World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX Inc. – OLX S.A v. Whois Manager, Whois Proof LLP/ Francisco Endara D.

Case No. D2011-1889

1. The Parties

The Complainants are OLX Inc. of New York, New York, United States of America, and OLX S.A of Buenos Aires, Argentina, both represented by Allende & Brea Law Firm, Argentina.

The First Respondent is Whois Manager, Whois Proof LLP of Portland, Oregon, United States of America.

The Second Respondent is Francisco Endara D. of Pichincha, Ecuador.

2. The Domain Name and Registrar

The disputed domain name <mundoanuncioclasificados.com> is registered with Active Registrar, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to Active Registrar, Inc. a request for registrar verification in connection with the disputed domain name. On November 2, 2011, Active Registrar, Inc. 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 which the Center conveyed to the parties. In response to a further notification by the Center that the Complaint was administratively deficient in various respects, the Complainant filed an amendment to the Complaint on November 7, 2011. Respondent sent to the Center an email communication on November 7, 2011, which was responded by the Center on November 8, 2011 advising Respondent to await for the deadline for submission of a Response.

The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Response was filed with the Center on December 4, 2011.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on December 12, 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 trademark upon which the Complaint is based is MUNDOANUNCIO.

According to the documentary evidence and contentions submitted, the Complainants own a number of trademark registrations for the MUNDOANUNCIO trademark, including the Argentinean Trademark Registration No. 2218420, issued on March 22, 2008, and the United States Trademark Registration No. 3456382, issued on July 1, 2008, for online advertising services. According to the contentions submitted, the Complainant’s domain name <mundoanuncio.com> was registered in 2003 and the purpose of the website to which that domain name resorts is to provide free online classifieds. Between January 1, 2011 and September 22, 2011 the total number of visitors of the website at <mundoanuncio.com> was 108,075,389 and there were 1,950,347,478 pageviews.

The disputed domain name was registered on May 2, 2011.

5. Parties’ Contentions

A. The Complainants

The Complainants argue that the disputed domain name is confusingly similar to the MUNDOANUNCIO trademark because (i) it incorporates the MUNDOANUNCIO trademark, which is the most prominent element of the combination, and the common word “classificados”, which means “classified ads” and is descriptive, (ii) the “www” and “.com” elements are functional additions to the disputed domain name, and (iii) the word “classificados” describes the services that the Complainants offer.

The Complainants further contend that the Respondents do not have rights or legitimate interests regarding the disputed domain name because (i) Respondents have not been authorized, licensed, permitted or otherwise allowed to use the MUNDOANUNCIO trademark in the disputed domain name; (ii) the Respondents have not acquired any trademark rights in respect of the disputed domain name, and are not commonly known by the disputed domain name; and (iii) the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainants contend that the disputed domain name has been registered in bad faith by Respondent because: (i) the MUNDOANUNCIO trademark and the Complainants’ domain name were registered well before the disputed domain name was registered, (ii) the Respondents knew of the existence of the MUNDOANUNCIO trademark due to the high volume of traffic which was generated, and (iii) the disputed domain name was registered with a privacy proxy service and an English translation of the named registrant’s address is “my house and the street that crosses” (the Spanish expression listed as the registrant’s address is “mi casa y la calle que cruza”) which is a fake contact information. Finally, the Complainants contend that the disputed domain name is being used in bad faith because (i) the disputed domain name resorts to a website offering classifieds with the same structure and displays as in the Complainants’ website, (ii) the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website or other online location, by creating a likelihood of confusion with the Complainants’ trademark 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, (iii) the disputed domain name resorts to a website that is in competition with the Complainants’ as the activities are similar and the MUNDOANUNCIO trademark is being used, (iv) the Respondents used a privacy service to conceal his real identity, and (v) the Respondents are using Google Adwords to earn money by pay-per-click advertising in the content of the website at the disputed domain name.

B. The Respondents

The Second Respondent argues that the disputed domain name <mundoanuncioclasificados.com> is not identical to the Complainant’s domain name <mundoanuncio.com> and that the Complainants’ domain name is relatively new.

The Second Respondent further argues that (i) the disputed domain name was chosen as a result of a search using Google Adwords, Tools for Keywords for the terms “anuncios clasificados” and “clasificados en el mundo” in order to adopt a domain name for a new project which consists of offering free classified services, (ii) the disputed domain name was not intended to be confused with <mundoanuncio.com>, and (iii) the Complainants’ contention that “the term ‘clasificados’ may convey the idea that the website is the official one” is subjective and not objective”.

