WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX Inc., OLX S.A. v. Privacy Protect/ Raees Ur Rehman
Case No. D2012-1245
1. The Parties
Complainants are OLX Inc. of New York, New York, United States of America and OLX S.A. of Buenos Aires, Argentina (hereinafter collectively referred to as “the Complainant”), represented by Allende & Brea Law Firm, Argentina.
Respondent is Privacy Protect.org of Bobby Beach, Queensland, Australia/ Raees Ur Rehman of Manshera, North-West Frontier, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <olxads.com> (“Domain Name”) is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 19, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the Domain Name. On June 22, 2012, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 25, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In response to this notice and to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 26, 2012.
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 Respondent of the Complaint, and the proceedings commenced on June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2012.
Respondent filed an informal email communication on June 28, 2012.
The Center appointed Clive L. Elliott as the sole panelist in this matter on July 25, 2012. 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
According to UK2 Group Ltd, the Domain Name was registered on March 19, 2012.
5. Parties’ Contentions
Complainant states that it is a company registered and incorporated under the laws of Delaware, with subsidiaries in Argentina and China. Complainant advises that its website <olx.com> hosts free user-generated classified advertisements for urban communities around the world and provides discussion forums sorted by various topics. Complainant asserts that it’s “OLX” trademarks have been filed and registered in several countries including Argentina, Australia, United States of America, India, Pakistan and the European Union. It also states that its OLX domain names have been registered with gTLD and different ccTLD suffixes around the world, and that it has registered more than 60 domain names in the ccTLD’s bearing the trademark OLX, all of which are in use for websites with classified ads, being the core business of the company. Complainant states that its domain name <olx.com> was registered in 1999.
Complainant asserts that the name OLX was coined by Mr. Alejandro Oxenford and Fabrice Grinda, founders of OLX, to identify an online exchange market, which is similar to the one designed by Craigslist, to provide free online classifieds.
Complainant advises that it has developed a successful strategy of location in Buenos Aires, the United States of America, China, India and Europe and that between January 1, 2008 and December 1, 2009 the total number of visitors in <olx.com> was 1,766,749,432, with 7,769,830,740 page views. Complainant submits that at the time of registration Respondent must have known of the existence of OLX due to the high volume of traffic that Complainant was having.
Complainant asserts that the Domain Name is nearly identical to its OLX trademark because it incorporates Complainant’s entire trademark and differs only by the addition of the common term “ads”, which Complainant submits is not sufficient to distinguish a mark from the trademark OLX and the domain name <olx.com>.
Complainant contends that the trademark OLX is the most prominent element in the Domain Name and believes that it will cause the public to think that the Domain Name is connected with the owner of the OLX trademark. Complainant further contends that the addition of the word “ads” to the OLX trademark does not eliminate the confusion between OLX and the Domain Name, because “ads” is a descriptive component of the Domain Name and it also describes Complainant’s main business.
Complainant alleges that it has successfully obtained transfers of domain names confusingly similar to its trademark in five separate cases and as a result has recognition of the fame of its trademarks.
Complainant advises that it has registered the trademark OLX, and has not authorized, licensed, permitted or otherwise consented to Respondent’s use of the mark OLX in the Domain Name.
Complainant contends that there is no evidence to show that Respondent has any rights in any trademarks or service marks which are identical, similar or related to the Domain Name, and suggests that Respondent lacks any rights or legitimate interest in the Domain Name because Respondent is using the Domain Name to offer “free classified advertising” which is the same business as Complainant does. Complainant submits that there cannot be a legitimate business in the offering of online ads using the OLX trademarks without its authorization.
Complainant asserts that Respondent has registered the Domain Name in bad faith because it was registered after Complainant’s OLX’s website was in use and after the OLX trademarks were registered. Complainant contends that the trademark OLX was in use before December 2008 in the United States of America, March 5, 2007 in the European Union, and June 1, 2007 in Argentina.
Complainant alleges that Respondent is intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainants’ mark, and that Respondent is using Facebook in order to attract more users, by taking advantage of Complainant’s traffic and confusing the consumers by using Complainant’s logo. Complainant asserts that Respondent is also using Complainant’s logo on its Twitter page.
Respondent did not submit a formal response to Complainant’s contentions by the due date of July 18, 2012. However, Respondent did forward an email to the Center on June 28, 2012 advising that his name was Asim Shahzad and he is the owner of <olxads.com>.
