WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX, Inc. v. Berry Mhlongo

Case No. D2014-1657

1. The Parties

The Complainant is OLX, Inc. of New York, New York, United States of America (“US”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Berry Mhlongo of Tzaneen, Limopo, South Africa.

2. The Domain Name and Registrar

The disputed domain names <olx-bangalore.com>, <olx-chennai.com>, <olx-mumbai.com> and <olx-olx.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2014.

The Center appointed Antony Gold as the sole panelist in this matter on November 7, 2014. 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 Complainant was incorporated in the US in 2006. It operates online trading websites, under the trade mark OLX, which enable users to buy and sell a wide variety of goods. It operates in a large number of jurisdictions and has trade mark rights for OLX in numerous countries, the first such trade mark being filed in the US in February 2006 and registered on September 18, 2007 (registration No. 3295467).

The Respondent is based in South Africa and has registered four disputed domain names, namely;

- <olx-chennai.com> registered on July 18, 2014 (“the first disputed domain name”);

- <olx-olx.com registered on July 28, 2014 (“the second disputed domain name”);

- <olx-bangalore.com> registered on August 1, 2014 (“the third disputed domain name”);

- <olx-mumbai.com> registered on August 2, 2014 (“the fourth disputed domain name”).

Prior to their removal, the websites to which the disputed domain names pointed purported to offer services which were similar to those provided by the Complainant. The Respondent did not reply to a letter sent to it by the Complainant’s representatives on August 21, 2014, seeking a transfer to it of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which it has rights.

The Complainant explains that it is based in New York, US, and operates a substantial online trading platform under the OLX brand. It says that its services are available in over 107 countries, that its services are available in over 42 languages and that its OLX-branded websites receive more than 100 million unique user hits each month. The Complainant has provided details of its trade mark protection for OLX. The first OLX trade mark, in a stylized form, was applied for in the US on February 2, 2006. The Complainant now has trade mark protection in multiple jurisdictions for OLX, both in word only form and in a variety of stylizations. The Complainant has also provided a schedule of domain names it has registered in a large number of top level domains, all of which comprise or include the word “olx”.

The Complainant says that each of the disputed domain names is confusingly similar to its OLX trade mark. In respect of the first, third and fourth disputed domain names it says that the addition of geographic terms, namely Chennai, Bangalore and Mumbai to a word which is identical to its trade mark does not prevent these disputed domain names from being confusingly similar to the mark. The Complainant says that this is particularly the case because Chennai, Bangalore and Mumbai are three of the largest cities in India and the Complainant runs India’s largest online marketplace through its website at “www.olx.in”. The Complainant refers to the decision in PepsiCo,Inc. v QWO, WIPO Case No. D2004-0865, in which the addition of “Afghanistan” to the trade mark PEPSICO was found to be completely insufficient to dispel any confusion arising from the respondent’s use of the complainant’s trade mark. So far as the second disputed domain name, <olx-olx.com>, is concerned, the Complainant says that mere repetition of “olx” does not prevent this disputed domain name from being confusingly similar to its trade mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It says that it has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain names nor anything else that might suggest that the Respondent has been using “olx” in a way which would give it any rights in the name. Further, it says that there is no evidence on the record to suggest that the Respondent is commonly known by the disputed domain names. It points out that the Respondent’s name on the WhoIs record, Berry Mhlongo, does not resemble the disputed domain names in any manner. Moreover, the Complainant says that no license or authorization of any kind has been given by it to the Respondent to use its OLX trade mark and that the Respondent has never had any form of business relationship with it. The Complainant states that the Respondent has not been using the disputed domain names in connection with a bona fide offering of goods or services. It points out that the colour scheme and structure of the websites to which the disputed domain names had pointed before they were taken down had rendered those websites almost identical in appearance to the Complainant’s websites. The Complainant draws attention to the decision Drexel University v. David Brouda, WIPO Case No. D2001-0067, in which the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.

Lastly, the Complainant contends that the disputed domain names were registered and used in bad faith. In terms of bad faith registration, the Complainant points out that, as at the time the disputed domain names were registered, that is between July and August 2014, the majority of the Complainant’s trade marks had been registered and its primary website at “www.olx.com” had been launched, as had its corresponding websites for use in India and South Africa. The Complainant adduces statistics of usage of its websites to establish that they are very popular. It says that the fact that the order and structure of the Respondent’s websites were practically identical to the Complainant’s websites demonstrates that the Respondent clearly had the Complainant and its business in mind as at the date of registration. Indeed, it had been specifically targeting the Complainant’s customers and falsely attempting to pass itself off as the Complainant. The Complainant says that it was the fame of the Complainant’s business that motivated the Respondent to register the disputed domain names and that the similar format of the websites to which the disputed domain names had initially pointed showed that the Respondent had been trying to sponge off the Complainant’s fame and brand.

