WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX Inc., OLX S.A. v. DomainsByProxy.com / Alvaro Giacoman
Case No. D2013-1000
1. The Parties
The Complainants are OLX Inc. and OLX S.A. of New York, New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
The Respondents are DomainsByProxy.com of Scottsdale, Arizona, United States of America; and Alvaro Giacoman of La Paz, Plurinational State of Bolivia.
2. The Domain Name and Registrar
The disputed domain name <mundoanunciobolivia.com> 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 June 4, 2013. On June 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 Complainants on June 10, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 10, 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 June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 4, 2013.
The Center appointed Alejandro Garcia as the sole panelist in this matter on July 11, 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. Factual Background
A. The Complainants
The Complainants OLX Inc. and OLX S.A. are companies incorporated in the State of Delaware, United States of America. The websites operated by the Complainants host free user-generated advertisements and provide discussion forums.
B. The Complainants' Trademarks
OLX Inc. has registered the trademark MUNDOANUNCIO in respect of services in class 35 in a number of countries, including Argentina, Brazil, Chile, Mexico, Spain, Peru and United States. These registrations predate the registration of the disputed domain name.
C. The Complainants' Domain Names
The Complainants have registered a number of domain names containing the term "mundoanuncio", for example, <mundoanuncio.com.ar>, <mundoanuncio.com.br>, <mundoanuncio.cl> and <mundoanuncio.com.es>.
D. The Respondent
The Respondent did not file a response. The disputed domain name was created on November 10, 2012.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainants argue that the disputed domain name <mundoanunciobolivia.com> is confusingly similar to the MUNDOANUNCIO trademark, in which the Complainants have rights. The Complainants argue that the disputed domain name reproduces the Complainants' trademark in its entirety. It only differs from the Complainants' trademark in that the disputed domain name adds the term “Bolivia”. The Complainants add that the generic Top-level Domain (gTLD) suffix “."com” is a “functional addition” to the disputed domain name. The Complainants further aver that the addition of the term “Bolivia” is not sufficient to distinguish the disputed domain name from the MUNDOANUNCIO trademark, which would lead the public to believe that the disputed domain name is related to the Complainants' activities in Bolivia.
No Rights or Legitimate Interests
The Complainants indicate that they have not authorized, licensed, permitted or otherwise consented to the Respondent's use of the trademark MUNDOANUNCIO in the disputed domain name. The Complainants add that they have rights in the trademark MUNDOANUNCIO which precede the Respondent's registration of the disputed domain name. The Complainants add that they have no relationship with the Respondent, its representatives or its business.
The Complainants add that the Respondent has not acquired any trademark rights related to the disputed domain name and is not commonly known by the disputed domain name. Further, the Complainants argue that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the Respondent develops the same kind of services that the Complainants undertake and identify with the MUNDOANUNCIO trademark.
Registered and Used in Bad Faith
The Complainants argue that the disputed domain name was registered and is used in bad faith.
The Complainants indicate that the disputed domain name was created on November 10, 2012, which is more than nine years after the Complainants started to use the MUNDOANUNCIO trademark in connection with a number of websites. The Complainants add that due to the “high volume of traffic [of the Complainants' websites] "at the time of registration the Respondent knew of the existence of MUNDOANUNCIO and copied its whole structure and organization.”
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
A. Applicable Test
Under paragraph 4(a) of the Policy, the Complainants have the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The 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.
B. Identical or Confusingly Similar
The Complainants have established to the Panel's satisfaction that they have rights in respect of the trademark MUNDOANUNCIO.
The dominant part of the disputed domain name is the term “Mundoanuncio”. This term is identical to the MUNDOANUNCIO trademark registered by the Complainants in different countries. The addition of the term “Bolivia” is insufficient to prevent the existence of confusing similarity with the Complainants' trademark. In this respect, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicates:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark 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 […]”
In the circumstances, the Panel concludes that the disputed domain name <mundoanunciobolivia.com> is confusingly similar to the Complainant's trademark MUNDOANUNCIO within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) Before any notice […] 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] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent 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.”
In this case, the Panel concludes that the Complainants have made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainants' contentions. Accordingly, the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the circumstances of this case and the evidence furnished by the Complainants, which is summarised above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent's website of other online location, by creating a likelihood of confusion with the Complainants' trademark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location. Also, in the Panel's view, the fact that the Respondent did not participate in these proceedings, is further evidence that the disputed domain name was registered and is being used in bad faith.
As a result, the Panel concludes that the Complaint meets the requirements of 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, the Panel orders that the disputed domain name <mundoanunciobolivia.com> be transferred to the Complainants.
Date: July 25, 2013