World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX Inc. v. Domains by Proxy, Inc, DomainsByProxy.com / Saqib Mahmood

Case No. D2011-2235

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 Domains by Proxy, Inc, DomainsByProxy.com of Arizona, United States of America / Saqib Mahmood of Barking, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <olxclone.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2011. On December 19, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC 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 20, 2011 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 21, 2011.

The Center verified that the Complaint together with 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 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2012.

The Center appointed Mladen Vukmir as the sole panelist in this matter on January 31, 2012. 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 Panel finds that it was properly constituted.

4. Factual Background

The Complainant is a company registered and incorporated under the laws of Delaware. Its core business is related to free online classified advertising. The Complainant’s website “www.olx.com” hosts free user generated classified ads for urban communities around the world and provides for discussion forums sorted by various topics.

Furthermore, the Complainant is the holder of a number of OLX trademarks in different countries, evidence of which has been provided in the Complaint or Annexes thereto. In this regard, the Panel determined that portfolio of the Complainant’s OLX trademarks includes amongst other the following verbal and figurative trademarks:

Argentinean trademark No. 2.161.666 filed on February 2, 2006 and registered on June 1, 2017 in Class 35;

Australian trademark No. 1281092 filed on January 15, 2009 and registered on September 1, 2009 in Class 35;

Chilean trademark No. 839587 filed on May 5, 2008 and registered on January 27, 2009 in Class 35;

Colombian trademark No. 369221 filed on June 13, 2008 and registered on December 22, 2008 in Class 35;

Philippine trademark No. 4-2008-007 357 filed on June 20, 2008 and registered on December 1, 2008 in Class 35;

Mexican trademark No. 1050271 filed on May 14, 2008 and registered on July 17, 2008 in Class 35;

European Community trademark No. 4883741 filed on February 6, 2006 and registered on March 5, 2007 in Classes 35 and 38;

Monaco trademark No. 102696 filed on January 13, 2010 and registered on March 13, 2010 in Class 35;

Turkish trademark No. 2008/34556 filed on June 9, 2008 and registered on July 4, 2008 in Class 35;

USA trademark No. 3295467 filed on February 3, 2006 and registered on September 18, 2007 in Class 35;

USA trademark No. 3626901 filed on October 30, 2008 and registered on May 26, 2009 in Class 35.

In addition, it is alleged by the Complainant (and not disputed by the Respondent) that it holds a number of gTLD’s and more than 60 ccTLD’s bearing the trademark OLX, registered before the disputed domain name <olxclone.com> and in use for websites with classified ads, the core business of the Complainant. According to the Complainant, their flagship domain name <olx.com> was registered in 1999. In accordance with the normal practice and consensus views in UDRP (see paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition "WIPO Overview 2.0"), on February 7, 2012, the panel made a limited factual research into WhoIs information for the domain name <olx.com>, and determined that the same domain name was registered on February 8, 1999 and that the registrant of the same is the Complainant.

From the information contained in Annex 4 of the Complaint, it is evident that the Complainant’s website “www.olx.com”, in the period between January 1, 2008 and December 1, 2009 (period in which the disputed domain name <olxclone.com> was registered), had a total number of 46,989,298 visitors and 276,270,057 page views. Also that, as of the date it was established, the same Complainant’s website had a total of 7,769,830,740 views and a total of 1,766,749,432 page visits, which page visits came from 241 different countries/territories.

There is no information available about the Respondent other than the information contained in the verification response of the Registrar, GoDaddy.com, LLC as of December 19, 2011 and in the Complaint.

According to the WhoIs (Annex 1 of the Complaint), the Respondent registered <olxclone.com> with the Registrar, GoDaddy.com, LLC on December 31, 2008.