The Second Respondent denies that the intention in registering and using the disputed domain name was to divert consumers or confuse customers and states that the intention was to offer the service of free classifieds; denies that the disputed domain name is not being used in good faith and states that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondents’ out-of-pocket costs directly related to the domain name; denies that the registrant address is a false contact information and states that such information was given initially, the Complainants having never attempted to contact him; and denies that a privacy service was used to register the disputed domain name. The Second Respondent further rejects the contention that the disputed domain was chosen according to the high volume traffic of the website at the Complainants’ website at domain name <mundoanuncio.com> and states that Google has no reason to “think” that the website at <mundoanuncioclasificados.com> is a part of the Complainants’ website at <mundoanuncio.com> because “Google has an algorithm which states an unique page rank for every single domain name.” The Second Respondent states that “the fact that the domain name has a good and technical developed structure, in order to obtain traffic from Google is not a sign of ‘bad faith’”. Finally, the Second Respondent states that the disputed domain name is not engaging in any kind of competition with the Complainants’ website at <mundoanuncio.com> and is not being used in bad faith.

6. Discussion and Findings

A. Respondents’ standing

When the Complaint was filed, the registrant of the disputed domain name according to the publicly available WhoIs database was listed as Whois Manager, Whois Proff LLP. However, the concerned Registrar, Active Registrar, Inc., 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. Active Registrar, Inc. advised that the registrant of the disputed domain name is Francisco Endara D., which information the Center in turn conveyed to the parties. The Complainant subsequently elected to amend its Complaint to name Francisco Endara D. as a Respondent. As recommended in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.9, the Center notified the case and forwarded a copy of the Complaint on notification to the disclosed underlying registrant as well as to the originally-named privacy or proxy service.

The Panel is satisfied in the circumstances that both Whois Manager, Whois Proff LLP and Francisco Endara D. are appropriate Respondents and concludes that the amended Complaint should be accepted as filed.

B. Effect of the Consent to Transfer

The Panel must first address the Second Respondent’s consent to the remedy requested by the Complainants. Under paragraph IV of the Response, the Second Respondent agrees to transfer the disputed domain name on the basis of an agreement between the Parties, without need for a decision being rendered by the Administrative Panel.

Several prior Panels have been presented with a consent to transfer and with the decision of whether a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.13, “[s]ome panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the Policy (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”

In this case, the Second Respondent does not admit that the elements of paragraph 4(a) of the Policy have been met. On the contrary, the Second Respondent responded extensively to the statements and allegations made in the Complaint and initially requested “the Administrative Panel to deny the remedies requested by the Complainant.” Therefore, there is a conflict in the course of action requested by the Second Respondent in paragraphs III (Response to Statements and Allegations Made in Complaint) and IV (Consent to Remedy (Optional)) of the Response. In this respect, the Panel notes that the Second Respondent reproduced portions of the Model Response prepared by the Center, which is intended to orientate a respondent to prepare a response. Therefore, whether or not the statement in paragraph IV of the Response accurately describes the Second Respondent’s position is unclear from the face of the Response. However, for the purposes of this decision the factual scenario upon which the Panel needs to proceed shows conflicting statements.

Paragraph 10 of the Rules sets out the General Powers of the Panel and subparagraph (c) provides that the panel shall ensure that the administrative proceeding takes place with due expedition. In addition, paragraph 15(a) of the Rules provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. In light of the foregoing, the Panel believes that in this case it is necessary for the Panel to proceed to a reasoned decision because there is ambiguity as to the genuineness of the Second Respondent’s consent and the Panel should ensure that the proceeding takes place with due expedition.

C. Identical or Confusingly Similar

The disputed domain name incorporates the MUNDOANUNCIO trademark in its entirety in association with the word “classificados”. Given this type of combination, the Panel finds that the MUNDOANUNCIO trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.

Previous UDRP panels have held that when a disputed domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.

The Second Respondent’s contention that the disputed domain name <mundoanuncioclasificados.com> is not identical to the MUNDOANUNCIO trademark is groundless. For the Complainant to establish the first element set forth in paragraph 4(a)(i) of the Policy, the disputed domain name must be identical or confusingly similar to a trademark in which the Complainant has rights. As pointed out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2, “[i]n order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name.” There is no doubt that the MUNDOANUNCIO trademark is recognizable in the disputed domain name.

