WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OLX B.V. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o.
Case No. D2016-1985
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 protection, this company does not own this domain name s.r.o. of Prague, Czechia.
2. The Domain Names and Registrar
The disputed domain names <olxnigeria.top> and <olxua.top> (the “Domain Names”) are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On September 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 3, 2016, 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 October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 4, 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.
4. Factual Background
The Complainant is a Dutch private company, which operates free online classified platforms around the world. The Complainant owns multiple trademark registrations for the OLX trademark in various countries, e.g., registration number 210704, registered on April 15, 2014 and registration number 210974, registered on May 1, 2014 in the Dominican Republic; registration number 16448/2014 and registration number 16368/2014 that were registered on January 8, 2014 in the Republic of Mauritius; and registration number 254718 that was registered on August 19, 2008 in Pakistan. The Complainant owns a variety of domain name registrations incorporating its trademark, such as <olx.com> registered on February 8, 1999.
The Respondent is “Domain Admin, Whois protection, this company does not own this domain name s.r.o.”, that registered the Domain Name <olxua.top> on May 28, 2016 and the Domain Name <olxnigeria.top> on May 31, 2016.
The Complainant sent three cease and desist letters to the Respondent with an identical content. The July 7, the July 14 and the July 21, 2016 letters informed the Respondent about the Complainant’s rights in the OLX trademark and requesting the Respondent to transfer the Domain Name <olxua.top> to the Complainant. The Respondent did not reply to the cease and desist letters.
5. Parties’ Contentions
A. Complainant
The Complainant claims that it is the owner of the famous OLX trademark, which is short of “online exchange”. The Complainant claims to operate free online classified platforms that enable users to buy and sell goods, to solicit and offer services and to search for jobs. The Complainant contends that together with its affiliated company OLX Inc., it owns over 1,000 domain names incorporating the OLX trademark.
The Complainant alleges that the Domain Names are identical or confusingly similar to its OLX trademark. The Complainant alleges that it owns rights to the OLX trademark by virtue of its registrations of the OLX trademark. The Complainant contends that the Domain Names incorporate the Complainant’s trademark in its entirety while also adding the geographically descriptive terms “Nigeria” and “ua” to the trademark. The Complainants argues that such additions do not negate confusing similarity with the Complainant’s mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant. The Complainant asserts that it has not given the Respondent a permission to use its trademark in any manner. The Complainant argues that the Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the Domain Names. The Complainant alleges that the Domain Names resolve to commercial online market places, which mimic the Complainant’s website.
The Complainant claims that the Domain Names were registered and are being used in bad faith. The Complainant contends that its OLX trademark is well-known when used for online classified services. The Complainant argues that the Respondent knew or should have known about existence of the Complainant’s trademark and the registration of the Domain Names containing well-known trademarks constitutes bad faith per se. The Complainant contends that in addition to numerous trademarks filed in connection with its business prior to the Respondent’s registration of the Domain Names; the Complainant’s advertisement websites under the OLX brand are attracting a high amount of visitors.
The Complainant contends that the Respondent’s use of the Domain Names in connection with online commercial marketplace websites, which mimic the Complainant’s website, creates a likelihood of confusion with the Complainant and its trademarks. The Complainant claims that the Respondent attempts to profit from such confusion by offering goods for sale through its own online commercial marketplaces. The Complainant argues that use of the Domain Names in connection with websites that look like those of the Complainant, would make consumers believe that the Respondent is associated with the Complainant. The Complainant further claims that the Respondent’s use of the Domain Names disrupts the Complainant’s business, which constitutes bad faith registration and use pursuant to UDRP, paragraph 4(b)(iii).
The Complainant alleges that the Respondent registered numerous Domain Names, each of which, infringe upon the Complainant’s OLX trademark. The Complainant argues that such actions constitute bad faith registration and use pursuant to UDRP, paragraph 4(b)(ii).
The Complainant contends that the totality of circumstances in this case support the Respondent’s knowledge of the Complainant’s brand, business. The Complainant argues that the Respondent’s use of the privacy registration service to register the Domain Names serves as further evidence of bad faith registration and use. The Complainant claims that the Respondent’s failure to respond to the Complainant’s cease and desist letters provides a support for a determination of bad faith registration and use. Further, the Complainant alleges that although there is no connection between the Complainant and the Respondent, the Respondent’s websites associated with the Domain Names contain no disclaimer that would describe absence of any relationship between the parties.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (UDRP, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (UDRP, paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (UDRP, paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must show that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. Here, the evidence on file shows that the Complainant has rights to the OLX trademark by virtue of its registrations of the OLX trademark in many countries.