Respondent states that he is a lecturer in the Computer Science Department of Hazara University in Mansehra, Pakistan. Respondent asserts that he is studying towards a Ph.D. in Computer Science and is currently doing research on digital reference services and SEO techniques. Respondent asserts that he is running the Domain Name for research purposes and he is implementing his new SEO techniques on this site. Respondent contends that closing the Domain Name will affect his research work and prevent him from completing his Ph.D. research.
Respondent submits that there is a lot of difference between the Domain Name and Complainant’s website <olx.com> and suggests that there are many other sites containing the word OLX that Complainant does not own. Respondent suggests that Complainant has laid the Complaint because his research work is successful and his new SEO techniques are working, and as a result the Domain Name is the fastest growing website on the Internet without paid marketing.
Respondent asserts that it has cost him time and money working on his project and he could implement his techniques on a new site if Complainant were to reimburse him for the work he has done so far.
6. Discussion and Findings
For the reasons set out below the Panel finds that Complainant has established all elements of the Policy and is entitled to the relief it seeks.
A. Identical or Confusingly Similar
Complainant asserts that it has registered in several countries the trademark “OLX” (hereinafter the “OLX Trademark”) and registered more than 60 domain names in the ccTLD’s bearing the OLX Trademark. It asserts, without contradiction, that the Domain Name is nearly identical to the OLX Trademark because it incorporates Complainant’s entire trademark and differs only by the addition of the common term “ads”, which Complainant submits is not sufficient to distinguish the Domain Name from the OLX Trademark.
Complainant relies upon rights acquired through its registration and use of the OLX Trademark. Such rights date back to approximately 1999, even though the trademark registrations are of more recent vintage. This is well before the date of registration of the Domain Name.
Complainant contends that the OLX Trademark is the most prominent element in the Domain Name and that it will cause the public to think that the Domain Name is connected with the owner of the OLX Trademark. The OLX Trademark is an unusual one and there is merit in Complainant’s submission that the addition of the word “ads” to the OLX Trademark does not eliminate confusion, because “ads” is a descriptive component of the Domain Name and it also describes Complainant’s main business.
It follows that the overall impression is that the Domain Name is necessarily connected in some way to Complainant and/or its OLX Trademark.
On this basis it is found that:
a) Complainant has rights in respect of the OLX Trademark.
b) The Domain Name is confusingly similar to the OLX Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is using the Domain Name improperly by offering “free classified advertising” which is in the same business area as Complainant and that this cannot be regarded as legitimate. Further, Complainant alleges that Respondent is using Facebook and Twitter in order to attract more users, by using the OLX Trademark on these sites.
Respondent did not file a full formal response. However, Respondent did provide some explanation by way of email. The Panel is prepared to exercise its discretion in favour of Respondent to admit this informal evidence. Respondent suggests that it is using the Domain Name for purposes of search engine optimization (SEO) going on to submit that his new SEO techniques are working well and that as a result the Domain Name is the fastest growing website on the Internet without paid marketing.
This does not explain why Respondent is offering “free classified advertising” which, as noted above, is in the same business area as Complainant. Nor does Respondent explain why he chose the Domain Name, when it is so similar to the OLX Trademark.
The Panel infers that the Domain Name is being employed, either directly or indirectly, as a means of attracting or diverting Internet customers. The business model of registering well-known trademarks and names as domain names and deriving small but regular revenue from “click through” business is well-known and the Panel, on the evidence before it, is unable to find a distinction between this business model and the so-called search engine optimization which Respondent is supposedly involved in.
On this basis it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent is engaged in conduct which is likely to attract or divert Internet users to its website, thereby creating a likelihood of confusion with Complainant and/or the OLX Trademark, it may, in appropriate cases, be a relatively small step to finding bad faith.
Complainant asserts that Respondent has registered the Domain Name in bad faith because it was registered after Complainant’s OLX’s web site was in use and after the OLX Trademark was registered. This assertion has merit.
In the absence of proper explanation from Respondent the Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to avail themselves of Complainant’s free online classifieds. Further, the Panel finds that such Internet users are likely to be attracted to Respondent’s website and be misled as to its origins, sponsorship or association and observes that perhaps this explains, at least in part, why Respondent’s website is so successful.
The Panel thus finds that the third limb of the Policy has been met.
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 <olxads.com> be transferred to the Complainant.
Date: August 8, 2012