WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX B.V. v. Esteban Alberto Rivera Leiva
Case No. D2015-2169
1. The Parties
The Complainant is OLX B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Esteban Alberto Rivera Leiva of Lima, Peru.
2. The Domain Name and Registrar
The disputed domain name <olxperu.net> 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 November 30, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2015.
The Center appointed Alexander Duisberg as the sole panelist in this matter on January 12, 2016. 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.
The Panel issued a procedural order as of January 21, 2016 in which it requested the Complainant to submit missing copies of Peruvian trademark certificates to which the Complainant referred to inter alia in page 5 and Annex 6 of the Complaint and providing the Respondent an opportunity to comment. By response email dated January 22, 2016 the Complainant submitted the aforementioned Peruvian trademark certificates. The Respondent did not reply to this order.
4. Factual Background
The Complainant operates online classified platforms which enable users inter alia to buy and sell a wide range of products including vehicles, real estate and electronics; to offer and solicit a great variety of services such as baby sitting, event services and repairs; to search for jobs; and to design ads to post on the Complainant’s website. The Complainant was founded in 2006 and it has several offices around the world including Buenos Aires, Cape Town, Delhi, São Paulo and Rio de Janeiro and maintains subsidiaries in Argentina, Pakistan and China.
The Complainant is the owner of several registered trademarks bearing the OLX designation as word mark and figurative mark. It has submitted respective trademark register excerpts from several trademark offices such as Peru, Mauritius, Dominican Republic, Rwanda, Switzerland, Zanzibar, Pakistan, and the European Community (“OLX Trademarks”). The Complainant has also registered more than 900 domain names incorporating the term “OLX” including also the country code Top-Level Domain (“ccTLD”) “.pe” for Peru such as <olx.pe> and <olx.com.pe> (“OLX Domain Names”).
Relevant registrations of the OLX Trademarks and the OLX Domain Names took place before the disputed domain name <olxperu.net> was registered on September 23, 2015.
The Complainant has submitted screenshots of the Respondent’s websites under the disputed domain name which shows that the Respondent also operated a classified platform under the disputed domain name which also contained sponsored links and ads. Additionally, the Respondent’s websites displayed an “OLX Peru” logo which resembled the protected OLX logos. Currently, there are no contents available under the disputed domain name.
The Complainant sent a warning letter to the Respondent dated November 4, 2015 in which the Complainant claimed a violation of its trademark rights and requested the Respondent to voluntarily transfer the disputed domain name. The Respondent would only agree to transfer the disputed domain name against a payment of USD 5,000 which the Complainant declined.
5. Parties’ Contentions
The Complainant argues that it is well-known for its services in the field of providing online classified websites worldwide. Accordingly, the Complainant states that its 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.
The Complainant holds that the disputed domain name <olxperu.net> is identical or at least confusingly similar to the Complainant’s protected OLX Trademarks. When comparing the disputed domain name with the OLX Trademarks, the Complainant argues that neither the Top-Level suffix “.net” nor the descriptive geographical term “Peru” may be taken into account.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent hosts an online marketplace which appears to be similar to the platform the Complainant operates. Additionally, the Respondent uses an “OLX Peru” logo on its website which is highly similar to the protected figurative OLX Trademarks. The Complainant holds that such website design makes the Internet user even more erroneously believe that the disputed domain name is associated with the Complainant.
The Complainant asserts further that the registration and the use of the disputed domain name must be considered as made in bad faith. The Respondent must have had actual knowledge of the well-known OLX Trademarks when registering the disputed domain name. Thus, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s OLX Trademarks as to the source, sponsorship, affiliation or endorsement of the website operated under the disputed domain name.
The Complainant requests that the Panel orders the disputed domain name to be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 has been registered and is being used in bad faith.
The Panel acknowledges the consensus view - as set forth in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) - that the Respondents’ default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.
It is an established consensus, however, that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production of evidence to the Respondent (see inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094 (<championinnovation.com>); Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>)).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <olxperu.net> is confusingly similar to the OLX Trademarks of the Complainant and, thus, establishes the requirement of paragraph 4(a)(i) of the Policy to be met.
The Complainant has demonstrated that it owns OLX Trademarks in several countries prior to the registration of the disputed domain name. When assessing the confusing similarity it is well established that the Top-Level suffixes such as “.com” and “.net” can be typically ignored for this purpose (see paragraph 1.2 of the WIPO Overview 2.0). Equally, the figurative element in the Complainant’s figurative OLX Trademarks cannot be taken into account either, when assessing the confusing similarity. Such assessment can only be based upon the alpha-numeric components of the disputed domain name and the dominant textual components of the relevant trademark, whereas a figurative element is not capable of representation in a domain name (see also paragraph 1.11 of the WIPO Overview 2.0).