It is well-established that to satisfy the test for confusing similarity, “the relevant trademark would generally need to be recognizable as such within the domain name1 and that the addition of “geographical wording to a trademark in domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”.2 The generic Top-Level Domain (the “gTLD”) is generally disregarded under the confusing similarity test for purposes of the UDRP (as TLDs are a technical requirement of registration).
Here, the Domain Names incorporate the Complainant’s OLX trademark in its entirety, add a gTLD suffix “.top”, and a geographic term “Nigeria” in the <olxnigeria.top> Domain Name or the common abbreviation “ua” corresponding to Ukraine in the Domain Name <olxua.top>. Therefore, the Complainant’s trademark is easily recognizable as such in each of the Domain Names and the addition of either the geographical term “Nigeria” or “ua” is insufficient to avoid a finding of confusing similarity. The gTLD “.top” may be disregarded under the confusing similarity test. Therefore, the Domain Names are identical or confusingly similar to the Complainant’s OLX trademark.
The Panel holds that the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.3 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.4
Here, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant. The Complainant asserts that it has not given the Respondent a permission to use its trademark in any manner. The Complainant argues that the Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the Domain Names. The Complainant alleges that the Domain Names resolve to commercial online market places, which mimic the Complainant’s website.
The Panel finds that it is more likely than not that the Complainant’s contentions are true because the Respondent did not dispute the Complainant’s contentions and there is no evidence showing that the Complainant’s contentions are not true. Specifically, the evidence shows that the Respondent has not been commonly known by “olx” and it is not making a legitimate noncommercial or fair use of the Domain Names by operating online classified platforms, which are similar to the Complainant’s online classified platforms.
The Domain Name <olxua.top> redirects consumers to a website “www.fencing.org.ua” in Russian and Ukrainian. The “contacts” section of the “www.fencing.org.ua” website displays the following text in Russian:
- “Limited Liability Company “Free ads in Ukraine”
- 11 Solomenskaya St., city of Kiev 02000
- Suite 417, 4th floor, BC “Eleven”
- Tel. 044-288 4076”
The Domain Name <olxnigeria.top> redirects consumers to a classified advertisements website “www.buynigeria.top”, which looks identical to the “www.fencing.org.ua” website, but is in English. The “contact” page of the website displays only a form for contacting its owner, but no information about identify of the owner. Such use of the Domain Names is neither noncommercial nor fair. The Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names.
Therefore, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
The Complainant alleges that the Respondent registered numerous domain names, each of which infringe upon the Complainant’s OLX trademark. The Complainant argues that such actions constitute bad faith registration and use pursuant to the UDRP, paragraph 4(b)(ii). The Panel notes that under paragraph 4(b)(ii) of the UDRP, registration of “the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name” is evidence of bad faith registration and use when the registrant is engaged in a pattern of such conduct. However, it has been established that the registration of two domain names is typically not sufficient to show a pattern of conduct preventing the Complainant from reflecting the OLX trademark in a corresponding domain name.5
The Complainant contends that it is more likely than not that the Respondent registered and used the Domain Names in bad faith. According to the Complainant, the Respondent intentionally attempted “to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of said websites”.
Here, the Respondent registered the Domain Names that incorporate the Complainant’s OLX trademark, to redirect to third-party online classified platforms, the same type of service that the Complainant is offering in connection with its OLX trademark. The Panel therefore agrees that it is likely that the Respondent registered and is using the Domain Names with the full knowledge of the Complainant’s OLX mark to trade on the Complainant mark’s goodwill.
In addition, the evidence shows that the Respondent registered the Domain Names by using a privacy service and provided an incomplete or incorrect address. It is well-established that “use of a privacy service in combination with provision of incomplete contact information to such service” may be an indication of bad faith on the Respondent’s part.
In addition, the Respondent’s failure to respond to any of the Complainant’s three cease and desist letters is an additional evidence of bad faith under these circumstances.
The Panel, therefore, is satisfied that the Domain Names were registered and are being used in bad faith, and that the Complainant has satisfied the third UDRP element.
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 Domain Names, <olxnigeria.top> and <olxua.top>, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: November 15, 2016
1 Paragraph 1.2., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 1.9., WIPO Overview 2.0.
3 Paragraph 2.1., WIPO Overview 2.0.
4 Id.
5 See, e.g., paragraph 3.3. WIPO Overview 2.0.