In line with the normal practice and consensus views in UDRP, on February 7, 2012, the Panel also visited the disputed domain name <olxclone.com>. The Panel determined that it resolves to the website “www.yourownclassifieds.com”, where services of creating classified advertising sites are offered. According to the Panel’s finds, the website “www.yourownclassifieds.com”, in the sense of the services offered, graphical solutions and the entire layout of the website, very much resembles to the website that was previously under the disputed domain name <olxclone.com>, evidence on which has been submitted by the Complainant in Annex 5 to the Complaint.

The Panel notes that the majority of the Complainant’s registered OLX trademarks and its flagship domain name <olx.com> were filed for registration/registered before the disputed domain name <olxclone.com>.

5. Parties’ Contentions

A. Complainant

(i) The Complainant contends that it is a company duly registered and incorporated under the laws of Delaware, United States of America, with subsidiaries in Argentina and Chile. According to the Complainant, idea of the company is to provide free online classifieds, and that its website hosts free user generated classified advertisements for urban communities around the world and provides for discussion forums sorted by various topics.

Furthermore, the Complainant claims that the term OLX was coined by Mr. AO and FG, founders of OLX to identify an Online eXchange market.

Moreover, the Complainant contends to be the holder of a number of OLX trademarks in different countries, including Argentina, United States of America, India, Pakistan and the European Union, a list/chart of which has been provided in the Complaint and in the Annex 3 to the same.

In addition, it is alleged by the Complainant that it holds a number of gTLD’s and more than 60 ccTLD’s bearing the trademark OLX, registered before the disputed domain name <olxclone.com> and in use for websites with classified ads, the core business of the Complainant. According to the Complainant, their flagship domain name <olx.com> was registered in 1999.

The Complainant also claims that the company has developed a successful strategy of location in Argentina, United States of America, China, India and European Union, and that its website, in the last years, between December 1, 2008 and February 1, 2009, had a total number of 46,989,298 visitors and 276,270,057 page views. Furthermore, that on August 5, 2011 the Complainant’s reached monthly page views of 1,006,316,408 visitors. Moreover, the Complainant asserts that at the time of registration of the disputed domain name <olxclone.com> the average number of visits of the Complainant’s website in the United States of America was of 3,376,080 and that therefore it is impossible that the Respondent was not aware of OLX trademarks and domain names. The Complainant accentuated that its website “www.olx.com” was viewed by a total of 7,769,830,740.

(ii) The Complainant furthermore claims that the disputed domain name is confusingly similar to the OLX trademarks, in which the Complainant has rights, because it incorporates the Complainant’s entire OLX trademark and differs from the latter only that it adds the common/generic term “clone”, while “www” and the “.com” are only functional additions to the disputed domain name.

According to the Complainant, the trademark OLX is the most prominent element of the disputed domain name <olxclone.com>, which may cause the public to think that it is somehow connected to the Complainant, and in this regard invokes the views of the panel made in the following UDRP cases: OLX Inc. v. Domain Bridge Technologies, Ali Akbar Khan / PrivacyProtect.org, WIPO Case No. D2010-2197; OLX Inc. v. Ev1 Soft Technologies of Colombia Redes, WIPO Case No. D2011-0501; and OLX Inc. v. PrivacyProtect.org / Faheem mumtaz, WIPO Case No. D2011-1123.

Moreover, the Complainant contends that the addition of the generic term “clone” is not sufficient to distinguish the disputed domain name <olxclone.com> from the OLX trademark and the domain name <olx.com>, as well as that it does not eliminate the confusion between the same, because according to the Complainant the disputed domain name <olxclone.com> could easily be mistaken for an authorized copy or related company to the Complainant. For this purpose, the Complainant refers the Panel to four previous UDRP cases in which the panels have found “confusing similarity” in circumstances involving a “trademark + clone” domain name (Institut Straumann A.G. v. Core-Vent Corporation, WIPO Case No. D2000-0404; Dell Inc. v. None, WIPO Case No. D2004-0511; Entertainment Shoping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580).