The Complainant draws attention to another proceeding it has commenced against the Respondent under the Policy in relation to the domain name <olx-delhi.com>, namely OLX, Inc. v. Berry Mhlongo, WIPO Case No. D2014-1415, and says that as the Respondent has registered at least five domain names that are confusingly similar to the OLX trade mark, the Respondent has engaged in a pattern of conduct of registering multiple domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and that this comprises bad faith registration as described in paragraph 4(b)(ii) of the Policy.

The Complainant says that it did not receive a reply to a letter it sent to the Respondent seeking a voluntary transfer of the disputed domain names and it draws attention to decisions under the Policy in which panels have found that a respondent’s failure to reply to cease and desist letters indicates bad faith registration and use of a domain name.

The Complainant also says that, before it took action to have the websites to which the disputed domain names pointed taken down for brand abuse, the Respondent had been using the disputed domain names to intentionally attempt to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. In this respect the Complainant says that the disputed domain names are intended to create the impression that the disputed domain names belong to or are affiliated with the Complainant. It says that there is a risk that the trade public will perceive the disputed domain names as either owned by the Complainant or as operated by someone in commercial partnership with it and that the Respondent is unfairly exploiting the goodwill and fame attached to its trade mark. The Complainant says that this constitutes both bad faith registration and use under the paragraph 4(b)(iv) of the Policy. Moreover, the Complainant says that the disputed domain names have been disprupting its business which also amounts to bad faith registration and use under paragraph 4(b)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has a large number of trade marks and service marks for OLX registered in many jurisdictions, including the US, India and the European Union. It clearly has trade mark rights in OLX.

The next issue for consideration is whether each of the disputed domain names is confusingly similar to OLX. For these purposes it is well established that that the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in each of the disputed domain names may be disregarded for the purpose of making the comparison. The first, third and fourth disputed domain names comprise the Complainant’s trade mark OLX to which is then added the name of a city in India. The information the Complainant has provided about the very large numbers of customers who visit its websites establishes that the Complainant’s trade mark is very well-known in numerous countries across the world. It is also inherently distinctive and the addition of the name of a city to “olx” would, as the Complainant has asserted, signify to most Internet users that any website to which such a domain name pointed comprised a website operated by the Complainant in order to provide services to that city. Accordingly the three disputed domain names which have these characteristics remain confusingly similar to the Complainant’s OLX trade mark.

So far as the remaining disputed domain name, <olx-olx.com>, is concerned, merely using the Complainant’s OLX trade mark twice does not prevent this domain name from being confusingly similar to that trade mark.

Accordingly, the Panel finds that each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

Dealing with each of the above examples in turn, the use of the disputed domain names in order to establish websites the colour, appearance and apparent purpose of which is evidently intended to confuse Internet users into believing they have accessed a website under the control of the Complainant cannot be a bona fide offering of goods and services. As the panel explained in Drexel University v. David Brouda, WIPO Case No. D2001-0067, if a respondent has chosen a domain name in order to create an impression of association with the complainant, that does not give the respondent a right or legitimate interest in the domain name. Second, there is no evidence to suggest that the Respondent has ever been known by the word “olx” or any name identical or similar to the disputed domain names. Third, the use to which the disputed domain names have been put, as outlined above, does not amount to a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. Moreover, the Complainant has stated that it has never had any dealings with the Respondent and that it has not given the Respondent any form of express or implied authority to use its brands.

As the Complainant says, none of these grounds nor any other basis by which the Respondent might contend that it has a legitimate interest, are applicable on these facts. The Respondent has chosen not to attempt to explain why it might have a legitimate interest or right in the disputed domain names. Having regard to all of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

As at the dates of registration of the disputed domain names in July and August 2014, the Complainant’s business was very well established and trading under the OLX trade mark in numerous countries across the world, including in South Africa where the Respondent resides. Following registration of the disputed domain names, the Respondent promptly established websites to which the disputed domain names pointed which amounted to near-replicas of the Complainant’s website. This clearly establishes that the Respondent was well aware of the Complainant’s business as at the date of registration of the disputed domain names.

Paragraph 4(b)(ii) of the Policy provides that among the circumstances in which bad faith registration will be found is if a respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) comments that “A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks”. In addition to the four instances of the Respondent having registered domain names which are similar to the Complainant’s trade marks in these proceedings, there is a further instance, the subject of a separate complaint by the Complainant, in relation to the domain name <olx-delhi.com> (OLX, Inc. v. Berry Mhlongo, WIPO Case No. D2014-1415). Since the filing of this Complaint, an order has been made by the panel in that case transferring the domain name to the Complainant.

The use which the Respondent has made of the disputed domain names falls within the example of bad faith set out at paragraph 4(b)(iv) of the Policy namely by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Panel accordingly finds that the disputed domain names have been registered and 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 disputed domain names <olx-bangalore.com>, <olx-chennai.com>, <olx-mumbai.com> and <olx-olx.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: November 21, 2014