WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX Inc. and OLX S.A. v. Anis Ahmad
Case No. D2012-2416
1. The Parties
Complainant is OLX Inc. and OLX S.A. of New York, United States of America, represented by Allende & Brea, Argentina.
Respondent is Anis Ahmad of Muscat, Oman.
2. The Domain Name and Registrar
The disputed domain name is <olxmuscat.com> which is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2012. On December 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. Respondent transmitted an informal email communication by email to the Center on December 15, 2012. On December 17, 2012, the Center acknowledged receipt of such email communication from Respondent and pointed out that Respondent had 20 calendar days from the date of commencement of this administrative proceeding to submit a Response pursuant to the requirements set forth in the Rules, paragraph 5. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on January 4, 2013.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on January 9, 2013. This Panel finds that it was properly constituted. This 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
Complainant operates websites that host free user-generated classified advertisements for urban communities around the world and discussion fora.
OLX Inc. has rights over the OLX trademark for which it holds a number of trademark registrations in several jurisdictions, such as: registration No. 3626901 with the United States Patent and Trademark Office, registered on May 26, 2009, class 35; and registration No. 1281092 with IP Australia, registered on September 1, 2009, class 35.
Likewise OLX Inc. has rights over the OLX device trademark for which it holds a number of trademark registrations in several jurisdictions, such as: registration No. 4883741 with the European Office for Harmonization in the Internal Market, registered on March 5, 2007, classes 35 and 38; and registration No. 1050271 with the Mexican Institute of Industrial Property, registered on July 17, 2008, class 35.
OLX Inc. also owns the domain name <olx.com> which was created in 1999.
The disputed domain name was registered on September 29, 2012.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
OLX Inc., is a company incorporated under the laws of Delaware, United States of America, with subsidiaries in Argentina and China.
The term OLX was coined by Alejandro Oxenford and Fabrice Grinda, founders of OLX Inc., to identify an online exchange market.
The OLX trademarks have been registered in several jurisdictions, including Argentina, United States of America and the European Union. OLX Inc. also owns a number of domain names around the world containing the OLX trademark, including Mexico, Spain, Chile, Ecuador, Uruguay, Venezuela, Paraguay, Bolivia, Japan, France, Italy, India, Israel, Portugal, Peru, Singapore and many others. OLX Inc., has registered more than 60 domain names in the ccTLD level bearing the trademark OLX. They are all in use for websites with ads, the core business of Complainant. Those domain names were registered before the disputed domain name was registered.
Complainant has developed a successful strategy of location in Buenos Aires, Argentina, and United States of America, China, India and Europe. In the last years, between January 1, 2008 and December 1, 2009 the total number of visitors of “www.olx.com” was 1,766,749,432 and there were 7,769,830,740 pageviews.
OLX Inc., takes care of its intellectual property and has obtained several favorable decisions based on the UDRP for its trademarks OLX and MUNDOANUNCIO.
The disputed domain name is confusingly similar to the OLX trademarks in which OLX Inc. has rights. The disputed domain name is nearly identical to the OLX trademark because it incorporates Complainant’s entire trademark and differs from the OLX trademark only in that it adds the term “muscat”. Muscat is the capital of Oman and is also the seat of government and largest city in the Governorate of Muscat. The addition of the term “muscat” is not sufficient to distinguish them because Internet users would believe that Respondent is the Muscat branch of OLX Inc. Therefore the addition of such geographical term generates more confusion.
Complainant has not authorized, licensed, permitted or otherwise consented to Respondent’s use of the OLX trademark in the disputed domain name. 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 disputed domain name. There cannot be a bona fide offering of services or legitimate business in the offer of online classifieds using the OLX trademark without Complainant’s authorization.
Respondent has not acquired any trademark rights in respect of the disputed domain name, and is not commonly known by the disputed domain name. In sum, Respondent lacks any rights or legitimate interests in the disputed domain name because he is using the disputed domain name to offer “classifieds” doing the same as Complainant does.
There is evidence that the disputed domain name has been registered and is used in bad faith by Respondent. The disputed domain name was registered in September 29, 2012, more than thirteen years after Complainant’s web site and the OLX trademarks were in use in commerce and with a high volume of traffic as evidenced by the Google Analytics Report.
Respondent has registered the disputed domain name in bad faith because it was registered after Complainant’s website was in use and after the OLX trademarks were registered. At the time of registration, Respondent knew of the existence of Complainant due to the high volume of traffic that Complainant was having and considering that OLX is a notorious trademark intensively used and registered all around the world long time before the registration of the disputed domain name. In this respect, there is no need that Complainant’s trademark be registered in Respondent’s same place of residence.
It is impossible to have registered a domain name containing the terms “Muscat” (Respondent presumed citizenship) and OLX (Complainant’s main trademark being an original coined term) and using it for the same purpose as Complainant website (free classifieds) without knowing the existence of Complainant. It is clear that Respondent was targeting and knew of Complainant when he registered the disputed domain name.
Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark. Evidence of the use in bad faith of the disputed domain name constitutes the use of ads using Google AdSense with links to Complainant’s competitors (for example to “www.barilocherentapartments.com” offering rental apartments in Bariloche, Argentina).
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions. Respondent’s informal email communication to the Center of December 15, 2012, states: “Thanks for emailling me. Can i ask you how i cam appeal against this case? My domain www.olxmuscat.com is different from www.olx.com so how they can claim the domain right against my domain. I don’t agree with their opinion. I didn’t done any thing wrong. Please dismissed this case because the domain this different from their domain”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
The informal email communication from Respondent referred to above cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). Even though after such email communication from Respondent the Center reminded Respondent of the period to file a formal response, Respondent chose not to file any formal response. Thus this Panel has decided not to take into account such email communication from Respondent.1
The lack of a formal response from Respondent does not automatically result in a favorable decision for Complainant.2 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the OLX trademark.
The disputed domain name entirely incorporates the OLX trademark, adding the suffix “muscat”. The addition of such suffix is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; Viacom International Inc. v. Emperor Sedusa, WIPO Case No. D2001-1438).
Therefore, this Panel finds that the disputed domain name is confusingly similar to the OLX trademark over which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent is using the disputed domain name as the address of a website offering a product, namely online ads, substantially similar to that provided by Complainant under the OLX trademark and the “www.olx.com” website.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3. In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates the OLX trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s registration and use of the OLX trademark and <olx.com> domain name preceded the creation of the disputed domain name, Complainant’s Internet presence and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been aware of the existence of Complainant’s website at the time Respondent obtained the disputed domain name.
Respondent is using Complainant’s trademark at the disputed domain name without Complainant’s authorization. Further, the use of the disputed domain name for a website that displays content generically similar to that featured in Complainant’s “www.olx.com” website constitutes an improper use of Complainant’s trademark.4
Further, this Panel considers that in using the disputed domain name Respondent has sought to create a likelihood of confusion with Complainant and the OLX trademark as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <olxmuscat.com> be transferred to Complainant.
Date: January 23, 2013
1 Similar situations in LEGO Juris A/S v. Charlie Carmichael, WIPO Case No. D2010-1507 and in World Wrestling Entertainment, Inc. v. Ki Sung, WIPO Case No. DMX2009-0005, where this Panel also declined to take into account as official response an email communication.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Bartercard Ltd & Bartercard International Pty Lt . v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor […] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark […] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”. See also Cine Craft Limited v. Team Cinipac Hosting Whois Protection, WIPO Case No. D2009-1560.