To support its claims on confusing similarity the Complainant states that it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words and in this respect invokes previous UDRP cases in which the panels have taken such view (Sanofi-Aventis v. WhoisGuard Protected / Bogdan Mircea, WIPO Case No. D2007-0264; Sanofi-aventis v. Mircea Taralunga, WIPO Case No. D2008-0460; Sanofi-Aventis v. John Adams, WIPO Case No. D2006-0688; and Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721).

The Complainant cites the decision rendered in OLX Inc. v. Ev1 Soft Technologies of Colombia Redes, WIPO Case No. D2011-0501 where the panel’s view was that “the trademark OLX is widely known and that ownership belongs to the Complainant”, and states that the Complainant already obtained the transfer of the confusingly similar domain names and recognition of fame of its trademarks in five UDRP cases.

(iii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name <olxclone.com>.

According to the Complainant, it has registered the OLX trademarks, and has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of its OLX trademark in the disputed domain name.

Furthermore, the Complainant contends that there is no evidence that the Respondent has any rights in any trademarks or services which are identical, similar or related to the disputed domain name. Moreover, the Complainant claims that the disputed domain name is used to provide services of creating clone pages of OLX by charging a small amount of money, which according to the Complainant cannot be legitimate service, since the Respondent does not have any authorization from the Complainant’s side.

Moreover, with regard to the right or legitimate interest of the Respondent in respect of the disputed domain name, the Complainant invokes paragraph 2.1 of the WIPO Overview 2.0, which states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

(iv) The Complainant also contends that the Respondent has registered, and is using the disputed domain name <olxclone.com> in bad faith.

According to the Complainant, the Respondent has registered the disputed domain name in bad faith, because <olxclone.com> was registered after the Complainant’s website “www.olx.com” and the Complainant’s OLX trademarks. The Complainant claims that the trademark OLX was in use before December 2008 in the United States of America, the European Union and Argentina, and in this respect refers the Panel to the registration dates of the same, as provided in the Complaint and Annexes to the latter.

Furthermore, the Complainant contends that, at the time of registration of the disputed domain name, the Respondent must have known of the existence of the Complainant due to the high volume of traffic that the company was receiving. Also, that it is impossible that the Registrant registered the disputed domain name containing the term OLX, which is an original coined word, and the term “clone” with the intention of offering clones of websites for the same purpose as the Complainant’s website, free classifieds.

In addition, the Complainant claims that 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 the holder’s website or location or of a product or service on the holder’s website or location, by attracting the Internet users to the disputed domain name to offer them clone services, and by using the proxy service to prevent the Internet users to know the identity of the Respondent.

(v) Finally, the Complainant requests for the disputed domain name <olxclone.com> to be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy.

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:

“(i) the domain name is confusingly similar to trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith”.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of a number of OLX trademarks in the world, including the European Union, a part of which is United Kingdom, where the Respondent is apparently located. Also, that its OLX trademarks have been extensively used on the Internet through the classified advertising business the Complainant carries on its website “www.olx.com”.

It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of WIPO Overview of WIPO 2.0).

It is evident that the disputed domain name <olxclone.com> incorporates the Complainant’s OLX trademark in its entirety, and that the OLX trademark of the Complainant is clearly recognizable within the same.

The question where the Panel asserts is, whether adding the term “clone” to the letters “olx” is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s OLX trademark.

The Complainant has presented enough evidence showing that it has extensively used its OLX trademark on the Internet through the classified advertising business, and that its website “www.olx.com” has been receiving high volumes of traffic, so that it may be concluded that OLX is a widely known mark within the relevant Internet community. It should be noted that at least two other UDRP panels found that the Complainant’s trademark OLX is widely known and that ownership of the same belongs to the Complainant (see OLX Inc. v. Ev1 Soft Technologies of Colombia Redes, WIPO Case No. D2011-0501; and OLX Inc. v. Domain Bridge Technologies, Ali Akbar Khan / PrivacyProtect.org, WIPO Case No. D2010-2197).