Against this background, the Panel acknowledges that the Complainant’s OLX Trademarks are incorporated entirely in the disputed domain name which renders it confusingly similar to the protected OLX Trademarks. The inclusion of the descriptive geographical term “Peru” does not alter this assessment. The Panel shares the view that such inclusion rather enhances the confusing similarity, since an average Internet user might believe that the disputed domain name relates to the Complainant’s activity in Peru (see OLX, Inc. v. Asghar Shaikh, Online Education Services, WIPO Case No. D2014-1279 (<olx-pakistan.com>); Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. 2013-1323 (<sandersonhotellondon.org>)).
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been commonly known by the disputed domain name and has not been using the disputed domain name prior to this dispute in connection with a bona fide offering of goods. The Respondent has not brought forward any proof for a non-commercial or fair use either. From the material in the file there is no other basis on which the Respondent could claim any rights or legitimate interests.
In fact, the disputed domain name has been registered and used after the Complainant had registered the vast majority of its OLX Domain Names and after the respective OLX Trademarks had been registered. This clearly undermines any Respondent’s rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name <olxperu.net> has been registered and used in bad faith. Internet users may assume a commercial link between the Complainant and the Respondent which actually does not exist, due to the likelihood of confusion between the disputed domain name and Complainant’s OLX Trademarks. Hence, by registration and use of the disputed domain name, the Respondent intended to attract in particular Peruvian Internet users for commercial gain to his own website (see paragraph 4(b)(iv) of the Policy).
The Panel shares the view that the OLX Trademarks are widely known in the market among consumers and competitors (see OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 (<olx-support-team.org>) and OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqi, WIPO Case No. D2013-0473 (<olx2.com>)). The Panel has, thus, no doubt that the Respondent was aware of the OLX Trademarks and the corresponding business under the OLX Domain Names upon registration of the disputed domain name.
According to the submitted screenshots of the Respondent’s website the Respondent obviously sought to imitate the Complainant’s business operated under its OLX Domain Names and to copy the OLX logo used on the Complainant’s websites. Therefore, the Respondent intended to deceive Internet users for its own commercial gain as regards to the source, sponsorship, affiliation, or endorsement of the website under the disputed domain name. The inclusion of the descriptive geographic term “Peru” to the protected Trademark OLX actually increases the risk of consumer deception. The average customer would certainly believe that the disputed domain name is targeted at Peruvian Internet users in particular. Knowing that the Complainant also owns Peruvian trademarks and operates Peruvian websites for Peruvian customers, the Respondent sought to create intentionally the wrong impression that the disputed domain name pertains to the Complainant’s official Peruvian websites. In view of the Panel, such circumstances can only be deemed as registration and use in bad faith.
The Panel acknowledges that there are currently no active websites available under the disputed domain name. The current lack of active use does not, however, alter the assessment with regard to a bad faith use.
The Panel recognizes, in general terms, that mere passive holding of the disputed domain name could possibly exclude use in bad faith, to the extent it would be possible to use such disputed domain name in the future for other services than the services the respective OLX Trademarks have been registered for. That said, however, a passive holding of the disputed domain name does not prevent as such establishing bad faith (see, inter alia, August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196 (<werthersoriginal.com>); Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (<jupiterscasino.com>); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>)). This applies even more in the case at hand, given that at an earlier stage the Respondent used the disputed domain name in connection with a website which sought to imitate the Complainant’s official websites and later on removed all content under the disputed domain name and adopted a passive use.
According to paragraph 3.2 of the WIPO Overview 2.0 the Panel may draw inferences about whether the domain name is used in bad faith given the circumstances surrounding registration. The facts at hand have clearly demonstrated that the Respondent’s only goal of registering the disputed domain name was to exploit the Complainant’s fame and reputation associated with the widely known OLX Trademarks and OLX Domain Names and to cause confusion as regards to the source, sponsorship, affiliation or endorsement with the disputed domain name. The Panel holds that such circumstances of the registration of the disputed domain name are indicative of the Respondent’s intention to use the disputed domain name in the future in a way which would be detrimental to the Complainant’s rights, in particular its OLX Trademarks (see Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (<jupiterscasino.com>).
The current passive use is therefore sufficient to be deemed as continuation of use in bad faith, in the given circumstances.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the disputed domain name <olxperu.net> to be transferred to the Complainant.
Date: February 1, 2016