WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, B.V. v. Domain Admin, WHOIS IDCPrivacy Service c/o IDC (BVI) Limited / Mauro Almeida, ConsultoriaFIES
Case No. D2015-1726
1. The Parties
The Complainant is OLX, B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, WHOIS IDCPrivacy Service c/o IDC (BVI) Limited of London, United Kingdom of Great Britain and Northern Ireland / Mauro Almeida, ConsultoriaFIES of Terespolis, Brazil.
2. The Domain Name and Registrar
The disputed domain name <gerenciadorolx.com> is registered with NetEarth One Inc. d/b/a NetEarth (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2015. On September 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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. The Center sent an email communication to the Complainant on October 5, 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 amended Complaint on October 5, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2015. On October 7, 2015 and October 28, 2015, the Center received email communications from the Respondent. The Respondent did not file a formal response.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on November 17, 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
OLX, B.V is the owner of the OLX trademark since 2007, the abbreviation of "online exchange". OLX operates online-classified sites that enable users to buy and sell goods, solicit and offer services of different natures, design and display ads and search for jobs, across numerous locations and industries.
OLX was founded in 2006 and throughout the years it became the largest online marketplace in several countries, namely in Brazil, and is within the largest in many others countries. Currently, its platforms have over 200 million monthly unique users, generating about 360 million page views a day, and since its foundation, the Complainant has registered a very significant number of domain names incorporating the OLX trademark all over the world. The Complainant also maintains offices in several different cities, including Rio de Janeiro.
The Complainant owns a wide range of registered trademarks in several countries.
The Respondent registered the disputed domain name <gerenciadorolx.com> on July 20, 2015.
The disputed domain name <gerenciadorolx.com> comprises the generic term "gerenciador" – the Portuguese word for "manager" - and adds the OLX trademark. The Complainant states that it did not give any permission to the Respondent for the use of its trademarks in any manner, including in domain names.
On July 29, 2015, the Complainant sent a cease and desist letter to the Respondent requesting the voluntary transfer of the disputed domain name and offering to reimburse both the expenses the registrar could charge for the transfer and the registration fee. On August 14, a second letter was sent. There is no evidence of the Respondent replying to these letters.
Alongside, on July 28, 2015, the Complainant initiated actions to have its brand removed from the website connected to the disputed domain name. A notification of brand abuse was sent by e-mail through the Internet Service Provider, and its receiver replied stating that the email had been forwarded to its client and, later on the same day, that his client "had removed offending misleading logo and background". The logo was indeed removed, but the website at the disputed domain name kept the word "gerenciador" and the trademark OLX and the spaces to fill in with an email address and a password.
In a research conducted by the Panel on November 23, 2015, it was found that at that date, the disputed domain name directed users to a website where the following sentence is displayed "Mudamos para http://www.anunciosbr.info", i.e., "we have changed to http://www.anunciosbr.info/".
5. Parties' Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the OLX trademark, which is owned by the Complainant. The disputed domain name adds the generic term "gerenciador" – the Portuguese word for "manager" to the Complainant's OLX trademark. The mere addition of a generic term to the Complainant's trademark, in its entirety, is not enough to negate the confusing similarity between the disputed domain name and the Complainant's trademark. Moreover, the fact that the disputed domain name directed users to a website where it was displayed the Complainant's OLX logo, i.e., intended to imitate the Complainant's website, strongly suggests the intention of creating the impression that the disputed domain name is connected to the Complainant and its trademark, thus confusing consumers.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not given the Respondent permission to use its trademarks in any manner nor is the Respondent sponsored by or affiliated with the Complainant in any way. The Complainant further argues that the Respondent is not making a bona fide offering of goods or services or legitimate fair use of the disputed domain name, given that the use of the Complainant's logo on the website at the disputed domain name constitutes an effort to take advantage of the fame and goodwill of the Complainant's brand.
3. The Respondent has registered and is using the disputed domain name in bad faith. Firstly, the Respondent registered the disputed domain name significantly after the Complainant has started to use its trademark OLX for commercial purposes, in 2006. By adding the trademark OLX in its entirety to the disputed domain name, the Respondent demonstrated familiarity with the Complainant's brand and business. Secondly, the Complainant's logo was displayed on the website at the disputed domain name and Internet users were encouraged to enter their email address and password, which clearly intended to deceive users into believing that the Complainant was the source of the website. These facts reveal that the Respondent ought to be aware of the Complainant's brands and its strong reputation at the time the disputed domain name was registered. Finally, the Respondent did not respond to the Complainant's attempts to solve the dispute amicably.
On October 7, the Center notified the Respondent by email that an administrative proceeding had commenced against him. On the same day, the Respondent replied to this email asking "I have to answer until what date?". The Center replied, the day after, confirming that the due date for submission of his Response was October 27, 2015.
On October 28, the Center notified the parties that the Center would proceed with the panel appointment given that no further communications were received from the Respondent. Eight minutes after the notification was sent, the Respondent replied, by email, asking "Do you continue want my domain?". The Center clarified that the Complainant had requested the transfer of the disputed domain name and explained the procedure in case the Respondent consented to transfer the disputed domain name. No more communications were received from the Respondent.
In sum, the Respondent is clearly aware that an administrative proceeding was being started once he received the Center notifications by email, replied to them requesting clarifications that were promptly provided by the Center and the Respondent did not communicate his will to voluntarily transfer the disputed domain name.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name comprises the Complainant's trademark OLX.
Consistent with previous UDRP decisions, the addition of a generic term, in this case the word "gerenciador", as well as the generic Top-Level Domain gTLD ".com" is irrelevant in order to distinguish a disputed domain name from the Complainant's mark.
Moreover, the addition of the word "gerenciador" serves to mislead consumers into believing the disputed domain name is somehow connected to the Complainant. See WIPO Case No. D2015-0218 OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc. "by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and fame of the trademark, for its own commercial gain". The Panel accepts that a similar reasoning applies in this case.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel accepts that, as stated by the Complainant, it has not given the Respondent permission to use its trademarks in any manner nor is the Respondent sponsored by or affiliated with the Complainant in any way and therefore has no legitimate interest in the disputed domain name. See Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
Additionally, the Panel finds that the Respondent was clearly aware that an administrative proceeding was commencing against him, based on the illegitimate use of the disputed domain name, and the Respondent has not presented any proof or argument that could lead this Panel to conclude that the Respondent could have any legitimate interest.
Furthermore, when the Respondent was notified of the abusive use of the Complainant's logo on the website at the disputed domain name, he edited the content displayed on the website replacing the Complainant's logo with the Complainant's trademark in its entirety, i.e., in a clear attempt to hide his actions and keep a connection with the Complainant's trademark.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that it is proved that OLX is a globally recognized trademark. In addition, following previous UDRP panel decisions, bad faith exists where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith" (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Respondent registered the disputed domain name in 2015, significantly after the Complainant started its activity and at a time when the Complainant's trademark OLX was recognized worldwide. Moreover, the use of the Complainant's logo on the website at the disputed domain name by the Respondent and requesting consumers' email address and password, clearly demonstrates the intention of free riding on the Complainant's online-classified business. The subsequent changes to the website at the disputed domain name only confirm the Respondent's bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied.
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 <gerenciadorolx.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: November 30, 2015