WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX, B.V. v. Whoisguard protected, Whoisguard, Inc, / Jesica Graciya, Investment Group

Case No. D2016-0827

1. The Parties

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

The Respondent is Whoisguard protected, Whoisguard, Inc of Panama, Panama / Jesica Graciya, Investment Group of Huntington, New York, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <olx-btc.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2016 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 May 2, 2016.

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 May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2016.

The Center appointed David Taylor as the sole panelist in this matter on June 6, 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 company based in the Netherlands founded in 2006. It operates online classified websites that enable users to buy and sell goods, solicit and offer services and search for jobs. The Complainant has several offices around the world including in Buenos Aires, Cape Town, Delhi, São Paulo, Rio de Janeiro, Lisbon and New York and subsidiaries in Argentina, Pakistan and China.

The Complainant owns trademark registrations for OLX in many jurisdictions around the world, including, for instance, the Dominican Republic, Mauritius, Rwanda, Germany, Pakistan, the European Union and the United States, in connection with online advertising services. For instance, European Union trademark registration no. 4,883,741 OLX, registered on March 5, 2007. The trademark OLX is short for “online exchange”.

The Complainant (or its affiliated company) has registered over 1,000 domain names incorporating the OLX trademark, for instance, <olx.com>, <olx.in> and <olx.com.br>.

The Domain Name was registered on April 7, 2016. At the time of filing, the Domain Name was resolving to a Bitcoin trading website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s OLX trademark. It argues that the dominant part of the Domain Name is the term “olx” which is identical to its trademark OLX and that the generic Top-Level Domain (“gLTD”) “.com” is not relevant for the purpose of assessing identity or confusing similarity. The Complainant further asserts that the addition of the three letters “btc” to the Complainant’s OLX trademark, linked by a hyphen, does not negate the confusing similarity between the Domain Name and the Complainant’s trademark.

The Complainant further asserts that the Respondent does not have rights or legitimate interests in the Domain Name. It states that the Respondent does not have any trademark rights or trade names corresponding to the Domain Name and that there is no evidence that would suggest that the Respondent has been using the name OLX in any way that would give rise to rights or legitimate interests in the Domain Name. Consequently, the Complainant argues that the Respondent may not claim any rights established by statute or common usage. The Complainant further asserts that it has not given any license or authorization to the Respondent to use the OLX trademark. The Complainant asserts that the Respondent is using the Domain Name for a “Bitcoin trading website” and that the following statements are found on the website: “We provide an opportunity to earn in a modern and safe way - by opening an online investment account and managing your assets through our website. Creating an account with us is free of charge and without any hassles involved. With OLX BTC | The Best Bitcoin Trading you could earn as high as 150% - 1200 in the specified days. OLX BTC | The Best Bitcoin Trading also offers a lucrative partnership program designed for those who are willing to earn some extra cash just by promoting our project to your friends and colleagues”, which appears to be a “pyramid scheme”. The Complainant therefore asserts that the Respondent’s use of the Domain Name is not a bona fide offering of goods or services as the Respondent is seeking to create an impression of association with the Complainant. The Complainant further states that the Respondent’s use of the Complainant’s logo on the website shows that the Respondent is targeting the Complainant’s customers and falsely attempting to pass itself off as Complainant.

The Complainant contends that the Domain Name was registered and is being used in bad faith. It argues that “[t]he Complainant and its OLX trademark are known internationally, with trademark registrations across numerous countries, including India (sic) where the Respondent resides. The Complainant has marketed and sold its goods and services using this trademark since 2006, which is well before Respondent’s registration of the Domain Name on April 7, 2016”. The Complainant further asserts that the Respondent has demonstrated knowledge of, and familiarity with, the Complainant’s brand and business, as demonstrated by the fact that the Respondent’s website displays the Complainant’s logo.

In addition, the Complainant asserts that the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

The Complainant further argues that the Domain Name is considerably disrupting the Complainant’s business and qualifies as a bad faith registration and use under paragraph 4(b)(iii) of the Policy.

Finally, the Complainant contends that the Respondent’s failure to respond to the Complainant’s cease-and-desist letter may be considered as additional evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trademark rights. The Complainant has provided evidence that it has registered trademark rights in OLX in connection with online advertising services. The Panel is therefore satisfied that the Complainant has established relevant trademark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trademark. The Domain Name incorporates the Complainant’s OLX trademark in its entirety with the addition of the letters “btc”, which presumably stand for “bitcoin” (digital currency), separated by a hyphen. Previous UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The presence of the letters “btc” (as well as the hyphen) does nothing to diminish the confusing similarity with the Complainant’s trademark.

The gLTD “.com” is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s OLX trademark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. 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 in question. If, however, 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. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant has asserted that the Respondent is not sponsored by nor affiliated in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its OLX trademarks. There is no evidence either that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Panel accepts the Complainant’s contention that by using the Domain Name to resolve to a website offering purported financial services displaying the Complainant’s logo without authorisation the Respondent is seeking to misrepresent itself as the Complainant and/or attempting to create a false association with the Complainant. Such use of the Domain Name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is unduly taking advantage of the Complainant’s rights for its own financial gain by misleading Internet users as to the source or affiliation of the associated website.

The Complainant has therefore made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant’s trademark rights in OLX in connection with online advertising services predate the registration date of the Domain Name by almost 10 years. Given this, together with the Respondent’s subsequent use of the Domain Name to resolve to a website identically reproducing the Complainant’s OLX logo, the Panel is of the view that the Respondent registered the Domain Name in full knowledge of the Complainant’s trademark rights with the intention of taking advantage of such rights. As such, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel also finds that the Respondent’s use of the Domain Name, which identically reproduces the Complainant’s trademark, for a financial investment website displaying Complainant’s exact OLX logo and trademark also constitutes bad faith, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the its website, in accordance with paragraph 4(b)(iv) of the Policy.

Finally, the Panel draws adverse inferences from the Respondent’s failure to respond to the Complainant’s cease and desist letter, the Respondent’s use of a privacy protection service to conceal its identity and its unwillingness to take part in the present proceedings.

The Panel therefore finds that the Domain Name was registered and is being used in bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) 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 Domain Name, <olx-btc.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: June 20, 2016