WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, Inc. v. Azharul Suvo, GMNHOST
Case No. D2014-0530
1. The Parties
Complainant is OLX, Inc. of New York, New York, United States of America, represented by Allende & Brea Law Firm, Argentina.
Respondent is Azharul Suvo, GMNHOST of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <olxbd.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 23, 2014, Complainant requested the Center to suspend the administrative proceedings for a period of 15 days for the purpose of possible settlement between the parties. On April 24, 2014, the Center notified the parties and Registrar of the suspension until May 9, 2014 and informed parties that, upon the expiry of this date, the proceedings would be deemed automatically terminated, unless the Center receives a signed request from Complainant to re-institute the proceedings before such date. On May 8, 2014, the Complainant informed the Center that it requested the administrative proceedings to be re-instituted, which the Center confirmed to parties on May 12, 2014.
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 Respondent of the Complaint, and the proceedings commenced on May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 4, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on June 11, 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
Complainant offers free online classified advertisements and discussion forums for urban communities in Argentina, United States of America, China, India, Europe and elsewhere.
Complainant owns the trademark OLX, both as word mark and device mark, in many countries worldwide, including for services in especially class 35, the first of such applications being European Community Trademark No. 4883741 of February 6, 2006 with a registration date of March 5, 2007.
Complainant’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. On August 5, 2011, Complainant reached a monthly page view of more than 1 billion visitors.
The disputed domain name was registered by Respondent on January 1, 2013.
As at March 6, 2013, there was a classified advertisements website at the disputed domain name. The header of the website incorporates the stylized letters “OLX bd”.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s OLX trademarks as referred to in Section 4. above (the “Trademark”) because it incorporates the entire Trademark and differs only from the Trademark in that it adds the letters “bd” which represents the country code of Bangladesh. In this respect Complainant claims that the addition of “bd” in the disputed domain name does not sufficiently distinguish the disputed domain name from the Trademark because Internet users could believe that Respondent is the Bangladesh branch of Complainant.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name is derived from the Trademark and Complainant’s main domain name <olx.com>, without Respondent having been authorized. Further, Respondent has neither acquired any trademark rights in respect to the disputed domain name, nor is Respondent commonly known by the disputed domain name.
At the time of registration of the disputed domain name Respondent knew of the existence of the Trademark due to the high volume of traffic that Complainant was having. Although it is not a requirement under the Policy that the trademarks which are relied on are registered in the same place of residence of Respondent, Complainant claims to have a strong presence and activity in Bangladesh and the region of India, Pakistan and Afghanistan.
According to Complainant it is impossible that Respondent registered the disputed domain name with the letters “bd”, which represent Respondent’s presumed nationality and the Trademark being an originally coined term, especially given that Respondent uses the disputed domain name for the same purpose as Complainant’s website under its Trademark. It is therefore clear that Respondent was targeting and knew of Complainant when it registered the disputed domain name, and Respondent is also using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark, so that the registration and use of the disputed domain name were in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not reply to Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that respondent’s default does not automatically result in a decision in favor of complainant. Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from Respondent’s default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
A. Identical or Confusingly Similar
The disputed domain name contains the Trademark in its entirety, and adds the letters “bd”. Complainant explained the addition of the letters “bd” as representing the country code for Bangladesh, which country is, according to the information provided by Respondent when it registered the disputed domain name, Respondent’s residence. The Panel agrees with the panel in Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Mohammad Hassan, WIPO Case No. D2005-0823 that, applied to these proceedings, the addition of “bd” to the Trademark in the disputed domain name seems to show “[…] that Respondent is intentionally using Complainant’s mark to confuse internet users into believing that the disputed domain name somehow reflects back to Complainant in Bangladesh”. Consequently the letters “bd” do not eliminate the confusing similarity between the disputed domain name and the Trademark. The Panel is therefore satisfied that the disputed domain name is confusingly similar to the Trademark and that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Complainant claimed that it did not authorize the use of the Trademark to Respondent, and that Respondent has no rights in the disputed domain name. Furthermore, Complainant stated that Respondent uses the website for classified advertisements which are the same as the type of classified listings offered by Complainant under the Trademark. The Panel is satisfied that there is no indication that Respondent has rights in or has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
In absence of a reply from Respondent, the Panel finds that Complainant has made a prima facie case. As a result, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service offered on Respondent’s website or location.
In the Panel’s view, it is obvious that Respondent registered the disputed domain name with the Trademark in mind as, at the time Respondent registered the disputed domain name, Complainant had already operated its website under the Trademark in many countries world-wide, including Bangladesh for many years and has attracted billions of visits to its website. Respondent must have been familiar with the Trademark when it registered the disputed domain name is further enhanced by the fact that it offers the same services as Complainant under the Trademark. In addition, the Panel considers it obvious that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark, as the addition of “bd” to the Trademark in the disputed domain name is apparently used to suggest that Respondent’s website may be the local Bangladeshi website of Complainant.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met.
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 <olxbd.com> be transferred to Complainant.
Date: June 25, 2014