WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX B.V. v. PERFECT PRIVACY, LLC / Milen Radumilo

Case No. D2017-1055

1. The Parties

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

The Respondent is PERFECT PRIVACY, LLC of Jacksonville, Florida, United States of America / Milen Radumilo of Bucharesti, Romania.

2. The Domain Names and Registrars

The disputed domain name <olxcoimbatore.com> is registered with SiteName; the disputed domain name <olxjobs.com> is registered with enom415, Incorporated; the disputed domain name <olxpunjab.com> is registered with Namevolcano.com LLC.

SiteName, enom415, Incorporated and Namevolcano.com LLC will be hereinafter collectively or individually named the “Registrar”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2017. On May 31, 2017, the Center transmitted by email to the registrar, HebeiDomains.com, a request for registrar verification in connection with the disputed domain name <olxjobs.com>. On June 2, 2017, HebeiDomains.com transmitted by email to the Center its verification response stating that the disputed domain name <olxjobs.com> was deleted. Having being informed of the circumstances by the Center, the Complainant filed the First Amended Complaint on July 10, 2017 as the disputed domain name <olxjobs.com> was deleted and re-registered. On July 14, 2017, the Center transmitted by email to the Registrar, enom415, Incorporated, a request for registrar verification in connection with the disputed domain name <olxjobs.com>. On July 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <olxjobs.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed the Second Amended Complaint on July 18, 2017, including a request to add additional domain names <olxcoimbatore.com> and <olxpunjab.com> to the proceeding. On July 19, 2017, the Center transmitted by email to Registrar, SiteName and Namevolcano.com LLC, a request for registrar verification in connection with the disputed domain names <olxcoimbatore.com> and <olxpunjab.com>. On July 19 and 24, 2017, the Registrars respectively 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 together with the First Amended Complaint and the Second Amended Complaint (hereinafter referred all together as 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 July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2017.

The Center appointed David Perkins as the sole panelist in this matter on August 23, 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

4.A. Complainant

4.A.1. The 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, events services, and repairs; design advertisements to post on the Complainant’s website; display advertisements on profiles across social networking sites, such as Facebook; and search for jobs across numerous locations and industries.

4.A.2. The Complainant was founded by Fabrice Grinda and Alec Oxenford in 2006 and is based in the Netherlands. It is one of the world’s leading free online classified platforms. It is present in over 40 countries and its service is available in 50 languages, making the Complainant one of the largest online marketplaces in the world. The Complainant maintains offices in Buenos Aries, Cape Town, Delhi, Sao Paolo, Rio de Janeiro, Lisbon and New York and has subsidiaries in Argentina, Pakistan and China. It has some 1,200 employees. The Complainant’s platform has over 200 million monthly unique users generating traffic of over 11 billion page views, or around 360 million page views per day.

Complainant’s OLX trade mark

4.A.3. The Complaint exhibits evidence of the following trade marks and service marks of which the Complainant is the registered proprietor.

The Complainant’s OLX domain names.

4.A.4 The Complaint exhibits some 1,128 generic Top-Level Domains (“TLD”) and country code TLDs of which it is the registrant, which incorporates the OLX Mark. The earliest such registration is for <olx.com>, which was registered on February 8, 1999.

4.A.5 The Complaint also exhibits screen shots from its <olx.com> official website. These display 7 categories of goods and services. They are “For Sale”, which includes computers and jewellery; “Community”, which includes carpool and lost & found ; “Vehicles”, which includes cars; “Real Estate”, which includes houses; “Services”, which include babysitting and nannies; “Jobs”; and “Classes”, which includes language classes.

Previous UDRP Decisions

4.A.6 The Complaint cites three Decisions under the Policy, in which the OLX trade mark has been held to be a well-known trade mark. They are OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqib, WIPO Case No.D2013-0473 (<olx 2.com>); OLX, Inc. v. J D Mason Singh, WIPO Case No.D2014-1037 (<olx-support-team.org>); and OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No.D2015-0218 (<localolx.com>).

Cease & Desist letters

4.A.7 The Complaint also exhibits two Cease & Desist letters addressed to the Respondent dated May 3 and 10, 2017 relating to the <olxjobs.com> disputed domain name.

4.B. Respondent

4.B.1 In the absence of a Response, what is known of the Respondent is contained in the Complaint and it’s Exhibits. The disputed domain names <olxpunjab.com>, <olxjobs.com> and <olxcoimbatore.com> were, respectively, registered on October 24, 2015, July 7, 2017 and February 28, 2017.

4.B.2 The Complaint exhibits screen shots to a website to which the disputed domain names <olxjobs.com> and <olxcoimbatore.com> resolve which contains links to third party websites, some of which compete directly with the Complainant’s business – for example, job advertisement services (clerical; babysitting; part time; security jobs etc.) – and reference the Complainant. The disputed domain name <olxpunjab.com> resolves occasionally to the website “www.edmunds.com”, which sells automobiles, a service which – as noted in paragraph 4.A.5 above – directly competes with the Complainant.

