision with the right heart and logic, so that no one loses in this case."
The Panel notes that it was open to the Respondent to request extension of the Response due date, but the Respondent chose not to participate in these proceedings until after that date had passed. The Panel has not admitted the late-filed Response, and in any event consideration of the above email does not alter the Panel's findings in this decision.
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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 rights in the OLX trademark. The Complainant has established that it is the registered owner of trademark registrations of the OLX trademark in many jurisdictions, including in Indonesia where the Respondent is located.
The disputed domain name comprises the elements "toko" and "olx" and the TLD ".com". As a technical part of a domain name, the ".com" TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The Indonesian term "toko" means "store" in English. The addition of the term does not distinguish the disputed domain name from the OLX mark to avoid confusing similarity. See Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414. Indeed, the addition of "toko" ("store") may only reinforce the confusing similarity because the Complainant's OLX trademark is used with an online marketplace platform. OLX remains the dominant part of the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant's trademark.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no 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.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its OLX trademark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way.
The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Panel does not find credible the Respondent's assertion that the disputed domain name was registered for its meaning as an abbreviation of "one life exchange". Even if the Respondent's explanation were accepted as true, the Respondent uses the disputed domain name to publish an online retail website that competes directly with Complainant's services and which could be confused with the Complainant's website and services. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 ("[I]t would be unconscionable to find that a bona fide offering of services in a respondent's operation of a web-site using a domain name which is confusingly similar to the complainant's mark and for the same business."). Additionally, the OLX mark is known globally, including in Indonesia, the location of the Respondent and where the Complainant and its services maintain a presence. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the OLX mark may be imputed to the Respondent at the time of registration of the disputed domain name. See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. ("The inevitable conclusion is that th[is] word[ ] [is] not one[ ] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant."). Indeed, the Respondent's addition of the term "toko" ("store"), which bears a direct connection to the services offered by the Complainant under its OLX mark, and the use of a logo that is highly similar to the Complainant's OLX logo, indicate that the Respondent was aware of the Complainant, its services and the OLX marks.
The Respondent is not making any noncommercial or fair use of the disputed domain name. To the contrary, the evidence in the record indicates that the Respondent uses the disputed domain name for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers to the Respondent's competing website.
Accordingly, the record indicates that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the 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 the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent registered the disputed domain name in bad faith. The Respondent undoubtedly was aware of the Complainant and its OLX mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its OLX mark are widely known throughout the world. Additionally, the Complainant owns several trademark registrations, including in Indonesia where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering the disputed domain name, a simple Internet search for "olx" would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant's famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent's use of the disputed domain name to direct Internet users to a website offering services that compete with those of the Complainant. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. Moreover, the Respondent included the term "toko" ("store"), a word that bears a direct connection to the Complainant's OLX-branded services, in the disputed domain name and uses a logo that is very similar, if not identical, to the Complainant's OLX logo prominently on the Respondent's website, further indicating that the Respondent was well aware of the Complainant, its services and the OLX marks. The Respondent's registration of the disputed domain name incorporating the Complainant's mark, being fully aware of the Complainant's rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
The Respondent also uses the disputed domain name in bad faith. By using the disputed domain name to link to a website that promotes and offers competing services, the Respondent conveyed the impression that the Respondent's website was affiliated with or created, endorsed or sponsored by the Complainant. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent's website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's OLX mark as to the source, sponsorship, affiliation, or endorsement of such website. The Respondent further attempted to create Internet user confusion by prominently displaying an OLX logo on the Respondent's website that is very similar to the OLX logo used by the Complainant in connection with its services. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. See id. Additionally, the Respondent's failure to respond to the Complainant's efforts to contact the Respondent for settlement outside of this proceeding "provide[s] strong support for a determination of 'bad faith' registration and use." Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
For these reasons, the Panel finds that the Respondent's registration and use of the disputed domain name is 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 <tokoolx.com> be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: October 10, 2017