The addition of the descriptive term “classificados” increases the likelihood of confusion because it refers to a type of service that is provided under the MUNDOANUNCIO trademark and, therefore, does nothing to distinguish the disputed domain name from the Complainants’ registered trademark. Also, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark is to be considered confusingly similar to the registered trademark. The fact that the disputed domain name is relatively new does not affect the finding of confusing similarity.

Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. See RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.

Therefore, the Panel finds that the disputed domain name <mundoanuncioclasificados.com> is confusingly similar to the MUNDOANUNCIO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

D. Rights or Legitimate Interests

The disputed domain name is not the name of the Respondents or the name by which the Respondents are commonly known, and is not the Respondents’ trade name or trademark.

The Complainants also contend that the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services. The Panel agrees with the Complainants’ argument that there cannot be a bona fide offering of goods or services (in this case offering an online platform for advertising) without authorization from the Complainant to use the MUNDOANUNCIO trademark.” The Second Respondent admits that the disputed domain name was chosen for the purpose of offering free classified services but fails to explain why the Second Respondent chose the combination of “classificados” with “mundo anuncios” since it would suffice for the Second Respondent to use simply the word “classificados” and not the combination of both “classificados” and “anuncios” with the word “mundo”. It would have been pertinent for the Second Respondent to search to see whether a domain name consisting of one of the words selected by the Second Respondent was already registered. Had the Second Respondent conducted that research, he would have found the Complainant’s domain name <mundoanuncio.com>.

Pursuant to an independent survey conducted by the Panel to attempt to access the Respondents’ website, the Panel verified that the disputed domain name currently does not resolve to an active website (access attempted on December 22 and 23, 2011). The apparent deactivation of the Respondents’ website does not affect a finding that the Respondents are not making any legitimate non-commercial or fair use of the disputed domain name.

It has been established by previous Policy decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa d’Estalvis i Pensions de Barcelona (“La Caixa”) v. Young N, WIPO Case No. D2006-0406; Croatia Airlines d.d. v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455.

The Panel is convinced that the Complainants have done enough to establish a prima facie case that the Respondents lack rights or legitimate interests in connection with the disputed domain name, and the Respondents have failed to provide the Panel with any evidence of their rights or legitimate interests thereto.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

E. Registered and Used in Bad Faith

(i) Bad Faith Registration

The Complainants’ first contention is that the MUNDOANUNCIO trademark and Complainant’s domain name were registered well before the disputed domain name was registered. This contention is not denied by Respondents and the evidence of record supports the Complainants’ first contention. The Complainants also argue that Respondents knew of the existence of the Complainant’s domain name <mundoanuncio.com> due to the high volume of traffic which was generated. The Second Respondent rejects that contention by arguing that the selection of the disputed domain name was made as a result of an investigation of relevant search terms in Google Adwords,Tools for keywords and that “Google has no reason to ‘think’ that the mundoanuncioclasificados.com is a part of mundoanuncio.com.” This argument is unpersuasive as it does not establish that the Second Respondent was diligent in securing a domain name registration. Had the Second Respondent conducted a research on existing domain names, he would have found the Complainants’ domain name <mundoanuncio.com> and would have noted that the domain name <mundoanuncioclasificados.com> is confusingly similar thereto.

There is an additional factor to be considered. As indicated before, the Second Respondent fails to explain why he chose the combination of “classificados” with “mundo anuncios” since it would suffice for the Second Respondent to use simply the word “classificados” and not the combination of both “classificados” and “anuncios” with the word “mundo”. In the case of a domain name so obviously connected to a registered trademark, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Finally, the Complainants contend that the disputed domain name was registered with a privacy proxy service to conceal registrant’s real identity and that the named registrant’s address is a fake contact information. The Second Respondent denies such contentions by arguing that no privacy proxy service was used, and that the Complainants never attempted to contact the Second Respondent at the registrant information initially provided by the concerned Registrar. The Second Respondent’s first defense is not supported by the Registrar’s verification response to the Center where it states, when disclosing the registrant and contact information for the disputed domain name, that it had “restored the original registrant information to the domain name.” Therefore, the Panel finds that a privacy proxy service was clearly used. The Second Respondent’s second defense is also unpersuasive as the Registrar’s verification response indicates as the Registrant’s Address: Mi casa y la calle que cruza.” The Panel finds that means that the Second Respondent never updated his contact address with the Registrar. Therefore, by supplying fake contact information the Second Respondent provided false or incomplete contact information in registering the disputed domain name. The Panel finds that this constitutes further evidence of bad faith registration.

