World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX Inc. v. Domain Bridge Technologies, Ali Akbar Khan / PrivacyProtect.org

Case No. D2010-2197

1. The Parties

The Complainant is OLX Inc., of New York, United States of America, represented by Allende & Brea Law Firm, Argentina.

The Respondent is Domain Bridge Technologies, Ali Akbar Khan of Lahore, Pakistan / PrivacyProtect.org,of Moergestel, the Netherlands, self represented.

2. The disputed domain name and Registrar

The disputed domain name <realolx.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 16, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on December 23, 2010. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Center notified the Respondent’s default on January 19, 2011. The Respondent sent an email communication to the Center on January 20, 2011 in reply to the Amended Complaint.

The Center appointed Luca Barbero as the sole panelist in this matter on January 28, 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.

4. Factual Background

The Complainant is an Internet company registered and incorporated under the laws of Delaware which provides free user-generated classified advertisements and discussion forums through its web sites under “www.olx.com” (the domain name <olx.com> was registered on February 8, 1999) and several other “olx” domain names, registered between 2006 and 2007 in more than sixty Country Code Top Level Domain around the world, such as Mexico, Spain, Chile, Ecuador, Uruguay, Bolivarian Republic of Venezuela, Plurinational State of Bolivia, Japan, Israel, Pakistan, Portugal, Peru, Singapore, Italy and France.

The Complainant is the owner of several trademark registrations for OLX, including the following: Argentine Trademark No. 2161666, filed on February 2, 2006 and registered on June 1, 2007, in class 35; 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.

According to the Registrar, the Respondent registered the disputed domain name <realolx.com> on May 9, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant points out that the mark OLX was coined by the founders of OLX Inc. to identify its services which are aimed at creating an “Online eXChange market” by providing free online classified advertisements. The Complainant states that it has developed a successful strategy in Argentina, United States, People’s Republic of China, India and Europe and that the number of visits to the web site “www.olx.com” amounted to 2.393.964.683 between January 1, 2008 and November 30, 2010, with a number of 8.861.422.105 page viewers in the same period. The Complainant highlights that the average monthly visit to the site “www.olx.com” was 114 million users at the time the disputed domain name was registered.

The Complainant contends that disputed domain name <realolx.com> is confusingly similar to the trademarks and domain names in which the Complainant has rights as it reproduces the trademark OLX in its entirety, with the mere addition of the descriptive term “real”.

With reference to rights or legitimate interests in respect of the dispute domain name, the Complainant states that the Respondent has not been authorized by the Complainant to use its trademark OLX and that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services since the Respondent’s offer of the same advertising services provided by the Complainant is apt to confuse Internet users inducing them to believe that the disputed domain name has the same origin as the Complainant’s sites. The Complainant states that the Respondent has not acquired any trademark rights in respect of the disputed domain name and that it is not commonly known by the disputed domain name.

With reference to the circumstances highlighting the Respondent’s registration in bad faith, the Complainant indicates that its rights on the OLX mark predate the registration of the disputed domain name by the Respondent, as the mark OLX was registered and used in the United States, Europe and Argentina before May 2008. The Complainant states that, due to the high volume of traffic directed to the Complainant’s “olx” web sites at that time (highlighted in a report from Google Analytics attached to the Complaint) and to the original character of the term “OLX”, the Respondent was certainly aware of the existence of the OLX mark when it registered the disputed domain name.

As to the circumstances evidencing the Respondent’s bad faith use, the Complainant points out that the Respondent’s offer of classifieds under the disputed domain name is likely misleading Internet users as to the affiliation of the Respondent’s site. The Complainant also notes that some of the links published on the Respondent’s site direct to sites of some of the Complainant’s competitors. The Complainant states that the Respondent is, therefore, attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the sponsorship, endorsement of affiliation of its web site and services.

The Complainant also contends that the Respondent’s use of a privacy shield is a further evidence of the its bad faith and states that the name of the underlying registrant Ali Akbar Khan would be a false name since it was the name of a famous Indian classical musician.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the deadline for sending a Response. A communication was sent by the Respondent to the Center the day after the notification of the Respondent’s default. In this communication the Respondent states that it acquired the disputed domain name from one of its clients in 2009.

The Respondent highlights that it has been using it for “a free site where people come and post their ads” and that over three thousands users posted their ads on the site since 2008. The Respondent also states: “On internet thousands of names are similar and how OLX Inc say that this name are effected their business. OLX is a big name and earn millions of dollars from this business”.

The Respondent also rebuts the Complainant’s assertion that the Respondent communicated a false name for the registration of the disputed domain name and indicates that “Ali Akbar Khan” is its actual name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of several trademark registrations such as OLX, including Argentine Trademark No. 2161666, filed on February 2, 2006 and registered on June 1, 2007, in class 35; 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.

The mere addition of the word “real” does not exclude the confusing similarity between the disputed domain name and the Complainant’s mark.

It is well-established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).

The Panel finds, therefore, that the disputed domain name is confusingly similar to the mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s mark.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name and the Respondent has not provided any convincing evidence to the contrary.

The Panel notes that the disputed domain name has been pointing to a web site on which classified advertisements were provided and a logo “Free Classifieds REALOLX” was published at the top of the page. The Panel finds that such use of the disputed domain name, also in light of the web site’s layout, which evoked the Complainant’s sites, is apt to mislead Internet users as to the source, sponsorship or affiliation of the Respondent’s site.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the Complainant’s OLX mark in connection with classified advertising services, which are provided by the Complainant through a number of domain names constituted by the name “olx” and registered in more than sixty Country Codes Top Level Domains, also in view of the Respondent’s statement in the email sent to the Center “OLX is a big name and earn millions of dollars from this business”, the Respondent was likely aware of the Complainant’s trademark when it registered the disputed domain name.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel finds that, since classified advertising services were provided under the disputed domain name, the Respondent’s registration and use of <realolx.com> interferes with the Complainant’s business and Internet users might be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection WIPO, Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286, and Marriott International, Inc. v. Vladimir Kyznetsov, NAF Claim No. FA95648 (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <realolx.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: February 11, 2011

 

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