WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, Inc. v. Swan Technology
Case No. D2011-1436
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 Swan Technology of Ambernath - East, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <olxindia.com> (the“Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2011. On August 25, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 25, 2011, GoDaddy.com, Inc. 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 August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. The Response was filed with the Center on September 16, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on September 27, 2011. 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
(i) The Complainant
The Complainant is a Delaware company, with subsidiaries in Argentina and China. It operates a website which makes available user-generated classified advertisements for urban communities around the world, and it provides discussion forums sorted by various topics.
According to the Complaint, the Complainant is the proprietor of OLX trademarks registered in several jurisdictions, including Argentina, the United States, and the European Union. Its registration of a stylized OLX Community Trademark has been in effect from February 6, 2006, and the same stylized mark was registered in the United States on September 18, 2007. According to the Complaint, OLX is an original term, coined by the Complainant.
The Complainant’s principal website is the website at “www.olx.com”. The Complainant says that when the Domain Name was registered, the average number of monthly visits to its website was 114,000,000.
The Complainant says that it has not authorized the Respondent to register or use the Domain Name, or to use the Complainant’s trademarks in a domain name. The Respondent has not contested that assertion.
(ii) The Respondent and the Domain Name
The Domain Name was registered on August 18, 2010.
The Response filed by the Respondent was very brief, and only advised that the Respondent has been using the website at the Domain Name to publish a blog providing educational science tutorials, and news and government jobs information, to local people in India. The Respondent has not suggested that it holds any trademark or other relevant rights in the Domain Name.
The Complainant produced screenshots of the website at the Domain Name (“the Respondent’s website”), taken on August 16, 2011. In accordance with normal practice, the Panel has also visited the Respondent’s website. That occurred on September 30, and October 3, 2011.
In general terms, the Respondent’s website matched the description provided by the Respondent in the Response. There was a very prominent heading “OLX India”, and several click-on subheadings, each dealing with some general interest topic (e.g. “home”, “poems”, “cricket”, “news”). There were also a number of jobs advertised, with what appeared to be click-on links to the website of the relevant prospective employer. However, embedded within the text of at least some of the job advertisements and news reports there were direct or indirect links, in some cases via “Infolinks” in-text advertising pages, to third party websites having no apparent connection with the advertised job vacancy or news topic. Many of these third party websites appeared to be commercial in nature.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s OLX mark. The addition of the generic term “india” is not sufficient to distinguish the Domain Name from the Complainant’s mark, as Internet users would believe that the Respondent is the Indian branch of OLX.
2. The Complainant has not authorized the Respondent to use the Complainant’s OLX mark in the Domain Name. The Complainant has no relationship with the Respondent, and the Complainant’s trademark rights pre-date the Respondent’s registration of the Domain Name. The Respondent has no trademark rights in respect of the Domain Name, and is not commonly known by the Domain Name. Nor is the Respondent using the Domain Name in connection with any bona fide offering of goods or services: there cannot be a bona fide offering of services when the Respondent has been using, without authorization, the Complainant’s trademark. Having regard to the foregoing matters, the Complainant has no rights or legitimate interests in respect of the Domain Name.
3. The Respondent registered the Domain Name in bad faith. The Domain Name was registered after the Complainant registered its OLX trademarks, and more than 4 years after the Complainant established its website at “www.olx.com”. The Complainant’s OLX mark was also in use before August 2010 in the United States, Europe, and Argentina. The high volume of traffic to the Complainant’s website means that the Respondent must have known of the existence of the Complainant, and the fact that “OLX” is an original term coined by the Complainant also establishes that the Respondent must have known of the Complainant when it registered the Domain Name.
4. The Respondent has also been using the Domain Name in bad faith. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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.
The Respondent contends:
1. OLX is not a registered trademark in India.
2. It has not been guilty of any bad faith. The Respondent’s website is a blog providing educational science tutorials, news and government jobs information to local people in India. The Complainant, on the other hand, runs a classified website.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It is the registered proprietor of the mark OLX in a number of jurisdictions, and that mark is included in full in the Domain Name. The addition of the geographical expression “India” in the Domain Name does nothing to remove the confusing similarity – the Complainant’s mark is clearly recognizable as such within the Domain Name, and all that has been added is the name of a country, being a common or descriptive term (see WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.2: “… the relevant trademark would generally need to be recognizable as such within the domain name itself, with the addition of common, dictionary, descriptive or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion.”). The “.com” suffix can be ignored in the comparison.
For the purposes of paragraph 4(a)(i) of the Policy, it does not matter that the Complainant’s trademark is not registered in India. Rights in a mark anywhere in the world are sufficient for a complainant to satisfy the “rights” requirement in this subparagraph.
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.
“… 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 this case, the Domain Name is confusingly similar to the Complainant’s mark, which is included in full within the Domain Name. The Complainant has not authorized such use of its mark. The Respondent is not commonly known by the Domain Name, and has not claimed any trademark or other legal rights in it.
Together, those circumstances provide sufficient prima facie evidence of “no rights or legitimate interests”, so the evidentiary burden shifts to the Respondent to show that it has some right or legitimate interest.
The Respondent has failed to discharge that evidentiary onus. It has not denied that it was aware of the Complainant (and its busy website at “www.olx.com”) when it registered the Domain Name, and it has not explained why it chose to register the Domain Name, which includes the unusual expression “olx” coined by the Complainant. The Panel did not note anything on the Respondent’s website which might have explained the use of that expression. The Respondent must also have appreciated that adding the word “india” to the Complainant’s mark in the Domain Name would create the false impression (for those familiar with the Complainant) that any website at the Domain Name would probably be a website created by the Complainant for the Indian market. Although the Respondent’s website looks at first glance to be a community information-style website, the links to third party websites, at least some of which appear to be operated by commercial concerns, suggest that there is also a commercial element to it.
In the foregoing circumstances, the Respondent has failed to persuade the Panel that its use of the Domain Name has been in connection with any bona fide offering of goods or services, or a legitimate non-commercial or fair use. The Panel’s clear view is that the Respondent has deliberately attempted to generate increased traffic to the Respondent’s website by creating the false impression that the Respondent’s website is operated or endorsed by the Complainant, thereby taking advantage of the wide reputation the Complainant has established for its OLX mark in the online classified advertising field.
The Respondent not having suggested any valid basis on which it might be regarded as having any rights or legitimate interests in respect of the Domain Name, the Complainant has made out its case on this part of the Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line 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 the respondent’s website or location.
The Complainant also succeeds on this part of the Complaint, substantially for the reasons set out in section 6B of this decision. The Respondent appears to have known of the Complainant, but has offered no explanation for choosing to register as a domain name an expression which it must have known many people would associate with the Complainant. Nor has it explained the commercial links on the Respondent’s website. In the absence of any explanation for them, the Panel infers that they have probably been provided to provide pay-per-click or other revenue for the Respondent.
In the Panel’s view, the circumstances fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s OLX mark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
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, <olxindia.com>, be transferred to the Complainant.
Dated: October 11, 2011