WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqib
Case No. D2013-0473
1. The Parties
The Complainant is OLX, Inc. - OLX S.A., New York, United States of America (“United States”), represented by Allende & Brea Law Firm, Argentina.
The Respondent is PrivacyProtect.org / Saqib, N/A, Rana Saqib of Nobby Beach, Queensland, Australia and Punjab, Pakistan, respectively.
2. The Domain Name and Registrar
The disputed domain name <olx2.com> is registered with Cloud Group Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2013, 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 March 13, 2013 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 on March 13, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 8, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on April 15, 2013. 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. Identity of the Complainant
In the parties section of the Complaint, the Complainant is described as OLX Inc – OLX S.A.. The Complaint then goes on to say that “[t]he Complainant in this administrative proceeding is OLX Inc. and OLX S.A. (hereinafter OLX) a company duly incorporated under the laws of Delaware, USA respectively, with domicile at 485 Seventh Avenue Suite 507, New York, NY 10018, United States”. Later, the Complaint states that the OLX Inc. is duly incorporated under the laws of Delaware and that it also has subsidiaries in Argentina and China.
The Complaint therefore paints a confusing picture. It does not identify clearly where OLX S.A. is incorporated or explain the relationship between that company and OLX Inc. It may well be that OLX S.A. is the Argentinian subsidiary of the United States corporation OLX Inc. but this is not stated. Instead, OLX S.A. is treated almost as if it were interchangeable with OLX Inc.
Accordingly the Panel will proceed on the basis that OLX Inc. is the sole Complainant.
5. Factual Background
The Complainant has traded under the name “olx” since at least 2007. It offers free online classified advertisements and discussion forums for urban communities in Argentina, United States of America, China, India, Europe and elsewhere.
The Complainant owns a range of registered trade marks for “OLX” including United States Trade Mark No. 3295467 for the stylised letters “OLX” dated September 18, 2007, and No. 3626901 for the word “OLX” dated May 26, 2009, both in class 35.
The Complaint’s main website is at “www.olx.com”. Between January 1, 2008 and December 1, 2009, there were some 1.7 billion visits to this website.
The Complainant’s logo, which is displayed on its website, comprises the stylized letters “OLX” in purple, green and orange respectively.
The disputed domain name was registered on November 28, 2012.
As at March 6, 2013, there was a classified listings website at the disputed domain name. The header of the website incorporated the stylized word “OLX2” with the letters OLX in white font within green, purple and orange circles respectively.
6. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trade mark. It incorporates the Complainant’s entire trade mark and differs only in that it adds the number “2”. The addition of the number “2” is not sufficient to distinguish the disputed domain name from the Complainant’s trade mark because Internet users would believe that the website at the disputed domain name is a version of the Complainant’s famous OLX website. The trade mark remains the most prominent element in this combination and this may cause the public to think that the disputed domain name is somehow connected with the Complainant.
Rights or Legitimate Interests
The Complainant has not authorised, licensed, permitted or otherwise consented to the Respondent’s use of the mark OLX in the disputed domain name.
There is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the disputed domain name.
It cannot be legitimate for the Respondent to offer online classified advertisements using the Complainant’s trade mark without the Complainant’s authorisation.
The Respondent has not acquired any trade mark rights in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. Nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services.
Registered and Used in Bad Faith
It is inconceivable that the Respondent did not know of the Complainant’s trade marks when it registered the disputed domain name. This occurred long after registration of the Complainant’s trade marks. Furthermore, as at the time of registration the Complainant had attracted a high volume of traffic to its websites and its trade mark was well-known worldwide.
It is impossible that the Respondent registered the disputed domain name, containing the coined term “OLX” plus the number “2”, and used it for the same purpose as the Complainant without knowing of the existence of the Complainant’s trade mark. In fact, the Respondent has copied the colours of the Complainant’s logo.
The Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' mark.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark OLX by virtue of its registered trade marks. The Complainant has also acquired common law rights derived from extensive trading under the name “OLX”.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that UDRP panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the common numeral “2” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 the 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.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
Nor is there any evidence that paragraphs 4(c)ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive trade mark in mind. Not only was the Complainant’s business well-established by the date of registration of the disputed domain name, the Respondent thereafter used the disputed domain name to offer exactly the same online classified service as the Complainant - although there is no other obvious connection between the disputed domain name and that particular service. Furthermore, the Respondent has used a logo which is strikingly similar to that of the Complainant.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 name <olx2.com> be transferred to the Complainant.
Date: April 29, 2013