Therefore, the disputed domain name begins with the dominant and distinctive letters “olx”, i.e. the Complainant’s trademark. By the time one reaches the term “clone” in the disputed domain name, one is clearly prepared to see something related to the Complainant. The term “clone” in the sense of a generically identical product, may suggest that they are about to visit a site featuring something other than the Complainant and its products and services, but others may not reach such conclusion. In the Panel’s view, there remains a significant room for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name with the Complainant.

It is therefore safe to conclude that the disputed domain name <olxclone.com> trades on the renown of the Complainant’s OLX trademark. The presence of the Complainant’s OLX trademark in the disputed domain name certainly bears weight as a signal to the potential costumers and the disputed domain name benefits from the same. The latter especially, if one bears in mind that the term “clone” by itself has no distinctive character, and as such can be considered as a common/generic term.

It should be noted, that panels have found the confusing similarity in circumstances involving a “trademark + clone” domain names in several earlier UDRP cases (see Institut Straumann A.G. v. Core-Vent Corporation, WIPO Case No. D2000-0404; Dell Inc. v. None, WIPO Case No. D2004-0511; and Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580). In each of these cases, the term “clone/s” was an addition to a well-known mark that arguably suggested that the corresponding website offered something other than the good or service traded under that mark. However, “confusing similarity” was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the mark itself. Furthermore, in Entertainment Shoping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, the panel found the term “clone” added to the complainant’s distinctive mark SWOOPO in the domain name <cloneswoopo.com> to be a generic term, and as such insufficient to prevent the confusing similarity.

Taking into consideration the renown of the Complainant’s OLX trademark and the initial interest induced by the letters “olx” in the disputed domain name, as well as the previous practice in the UDRP, in this Panel’s view, the term “clone” is not sufficient to overcome the overall confusing similarity between the disputed domain name <olxclone.com> and the Complainant’s OLX trademarks.

As for the applicable top-level “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of WIPO Overview 2.0).

For all foregoing reasons, the Panel finds that the Complainant has satisfied Policy, paragraph 4(a)(i), i.e. has proven that the disputed domain name <olxclone.com> is confusingly similar to the its OLX trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.

In the case at hand, the Complainant has established that it is a holder of a number of OLX trademarks registered in various jurisdictions around the world, and that it has extensively used the same trademark on the Internet through its classified advertising business. Furthermore, the Complainant has stated that it has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of its OLX trademark in the disputed domain name.

The Respondent failed to deliver a Response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered.

The Panel furthermore observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.

In addition, there is no indication that the Respondent is commonly known by the disputed domain name, that it has used the same in connection with bona fide offering of goods and services, or that the Respondent is making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. To the contrary, the Panel finds that it can be safely concluded that the Respondent deliberately chose to include the Complainant’s OLX trademarks in the disputed domain name in order to achieve commercial gain by misleadingly diverting the consumers, and that such use cannot be considered as a legitimate non commercial or fair use.

Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied 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”.

With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant, its OLX trademarks and the Complainant’s business with classified advertising services. The Complainant provided sufficient evidence to show that it established a significant business in online classified advertising under the name OLX prior to the date the disputed domain name was registered. Besides that, on the website under the disputed domain name <olxclone.com>, evidence on which have been provided by the Complainant in the Annex 5 of the Complaint, and on the website “www.yourownclassifieds”, to which the disputed domain name resolves now (as discovered by the Panel on February 7, 2012), the services of creating a classified advertising websites are offered, i.e. creating the websites related to the Complainant’s core business. Therefore, it is safe to assume that the Respondent was aware of the Complainant, its OLX trademarks and the Complainant’s business, and that it has registered the disputed domain name in order to trade on the renown of the Complaint’s trademark. In Panel’s view, it cannot be denied that the word OLX carries distinction and the drawing power for a website which offers classified advertising related services, as discussed above in the “confusing similarity” context.

The Panel finds that, since classified advertising related services were provided under the disputed domain name, the Respondent’s registration and use of the disputed domain name <olxclone.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.

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

Mladen Vukmir
Sole Panelist
Dated: February 10, 2012

 

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