The Second Respondent’s contention that the disputed domain name was not registered to divert consumers or confuse customers but only with the intention to offer the service of free classifieds is not supported by the evidence in these Policy proceedings. The Panel sees no plausible reason in the present record why the Second Respondent opted for registering the disputed domain name <mundoanuncioclasificados.com>. While the word “classificados” may well serve a purpose of indicating provision of a service of free classified ads, the word used in the disputed domain name appears to be a misspelling (including only one “s”) of that word, which has been combined with a prefix (“mundoanuncio”) that corresponds exactly with the Complainants’ MUNDOANUNCIO trademark. Accordingly, the Panel further finds it most likely that the disputed domain name was created and registered by the Second Respondent in an intentional attempt to benefit from the goodwill of the Complainants’ trademark for financial gain.

(ii) Bad Faith Use

The Complainants’ first contention of bad faith use is that the disputed domain name resorts to a website offering classifieds with the same structure and displays as in the Complainants’ website at its domain name <mundoanuncio.com>. The Complainants also argue that the disputed domain name resorts to a website that is in competition with the Complainants as the Respondents offered classified services similar to the Complainants and are using the MUNDOANUNCIO trademark. The Second Response’s defense is that “the fact that the domain name has a good and technical developed structure, in order to obtain traffic from Google is not a sign of ‘bad faith’” and that the website at the disputed domain name is not engaging in any kind of competition with the Complainants’ website at domain name <mundoanuncio.com>. The Panel notes that a comparison of selected pages of the websites at the Complainants’ domain name <mundoanuncio.com> and at the disputed domain name <mundoanuncioclasificados.com>, as provided by the Complainants in Annexes 5 and 6, clearly indicates that the websites at both domain names provided similar free classified ad services. The fact that the Respondents used the disputed domain name to provide similar and competitive services is an evidence of bad faith use, and it is not necessary to make a finding of whether or not both websites had the same structure and displays. The Panel finds that in this case the content of the websites is sufficient to support a finding of bad faith use.

The Complainants’ second contention of bad faith use is that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website or other online location, by creating a likelihood of confusion with the Complainants’ trademark 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. The Complainants further argue that the Respondents were using Google Adwords to earn money by pay-per-click advertising in the content of the disputed domain name. The Second Respondent denies that the intention in registering and using the disputed domain name was to divert consumers or confuse customers, and denies that the disputed domain name is not being used in good faith. The Second Respondent states that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainants or to a competitor of the Complainants.

The Panel finds the Second Respondent’s defense to be unpersuasive in the circumstances. In fact, as decided in a previous UDRP decision, “[t]he proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free-ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent. In light of the above, the Panel concludes that knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free-ride on the Complainant’s goodwill), is the proper test”. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. The Panel also finds that the Respondents have intentionally attempted to attract, for commercial gain, internet users to its website and is obviously not making any legitimate non-commercial or fair use of the disputed domain name.

The Respondents originally used the website at the disputed domain name to offer free classified ads. After notice of the dispute was given to the Respondents, the website at the disputed domain name was apparently deactivated. The facts of the case show an evasive conduct on the part of the Respondents. First, because the use of a privacy proxy service and false registrant address to avoid disclosing the name and contact address of the real party in interest is consistent with an inference of bad faith in registering and using a domain name. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696. Second, the Panel finds that the deactivation of the website to which the disputed domain name resolved after notice of the dispute was given to the Respondents indicates at least that the Respondents intended to avoid a claim of bad faith use of the disputed domain name. In short, the manner in which the Respondents have used and are using the disputed domain name demonstrates that the disputed domain name was registered and is being used in bad faith.

The above findings are sufficient to deal with the principal submissions made in the Complaint and the Response in these Policy proceedings. The Panel concludes on the basis of the above findings that the requirement of paragraph 4(a)(iii) of the Policy is met. Accordingly, the Panel does not find it necessary to address other submissions.

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 disputed domain name <mundoanuncioclasificados.com> be transferred to the Complainants.

Manoel J. Pereira dos Santos
Sole Panelist
Dated: December 23, 2011

 

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