WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, B.V. v. Abdul Ahad / Domains By Proxy, LLC
Case No. D2015-0271
1. The Parties
The Complainant is OLX, B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Abdul Ahad of Lahore, Punjab, Pakistan / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, represented by Hyat & Meerjees, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <olx.global> 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 February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2015, 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 (which initially identified only the domain name privacy service: Domains by Proxy). The Center sent an email to the Complainant on February 23, 2015 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 amendment to the Complaint on February 23, 2015.
The Center verified that the Complaint together with the amendment to 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 February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Response was filed with the Center on March 17, 2015.
On March 30, 2015, the Complainant requested a suspension of the proceedings until April 30, 2015, to investigate whether there was any possibility of initiating settlement discussions. On March 30, 2015he Center confirmed the suspension of the proceedings for the requested period.
The Respondent sent an email to the Complainant and copying the Center, on April 3, 2015. That email referred to “the on going dispute, a case was filed by Mr. Abdul Ahad which is pending adjudication at the Learned Civil Court Lahore.” In that email, the Respondent claimed that “several remedies have been sought which inter alia include: the permission to use the trademark OLX (final relief), and an an (sic) injunction to the effect of suspending the operations of OLX.PK and GODADDY.COM.” The Respondent stated that it would not press for the injunctions for the time being, as the Complainant had sought a suspension of the administrative proceedings in the case to consider settlement.
On April 29, 2015, the Complainant requested an extension of the suspension until May 30, 2015. The Respondent sent an email to the Center apparently contesting that request, and claiming that the Complainant had made no attempt to negotiate. On April 30, 2015, the Center emailed the parties noting that its practice is not to grant such extensions, except in exceptional circumstances. As it appeared that the parties were not able to otherwise settle the dispute, the Center proceeded to appoint the Panel.
On May 7, 2015, the Complainant submitted a supplemental filing “due to statements made by the Respondent in its response to the UDRP complaint in relation to trademark rights, legitimate interest as well as registration and use in bad faith, disclosing circumstances that were not known to the Complainant at the time of filing.”
The Center appointed James A. Barker as the sole panelist in this matter on May 14, 2015. 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 is the owner of registered trademarks for OLX. The Complainant’s marks are registered in the European Union, the United States, and in Pakistan, where the Respondent has his address.
The Complainant operates online classifieds sites that enable users to buy and sell goods, including vehicles, real estate, tickets, and electronics; solicit and offer services, such as babysitting, event services, and repairs; design ads to post on the Complainant’s website; display ads on profiles across social networking sites, such as Facebook; and search for jobs across numerous locations and industries.
The Complainant was founded in 2006 and is based in Hoofddorp, the Netherlands. The Complainant is one of the world’s leading free online classifieds platforms. The Complainant is present in over 40 countries and its service is available in 42 languages. Together with its affiliated company OLX Inc., the Complainant has registered domain names, including country code domain names, incorporating its OLX trademark. This includes a website at “www.olx.com”. The Complainant’s websites attract a high amount of visitors, for example, ”www.olx.in” has a rank of 23 on the Alexa Traffic Rank in India, and 362 worldwide.
The Complainant’s mark has been the subject of previous decisions under the Policy. These include OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037,where it was stated that: “The Panel recalls that the trademark OLX is a well-known trademark...” In OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqiband, WIPO Case No. D2013-0473, the Panel stated that: “The Complainant has rights in the mark OLX by virtue of its registered trademarks. The Complainant has also acquired common law rights derived from extensive trading under the name ‘OLX’.”
The disputed domain name has a “creation date” of September 9, 2014 (as listed in the WhoIs record).
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to its trademark. The Complainant’s mark is entirely incorporated in the disputed domain name. The addition of the new generic Top Level Domain (“gTLD”) “.global” does not distinguish the Complainant’s mark.
The Complainant also claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using the letters “olx” in any other way that would give it any legitimate rights in the name. The Complainant has not licensed or authorized the Respondent to use its trademark, and neither is the Respondent making a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website with sponsored links. By doing this, the Respondent is not only misleading Internet users for commercial gain, but is also potentially causing the Complainant to lose traffic intended for its official websites, disrupting the Complainant’s business in the process.
Lastly, the Complainant says that the Respondent registered and used the disputed domain name in bad faith. The Respondent is not making a legitimate fair use of the disputed domain name, but is misleadingly diverting Internet users to a website with sponsored links for commercial gain.
