WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX Inc. v. PrivacyProtect.org/Faheem mumtaz
Case No. D2011-1123
1. The Parties
1.1 The Complainant is OLX Inc., of New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
1.2 The Respondent is PrivacyProtect.org/Faheem mumtaz, of Islamabad, Pakistan.
2. The Domain Name and Registrar
2.1 The disputed domain name <olxclassified.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2011. As at that date the name listed in the publically available WhoIs record for the Respondent was “PrivacyProtect.org”. As the name suggests, “PrivacyProtect.org” is the name of a “privacy service” offered by the Registrar.
3.2 On July 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2011, the Registrar transmitted by email to the Center its verification response. In doing so it disclosed the registrant of the Domain Name to be “Faheem mumtaz” and gave a contact address that comprised the city name “Islamabad” repeated 5 times followed by what appears to be a post code. The Center sent an email communication to the Complainant on July 6, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant, if it wished, to submit an amendment to the Complaint. The Complainant decided to take advantage of that invitation and filed an amended Complaint naming “Faheem mumtaz” as the Respondent later that day.
3.3 The Center verified that the Complaint as amended 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”).
3.4 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 July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 29, 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
4.1 The Complainant is a company incorporated under the laws of Delaware. It operates a website under the OLX name that hosts free user-generated classified advertisements from a website operating from various domain names comprising the letters “olx” with different TLDs and ccTLDs. These include <olx.com>. It claims that its website achieved in excess of 2 billion visits and 8 billion page hits between January 2008 and November 2010.
4.2 The Complainant is the owner of a large number of trade marks around the world that comprise or incorporate the term OLX. They include:
(i) United States registered trade mark No. 3626901 for the word mark OLX in class 35. filed on October 30, 2008;
(ii) Community Trade Mark No. 4886741 in class 35 filed on February 6, 2006 in the following form:
4.3 The Complainant has also applied for trade marks in various jurisdictions including for the word mark OLX in class 35 in Pakistan on August 19, 2008.
4.4 The identity of the Respondent is unclear but he would appear to be an individual located in Pakistan.
4.5 According to the publically available WhoIs details for the Domain Name, it was registered on May 31, 2010.
4.6 Since that date the Domain Name has been used for a website the front page of which appears to list various classes of classified advertisements under various categories. At the top of the home page for that site were the words “OLX classified Ads”. More recently the Domain Name has been used to redirect Internet users to a similar web page operating from the <calassifiedarena.com> domain name using the heading “Classified Arena”. The Domain Name continues to be used in this fashion at the date of this decision.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is confusingly similar to its OLX marks. It asserts that the Domain Name incorporated the Complainant’s entire trade mark, to which the descriptive term “classified” has been added.
5.2 On the issue of rights or legitimate interests, the Complainant maintains that the Respondent has not consented to the Respondent’s use of the OLX marks and refers to the fact that its trade mark rights precede the Domain Name registration. It asserts that the Respondent has no trade mark rights and is not commonly known by the Domain Name. So far as the Respondent’s use of the Domain Name is concerned, the Complainant contends that this use is not a bona fide offering of services.
5.3 So far as bad faith is concerned, the Complainant contends that at the time of registration the Respondent knew of the existence of the Complainant given the high volume of internet traffic it was achieving at that time. It also claims the term “OLX” is an “original coined” term. Further, it maintains that the Respondent’s use of the Domain Name for a competing classified advertisement website shows that the Respondent has intentionally attempted to attract for commercial gain internet users to the Respondent’s website. The Complainant also relies upon the Respondent’s use of a privacy protection service.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant owns numerous trade marks that incorporate the term “OLX” and many of which constitute a word mark for the letters “OLX” alone. It further accepts that the only sensible reading of the Domain Name is as the letters OLX supplemented by the ordinary English word “classified” and the “.com” TLD. “Classified” is a word that is often used in English to refer to an advertisement. The addition of this word to the term “OLX” does not so change the ordinary reading of the Domain Name so as to prevent a finding of confusing similarity with the Complainant’s marks. This is a case where the inclusion of the entirety of the Complainant’s mark in the Domain Name is sufficient to justify a finding of confusing similarity (for a further discussion and explanation of the principles applicable here, see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).
6.5 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The relevant facts of this case appear to be reasonably clear. The Respondent has been using the Domain Name either directly or, more recently, indirectly to promote a website of the same sort as the Complainant’s and in competition to the Complainant.
6.7 If the Respondent is using the Domain Name in connection with those activities with the intention of taking unfair advantage of confusion arising out of the similarity between the Domain Name and the Claimant’s OLX marks with a view to drawing Internet users to his website, that use is not a use in connection with a bona fide offering of services. Indeed, such a finding is a positive indicator of the fact that no right or legitimate interest exists (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.8 The motivations of the Respondent for registering the Domain Name and its subsequent use are dealt with in greater detail under the bad faith heading below. As is explained under that heading, the Panel has little doubt that the Domain Name is being used in this fashion and accordingly concludes that the Respondent has no legitimate rights or interests. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 In the opinion of the Panel, the evidence is overwhelming that the Respondent has registered and used the Domain Name with the intention of taking unfair advantage of confusion arising out of the similarity between the Domain Name and the Claimant’s OLX marks with a view to drawing internet users to his website.
6.10 First and foremost, there is the nature of the Domain Name itself. The Complainant contends that the term “OLX” is an “original coined” term. Later on in its Complaint it refers to “OLX” as a “fantasy term [which] has no meaning”. What is meant by these statements is quite clear. It is being claimed that OLX is an invented term that has no generic or descriptive meaning. The Panel has no reason to believe that this is not the case. Although the mark is simply a combination of three letters, the fact that OLX has no obvious descriptive meaning suggests that the term was included in the Domain Name because of its associations with the Complainant. This is placed beyond any serious doubt by the addition of the term “classified”. As has already been explained, that term is commonly used in English (particularly in the plural form) to refer to private advertisements of the sort placed on the Complainant’s own website. The inescapable conclusion is that the Domain Name is intended to refer to the Complainant’s marks and business.
6.11 Second, it is in respect of a competing classified advertisements website that the Domain Name has actually been used since registration.
6.12 This is more than enough to justify a finding in favour of the Complainant on the issue of bad faith. However, there is also the extent of the reputation of the Complainant’s business and the fact that the Respondent has used a privacy service to hide his identity. Indeed, perhaps more telling than the use of the privacy service is the fact that when the privacy shield was raised in this case, it revealed that the Respondent had registered the Domain Name without giving a proper address.
6.13 In the circumstances, the Panel finds that there has been bad faith registration and use. In this case, there is overwhelming evidence of the sort contemplated by paragraph 4(b)(iv) of the Policy. The claimant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <olxclassified.com> be transferred to the Complainant.
Matthew S. Harris
Dated: August 12, 2011