WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX B.V. v. Tisil Kodithottam / Registration Private, Domains By Proxy, LLC

Case No. D2016-0788

1. The Parties

The Complainant is OLX B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Tisil Kodithottam of Thrissur, India / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.

2. The Domain Names and Registrar

The disputed domain names <olxinfo.com>, <olxinfo.info>, <olxinfo.net> and <olxinfo.org> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint regarding the disputed domain name <olxinfo.com> was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name. On the same date the Registrar 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 April 25, 2016 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 April 27, 2016, adding the remainder of the disputed domain names to the dispute.

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").¹

The Center received an informal Respondent communication on April 26, 2016, in which the Respondent stated: "I don't understand what you send me as I'm not so good in English." The Respondent further advised the Center "there is no point in sending me unnecessary legal like letters."

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint as amended, and the proceedings commenced on April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. The Respondent did not submit a substantive response, and the Center notified the Respondent's default on May 23, 2016.

On the following day, May 24, 2016, the Center received a further informal Respondent communication in which the Respondent represented as follows: "Previously it was told that my site was using same color for logo as that of the OLX which makes people to misunderstand it as OLX. So I have changed the color of logo. Please do check that."

The Center appointed William R. Towns as the sole panelist in this matter on May 30, 2016. 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, founded in 2006 and based in the Netherlands, provides online classified services through which users can connect to share their goods and services. The Complainant has obtained trademark registrations for OLX in a number of countries, including the United States. These registrations, in addition to OLX word mark, include the OLX "Circle" logo and the OLX "Buddy" logo. A number of UDRP decisions have acknowledged that OLX is a well-known mark.

The Respondent registered the disputed domain names <olxinfo.com>, <olxinfo.info>, <olxinfo.net> and <olxinfo.org> on November 21, 2015. The disputed domain name <olxinfo.com> resolves to the "www.olxinfo.com" website, which features a directory of product and service providers. The Respondent's website prominently displays an "OLXinfo" logo that prior to the filing of the Complaint copied the color scheme of the Complainant's OLX "Circle" logo. The Respondent's website contains a link to "www.olx.in", which is represented to be a free local classifieds site. The "www.olx.in" website displays colorable imitations of the Complainant's OLX "Circle" logo and OLX "Buddy" logo. The disputed domain names <olxinfo.info>, <olxinfo.net> and <olxinfo.org> currently do not resolve to any active websites.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the Complainant's OLX marks. According to the Complainant, the Complainant's OLX marks are distinctive and have been recognized by UDRP panels to be well-known marks. The Complainant maintains that the inclusion of the term "info" in the disputed domain names does not dispel the confusing similarity of the disputed domain names with the Complainant's OLX marks, and that the generic Top-Level Domains ("gTLDs") should be disregarded.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent is not affiliated with or sponsored by the Complainant and has not been authorized to use the Complainant's OLX marks. The Complainant maintains that the Respondent is using the disputed domain name <olxinfo.com> with a website that imitates the Complainant's website in respect of design and color, and offers services competing with those of the Complainant. The Complainant further asserts that the Respondent is using colorable imitations of the Complainant's OLX marks and logos on his website. The Complainant submits that the Respondent is attempting to pass his website off as that of the Complainant, or to trick Internet users into believing that the Respondent's website is sponsored or endorsed by the Complainant.

The Complainant asserts that such use of the disputed domain name <olxinfo.com> does not constitute use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent otherwise is not making a legitimate noncommercial or fair use of the disputed domain name <olxinfo.com>. The Complainant observes that the Respondent has made no effort to use the additional disputed domain names <olxinfo.info>, <olxinfo.net> and <olxinfo.org> for any legitimate purpose, which the Complainant submits demonstrates a lack of any rights or interests in these disputed domain names.

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant's rights in the OLX marks when registering the disputed domain names. The Complainant submits that the Respondent is using the disputed domain name <olxinfo.com> in bad faith to intentionally attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's OLX marks as to source, sponsorship or affiliation within the contemplation of paragraph 4(b)(iv) of the Policy. The Complainant further asserts that the Respondent's passive holding of the disputed domain names <olxinfo.info>, <olxinfo.net> and <olxinfo.org> constitutes bad faith registration and use.

B. Respondent

The Respondent did not submit a formal reply to the Complainant's contentions. The Respondent's communications with the Center have been noted above.

6. Language of the Proceeding

According to information received by the Center from the Registrar, the language of the Registration Agreement respecting the disputed domain names is English. The Complaint was submitted in English, and the Complainant has requested that this proceeding be conducted in English. Paragraph 11 of the Rules provides that unless otherwise agreed by the Parties, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of this case.

The Panel concludes that this administrative proceeding should be conducted in English. The Respondent's communications with the Center were in English, and the Respondent's website includes an English language version. The Respondent's communications with the Center confirm his ability to read and understand English. In particular, after receiving the amended Complaint the Respondent advised the Center that he had made changes to the color scheme of the OLX logo on his website based on the Complainant's contention that his use of a color scheme identical to the Complainant's OLX logo was causing confusion.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant's OLX marks, in which the Complainant beyond question has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain names, when directly compared, are identical or confusingly similar.

Applying this standard, the disputed domain names are confusingly similar to the Complainant's OLX marks for purposes of the Policy. The disputed domain names incorporate the Complainant's OLX mark in its entirety, and the addition of the descriptive terms "info" (an abbreviated version of "information") does not serve to distinguish the disputed domain name from the Complainant's marks.

Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between a complainant's mark and a disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000‑1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain names. The Respondent, without the Complainant's authorization or consent, has registered multiple domain names that are confusingly similar to the Complainant's well-known OLX marks, and is using one the disputed domain names with a website that mimics the Complainant's website and offers services competing with those of the Complainant's, while passively holding the other disputed domain names.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.

Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant's OLX marks when registering the disputed domain names. In the absence of any substantive reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain names in order to trade on the goodwill and reputation of the Complainant's well-known OLX marks through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008‑0774. There is nothing in the record to indicate that the Respondent chose the disputed domain names for reasons unrelated to the Complainant. See The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services, WIPO Case No. D2009-0822.

Accordingly, the record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant's marks, and has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. There is nothing in the record to support a claim by the Respondent of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any relevant substantive reply by the Respondent, the Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. The Panel concludes that the Respondent registered and is using the disputed domain name <olxinfo.com> to intentionally attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's OLX marks as to source, sponsorship or affiliation within the contemplation of paragraph 4(b)(iv) of the Policy. In the circumstances of this case, the Respondent's passive holding of the disputed domain names <olxinfo.info>, <olxinfo.net> and <olxinfo.org> also constitutes bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. 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 <olxinfo.com>, <olxinfo.info>, <olxinfo.net> and <olxinfo.org> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: June 13, 2016

¹ The Center requested Registrar verification in connection with the additional disputed domain names following the notification of the Complaint, and the Registrar confirmed that the Respondent was also the registrant of the additional disputed domain names. The Panel has reviewed the Complaint notification records and is satisfied that the notification of the amended Complaint sent to the Respondent identified each of the disputed domain names, and the Registrar's verification confirmed that all of the disputed domain names were registered to the Respondent.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.