The Complainant first tried to contact the Respondent on December 11, 2014, through a cease-and-desist letter. The Respondent replied that it would transfer the disputed domain name if the Complainant paid USD 50,000 to cover the Respondent’s claimed out of pocket expenses. As the Complainant’s efforts to solve this matter amicably were unsuccessful, the Complainant chose to file a Complaint according to the UDRP process. It is clear from this correspondence that the Respondent wanted to sell the disputed domain name to the Complainant for an amount exceeding its out of pocket expenses.
The Respondent claims at all material times to have been involved in the business of poultry and breeding of rare species of birds in the name of “Obaid Latif XeroX Global Breeding Services”. After developing a network of clients all over Pakistan, the Respondent decided to expand to his target market in foreign countries. The Respondent claims that it incurred USD 50,000 in the purchase of the disputed domain name, pursuant to an agreement with its agent to enter into an online auction for the disputed domain name. The Respondent provides as evidence an agreement dated October 14, 2014 with an entity called “Off-Road Studios” which, under a heading “Price payment Structure”, suggests that the Complainant would pay Off-Road Studios USD 50,000 for the “one-time cost of procurement of the domain OLX.GLOBAL” and USD 10,000 for website design and development.
The Respondent says that it received an email in February 2015 from the Registrar, indicating that, because the disputed domain name would be the subject of a domain dispute, the Respondent’s privacy services had been cancelled as per the domain name proxy agreement. The Respondent says that it has instituted a civil suit in Pakistan against the Registrar and Privacy Service for a breach of trust in this connection, and provides a copy of its filed suit.
The Respondent also appears to claim that a number of issues should be considered in this proceeding, including whether the Complainant made any attempt to buy or to prevent the sale of the disputed domain name by the Registrar; whether this proceeding should continue given the suit filed by the Respondent; whether the Complainant’s mark has been registered in Pakistan where the Respondent operates; and whether the Complainant could properly withdraw its offer of paying the out of pocket expenses of the Respondent. The Respondent claims that its use of the disputed domain name is not in conflict “with OLX.BV in any manner whatsoever”, as the Respondent purchased the disputed domain name to be used from Pakistan.
The Respondent claims that, because it operates in a niche market (the distribution of “poultry related products” and the “breeding of rare species of animals”) which has no similarity to the business of the Complainant, there cannot be any confusion with the Complainant’s business.
The Respondent claims a legitimate interest in the disputed domain name based on its business. The Respondent says that it was not seeking to create an impression of association with the Complainant. The Respondent undertakes to take all reasonable precautions to eliminate any confusion with the Complainant “once the website is lodged”.
In relation to the allegations of bad faith, the Respondent denies that the disputed domain name is for sale. The Respondent says that it accepted the offer made by the Complainant, and had informed the Complainant that its out of pocket expenses were USD 50,000. The Respondent denies that it intended to disrupt the Complainant’s business or that it is a competitor of the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed below, immediately after a discussion of the Respondent’s court filing and the Complainant’s supplemental filing.
A. Respondent’s filing of court proceedings
The Respondent provides evidence of filing a civil suit in Pakistan against the Complainant and other parties for specific performance and damages in connection with the disputed domain name. Paragraph 18(a) of the Rules provides that, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(“WIPO Overview 2.0”) “[a] panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis.”
Accordingly, the Panel considered whether suspension or termination is appropriate, or whether it should proceed to decision.
The Panel considers that factors against suspending or terminating a proceeding, outlined by the majority in Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc., WIPO Case No. D2008-1285, apply similarly in this case. The court in Pakistan has apparently not reached a decision in response to the Respondent’s filing. A conclusion in these proceedings does not prevent the Respondent from continuing its court action in Pakistan, nor prevent either party from pursuing other legal remedies. The Panel considered that it could evaluate this case separately to the court proceedings and, as such, has proceeded to a decision.
B. Supplementary Filing of Complainant
As outlined above, the Complainant filed a supplemental submission. As noted by the Center in acknowledging that filing, neither the Policy nor the Rules include express provision for such a submission. A Panel has the discretion to admit or invite filings under paragraphs 10(a), (b), (d), and 12 of the Rules, including further filings to a party’s main submission.
In general, previous panels have considered that supplemental filings should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
The Complainant claims that it made the supplemental filing on the basis that the Response raises issues that the Complainant could not have known at the time it filed the Complaint.
The Panel has decided to accept the supplemental filing for two reasons. One is that the Response puts forward a number of claims that could not reasonably have been anticipated by the Complainant. Those claims relate to the nature of the Respondent’s claimed business, which was nowhere evident on the website connected to the disputed domain name or otherwise in the case file evidence preceding the Respondent’s submission. Secondly, the Panel finds a number of the claims presented in the Response difficult to believe on their face. In these circumstances, the Panel considers it appropriate that the Respondent’s claims are tested against the further filing from the Complainant.
