WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX, B.V. v. Glenn Monfort, Cyberthread Solutions Inc.
Case No. D2015-1899
1. The Parties
Complainant is OLX, B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Glenn Monfort, Cyberthread Solutions Inc. of Metro Manila, Philippines.
2. The Domain Names and Registrar
The disputed domain names <olx-philippines.biz>, <olx-philippines.com> and <olx-philippines.net> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Response was filed with the Center on November 19, 2015. The Complainant filed an additional submission on November 20, 2015.
The Center appointed Richard Hill as the sole panelist in this matter on December 1, 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
Complainant has rights in the registered trademark OLX, dating back to 2007. This mark is registered in many countries around the world and it is well known.
The disputed domain names were registered in 2014 and 2015, well after Complainant registered its mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to point to websites that offer for sale products that compete with those offered by Complainant.
The websites at the disputed domain names display a slightly modified version of Complainant's logo and mark.
5. Parties' Contentions
Complainant states that it is the owner of the OLX trademark, used in commerce since 2006, and registered in various jurisdictions as of 2007. The trademark OLX is short for "online exchange". 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 Complainant's website; display ads on profiles across social networking sites, such as Facebook: and search for jobs across numerous locations and industries. Complainant is today one of the world's leading free online classifieds platforms. It is currently present in over 40 countries and its service is available in 50 languages making Complainant one of the largest online marketplaces in the world, and the largest online marketplace in several countries, for example in Pakistan, India, Brazil, and several other countries. Complainant maintains offices in Buenos Aires, Cape Town, Delhi, Sao Paulo, Rio de Janeiro, Lisbon and New York, and operates subsidiaries in Argentina, Pakistan and in China. Complainant's platform has over 200 million monthly unique users generating traffic of over 11 billion monthly page views, or around 360 million page views per day. Complainant's mark and its services are well known around the world.
Complainant alleges that the disputed domain names are confusingly similar to its mark because they incorporate Complainant's OLX trademark in its entirety while merely adding the geographically descriptive term "philippines" to such trademark, linked to the trademark by a hyphen. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is not sponsored by or affiliated with Complainant in any way. Moreover, Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names. Moreover, Respondent is not commonly known by the disputed domain names, which evidences a lack of rights or legitimate interests.
Complainant alleges that Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain names. Respondent's inclusion of a slightly modified version of Complainant's logo along the top of the disputed domain names' websites is a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand, and Respondent is not only using the confusingly similar domain names, but is also imitating Complainant by displaying the slightly modified version of Complainant's logo. This imitation may be referred to as "passing off". Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent creates a likelihood of confusion with Complainant and its trademarks by using confusingly similar domain names to host websites which feature a modified version of Complainant's logo, similar in style and color scheme, with Respondent then attempting to profit from such confusion by selling products similar to those offered for sale through Complainant's websites. As such, Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the disputed domain names and their websites would cause consumers to believe that Respondent is somehow associated with Complainant when, in fact, he is not. Respondent's actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, and Respondent is thus using the fame of Complainant's trademarks to improperly increase traffic to the website listed at the domain names for Respondent's own commercial gain. It is well established that such conduct constitutes bad faith. Complainant cites UDRP precedents to support its position.
Respondent's reply is reproduced verbatim below:
1. All of olx-related domains are already registered under them. Why left this out: olx-philippines? When someone decided to register it, they want to take it as their own?
2. They are not shopping or online store but another form of advertising website. They don't do selling products, which is entirely different to our purpose for the site.
3. We are not the same purpose with them. We are not in competition. We are online store targeting philippine customers.
4. What if we register olx-philippines.store, olx-philippines.shop, olx-philippines.design, olxphilippines. carreer, olx-philippines.gallery, olx-philippines.space, olx-philippines.center, olxphilippines. menu etceteras... Again they will file complaint because they own these domains. This complaint will never end. What i understand about having various top level domain is to categorize every domain and to guide the visiting public about the domain they are about to browse.
5. The same name with different purpose or objective can co-exist without affecting each other: cyberthread.ph, cyberthread.net and cyberthread.com these sites have different owners and we don't see any problem with that.
C. Complainant's additional submission
The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party.
Accordingly, the Panel will not consider the Complainant's Supplemental Filing in rendering this decision.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is obvious to the Panel that the disputed domain names are confusingly similar, in the sense of the Policy, to Complainant's well-known mark. See OLX, Inc. v. Asghar Shaikh, Online Education Services, WIPO Case No. D2014-1279 ("The Panel further finds that the Domain Name is confusingly similar to this mark. The addition of the word "Pakistan" with a hyphen separator in no way distinguishes the Domain Name from the mark, since many Internet users would regard the Domain Name as referring to an activity of the Complainant relating to Pakistan"): see also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323 (finding that "the addition of the word 'London' to the trademarks [SANDERSON and SANDERSON HOTEL] as part of the Domain Name [sandersonlondonhotel.org] does not negate confusing similarity but rather enhances it in that London is a geographic term that identifies the place where Complainant's Sanderson Hotel is located").
The first element of the Policy is established.
B. Rights or Legitimate Interests
Complainant has not licensed or otherwise authorized Respondent to use its mark. Complainant alleges, and provides evidence to prove, that the disputed domain names resolve to web sites that display a slightly modified version of Complainant's logo and mark, and offer for sale products that compete directly with the products offered by Complainant. Respondent does not dispute this. Such a use of the disputed domain names is not a legitimate bona fide use under the Policy. See Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo…suggested that website was the official Curious George website).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701: see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937).
The fact that there may be other domain names that incorporate other trademarks is not relevant to the present case, which concerns only Complainant's marks. And the fact that Complainant may not have challenged certain domain names that contain its mark is also not relevant: this case relates only to the disputed domain names that are listed in the Complaint.
The Panel holds that Complainant has satisfied its burden of proof for the second element of the Policy.
C. Registered and Used in Bad Faith
As noted above, the disputed domain names resolve to web sites that display a slightly modified version of Complainant's logo and mark, and offer for sale products that compete directly with the products offered by Complainant. This creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Respondent is using the fame of Complainant's trademarks to improperly increase traffic to his websites for Respondent's own commercial gain. It is well established that such conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy. See World Wrestling Fed'n Entm't, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant's customers were likely to confuse with the source of the complainant's products, especially because of the respondent's prominent use of the complainant's logo on the site): see also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319: ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649: Terex Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0733: Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
Respondent does not deny that it is offering products for sale that are also offered by Complainant, but asserts in its defense that it targets only Philippine customers and that it is an online store, as opposed to Complainant, which is more of a broker than a store. But Complainant also targets Philippine customers, and its websites do offer products for sale, even if they are not sold directly by Complainant. Thus the activities of Complainant and Respondent are sufficiently similar that Internet users will likely be confused, as noted above.
The Panel holds that Complainant has satisfied its burden of proof for the third element 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 names, <olx-philippines.biz>, <olx-philippines.com> and <olx-philippines.net> be transferred to Complainant.
Date: December 2, 2015