WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX B.V. v. Rafael Muller, Divulgador Facebook

Case No. D2017-0575

1. The Parties

Complainant is OLX B.V. of Hoofddorp, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.

Respondent is Rafael Muller, Divulgador Facebook of Sabará, Minas Gerais, Brazil.

2. The Domain Name and Registrar

The disputed domain name <olxmarketingpt.com> (the “Disputed Domain Name”) is 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 March 21, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2017, 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 March 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 20, 2017.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 2, 2017. 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 states that it is “one of the world’s leading free online classifieds platforms”; that it “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”; that it “is currently present in over 40 countries (including Brazil and Portugal)”; and 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.”

Complainant further states, and provides evidence to support, that it is the owner of a number of trademark registrations worldwide that consist of or include the mark OLX, including in Brazil, the Dominican Republic, Mauritius, Rwanda, Germany, the United Republic of Tanzania, Pakistan, and the European Union. The European Union registrations include No. 010881456 for the mark OLX, registered September 25, 2012. These registrations are referred to herein as the “OLX Trademark”.

The Disputed Domain Name was registered on December 19, 2016, and is being used in connection with a website that, as described by Complainant, “imitates the Complain[an]t’s logo and color scheme to sell a software product that captures user contact information from Complainant’s website at <OLX.pt> and forwards advertising to those contacts.”

5. Parties’ Contentions

A. Complainant

Complaint contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the OLX Trademark because, inter alia, “[t]he Disputed Domain Name can be considered as capturing, in its entirety, Complainant’s OLX trademark and simply adding the generic terms ‘marketing’ and ‘pt,’ and abbreviation of Portugal, to the end of the trademark”; and “[i]t is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Respondent is not commonly known by the Disputed Domain Name” as shown by the “Whois data for the Disputed Domain Name”; “Respondent’s inclusion of the Complainant’s logo on the Disputed Domain Name’s website 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 Disputed Domain Name, but is also imitating Complainant by displaying the Complainant’s logo”; and Respondent registered the Disputed Domain Name on December 19, 2016, “significantly after” Complainant registered its domain name <olx.com> on February 8, 1999, and “significantly after” Complainant first used the OLX Trademark in commerce in 2006.

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business”; “Respondent is using the Disputed Domain Name to redirect to a website that imitates the Complaint’s logo and color scheme to sell a software product that will capture user contact information from Complainant’s website at <OLX.pt> and forward advertising to those contacts, which suggests that Respondent intended the Disputed Domain Name to be confusingly similar to Complainant’s trademark”; “OLX is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith”; “[t]he impression given by the Disputed Domain Name and its website would cause consumers to believe the Respondent is somehow associated with Complainant when, in fact, it is not”; and “[t]he Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding” by not responding to Complainant’s demand letters sent on February 7, 14 and 21, 2017.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the OLX Trademark. This is consistent with previous decisions under the Policy involving the OLX Trademark. See, e.g., OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. D2015-0218 (referring to “Complainant’s well-known OLX trademark”); and OLX B.V. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-1985 (“Complainant has rights to the OLX trademark by virtue of its registrations of the OLX trademark in many countries”).

As to whether the Disputed Domain Name is identical or confusingly similar to the OLX Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “olxmarketingpt”), as it is well established that the generic Top-Level Domain (“gTLD”) (i.e., “.com”) may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).

The Disputed Domain Name contains the OLX Trademark in its entirety, plus the word “marketing” and the geographic abbreviation (for Portugal) “pt”. Previous UDRP panels have found that inclusion of the word “marketing” in a domain name that also contains a complainant’s trademark is confusingly similar to the trademark, because “this additional incorporation is purely descriptive and does not create a new distinctiveness.” Compagnie Générale des Etablissements Michelin v. Nurettin Toska, WIPO Case No. D2017-0010 (finding <michelinmarketing.com> confusingly similar to MICHELIN). See also Telstra Corporation Limited v. Mark Cleary, WIPO Case No. D2008-1992 (the word “marketing” is “either per se descriptive or descriptive within the context of the Complainant’s business”). This Panel agrees.

Further, based on Complainant’s uncontroverted description of how the Disputed Domain Name is being used, the Panel agrees that inclusion of the letters “pt” is intended to be an abbreviation for Portugal. Numerous panels under the Policy have found that a “two or three letter geographic indicator” does not distinguish a disputed domain name from the Complainant’s mark. See Six Continents Hotels, Inc. v. Qu Pan pan, WIPO Case No. D2015-1244.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent is not sponsored by or affiliated with Complainant in any way”; “Respondent is not commonly known by the Disputed Domain Name” as shown by the “Whois data for the Disputed Domain Name”; “Respondent’s inclusion of the Complainant’s logo on the Disputed Domain Name’s website 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 Disputed Domain Name, but is also imitating Complainant by displaying the Complainant’s logo”; and Respondent registered the Disputed Domain Name on December 19, 2016, “significantly after” Complainant registered its domain name <olx.com> on February 8, 1999, and “significantly after” Complainant first used the OLX Trademark in commerce in 2006.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Policy, paragraph 4(b).

Taking into account Complainant’s arguments and the evidence provided, the Panel finds that the fact that the Disputed Domain Name resolves to a website that imitates the Complainant’s logo and color scheme to sell a software product that captures user contact information from Complainant’s website and forwards advertising to those contacts is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.. Indeed, many panels under the Policy have found bad faith where, as here, a disputed domain name is being used in connection with a website that looks similar to a complainant’s website and offers goods or services similar to those offered by a complainant. See, e.g., Beachbody, LLC v. Liu Wan, WIPO Case No. D2012-1407 (finding bad faith where the complainant alleged that disputed domain name “resolved to a website with similar content”); LinkedIn Corporation v. Direct Privacy, Domain Name Proxy Service, Inc., WIPO Case No. D2014-0494 (finding bad faith where “the Respondent was acting in competition with the [c]omplainant”); Eclipse Telecom, LLC v. JustCom / Just Communications, Inc., WIPO Case No. D2015-0341 (finding bad faith where “[the r]espondent has used the disputed domain name to divert Internet users to a competitive website”); and F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501 (finding bad faith where the respondent’s website “offers some competing services”).

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

7. Decision

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 <olxmarketingpt.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: May 13, 2017