C. Identical or Confusingly Similar
The Respondent appears to claim that the disputed domain name is not confusingly similar to the Complainant’s mark because the nature of the Respondent’s business is different to the Complainant’s. However, for the purpose of considering confusing similarity under paragraph 4(a)(i) of the Policy, the respective nature of the parties’ business interests are not relevant. The test under the Policy is narrower. As relevantly outlined in paragraph 1.2 of the WIPO Overview 2.0:
“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.”
The Complainant has rights in a registered mark for OLX. Those rights have been recognized in previous decisions under the Policy and are not contested: see e.g. OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqiband, WIPO Case No. D2013-0473. The Complainant’s mark is wholly incorporated in the disputed domain name with the new gTLD extension “.global” which does not distinguish the Complainant’s mark. As the Complainant argues, it operates a global business and, as such, an Internet user could easily be confused that there is some association between the Complainant and the disputed domain name.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s OLX trademark.
D. Rights or Legitimate Interests
The Respondent’s case is that it has rights or legitimate interests in the disputed domain name because it is operating a legitimate business “Obaid Latif XeroX Global Breeding Services”, which relates to poultry and breeding of rare species of birds.
The Respondent provides no substantial evidence to support this claim, nor any explanation of the origin of its claimed business name. In its supplemental filing, the Complainant provides evidence of its company name search from the Securities and Exchange Commission of Pakistan, which gave no results for a search of that business name. Neither has a Google search for the Respondent’s claimed business provided any results. This is surprising, given the Respondent’s claim to have operated its claimed business for 55 years across Pakistan and to be expanding internationally.
The Respondent also claims that its agent was in the process of designing a website for it when these proceedings commenced. The Respondent provides “rough wireframes of the website” being designed by its agent. Those “wireframes” include text which refers to a “semen collection centre for bulls, rams and bucks”; a “Pig Genetics Joint Venture (with Waratah Farms)”, and “Our semen collection facility is based at Rukuhia, near Hamilton.” None of this supposed evidence refers to poultry or rare birds, which the Respondent vaguely claims is the subject of its business. A simple Google search also makes it clear that Rukuhia, near Hamilton, is a small town in New Zealand, and that the text appended to the Respondent is copied from an apparently unrelated business and website of “Animal Breeding Services” in New Zealand.
From this, the Panel’s impression is that the Respondent is being deliberately deceptive. The Complainant also provides evidence that the Respondent has falsified evidence of at least one email attached to the Response (sent in December 2014 in response to the Complainant’s ‘cease and desist letter’), by inserting the word “not” between the words “is” and “for sale”. The Complainant provided an alternative copy of that email from the Respondent stating that the disputed domain name “is for sale”. This evidence reinforces the impression from the case file that the Respondent has sought present a deceptive case in reply to the Complaint.
The Panel finds that the Respondent’s claims are not credible. There is otherwise no evidence or argument to indicate that the Respondent might, despite its own apparent conduct, have rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that it has none.
E. Registered and Used in Bad Faith
The Panel is in little doubt that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name. The Complainant is well-known and the Respondent does not deny knowing it.
In the circumstances outlined above, the evidence suggests that the Respondent made an unsolicited offer to sell the disputed domain name to the Complainant for USD 50,000 in response to the Complainant’s cease-and-desist email. That sum is self-evidently in excess of any out of pocket expenses the Respondent can reasonably have incurred in acquiring the disputed domain name. Paragraph 4(b)(i) of the Policy makes it clear that the registration of a domain name for the purpose of selling it to the Complainant, in excess of the Respondent’s documented out-of-pocket costs, amounts to bad faith.
The Complainant’s cease-and-desist email contained an offer to cover the Respondent’s out-of-pocket expenses. The Respondent claims that USD 50,000 was an out-of-pocket expense, on the basis that the Respondent had entered a contract with a third party for this amount to acquire the disputed domain name at auction. The Respondent gave no evidence of what price was actually paid to acquire the disputed domain name (that is, the difference between its claimed payment of USD 50,000 and the auction price). In the context of the apparently deceptive conduct of the Respondent, outlined above, the Panel finds the Respondent’s evidence to be open to suspicion. Further, the Respondent’s claim of paying such a high fee to a third party to acquire the disputed domain name is, in the absence of more compelling evidence otherwise, inherently unbelievable.
For these reasons, the Panel finds that the disputed domain name was registered and used in bad faith.
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, <olx.global>, be transferred to the Complainant.
James A. Barker
Date: May 28, 2015