4.B.3 The Complaint also exhibits the websites to which the three disputed domain names resolve, at which each of said disputed domain names is offered for sale, the <olxjobs.com> for USD 4,750 and the other two disputed domain names each for USD 1,288.

4.B.4 The Complaint also exhibits a list containing some 32 cases brought against the Respondent under the Policy. These involve well-known third party trade marks, including “Carrefour”; “Intesa San Paolo”; “Morgan Stanley”; “Toshiba”; “Michelin”; “BASF”; “Swatch”; “Accenture”; and “Celgene”.

5. Parties’ Contentions.

5.A. Complainant

Identical or Confusingly Similar

5.A.1 The Complainant’s case is that the three disputed domain names are confusingly similar to its OLX trade mark. This is because each of them incorporates the well-known OLX Mark in its entirety with the addition of generic suffixes. The suffix “punjab” is a State in India which borders on Pakistan. The suffix “coimbatore” is the second largest city in the Southern State of Tamil Nadu, India. In this respect, the Complaint cites decisions under the Policy as authority for the proposition that the addition of generic or descriptive terms to the Complainant’s trade mark is not sufficient to overcome a finding of confusing similarity.

Rights or Legitimate Interests

5.A.2 The Complainant’s case is that the Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy demonstrating rights or legitimate interests in any of the three disputed domain names.

5.A.3 First, the Complainant has not licensed or otherwise authorised the Respondent to use its OLX trade mark. Nor is the Respondent affiliated with the Complainant in any way.

5.A.4 Second, there is no evidence to suggest that the Respondent is commonly known by any of the disputed domain names.

5.A.5. Third, from the facts summarised in paragraph 4.B.2 above, it is plain that the Respondent is not using any of the disputed domain names in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), nor is he making a legitimate noncommercial or fair use of them within paragraph 4(c)(iii) the Policy. In this respect, the Complainant cites decisions under the Policy illustrating that the Complainant’s said uses of the disputed domain names do not demonstrate rights or legitimate interests in those domain names, whether the Respondent does, or does not, generate pay-per-click revenue.

5.A.6 Fourth, the fact that the three disputed domain names are offered for sale in an amount that far exceeds the Respondent’s out-of-pocket costs directly related to those domain names – see, paragraph 4.B.3 above – is, the Complainant says, further evidence of Respondent’s lack of rights to or legitimate interests in them.

5.A.7 Finally, the Complainant points to the fact that the three disputed domain names were registered between October, 2015 and February, 2017 – paragraph 4.B.1 above – which is well after the Complainant registered its OLX trade marks and began using that mark in 2006. See, in that respect paragraphs 4.A.2 and 4.A.3 above.

Registered and Used in Bad Faith

5.A.8 The Complainant’s case is that circumstances evidencing the Respondent’s bad faith under paragraphs 4.b (i), (ii) and (iv) are present in this case.

5.A.9 As to paragraph 4.b(i), the Complainant points to the Respondent’s offers to sell each of the three disputed domain names noted in paragraph 4.B.3 above.

5.A.10 As to paragraph 4.b (ii), the Complainant points to the numerous cases noted in paragraph 4.B.4 in which Panellists have ordered the transfer of disputed domain names registered by the Respondent which contained the trade marks of third parties. These, the Complainant says, evidence cybersquatting by the Respondent.

5.A.11 As to paragraph 4.b(iv), the Complainant’s case – citing Decisions under the Policy – is that, because the three disputed domain names are so clearly confusingly similar to its OLX trade mark, it is plain that they were registered in full knowledge of that trade mark and, by reason of the well-known status of that mark, could only be used in bad faith. Such bad faith is, the Complainant says, evidenced by the facts summarised in paragraph 4.B.2 above. Again, the Complainant cites Decisions under the Policy where Panels have found bad faith in similar circumstances to those present in this case.

5.B. Respondent

5.B.1 As noted, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. The Complainants clearly has rights in the OLX trade mark, which is very extensively used and is, consequently, well known. The registered marks are noted in paragraph 4.A.3 above.

6.6 For the reasons advanced by the Complainant – summarised in paragraph 5.A.1 above – the Panel has no hesitation in finding that the three disputed domain names are confusingly similar to the Complainant’s OLX mark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.6 The Panel finds that the Complainant’s case summarised in paragraphs 5.A.3 to 5.A.7 above is well made out. Consequently, the Complaint satisfies the second requirement of paragraph 4(a) of the Policy.

Registered and Used in Bad Faith

6.7. It is not necessary to reiterate the facts summarised in paragraphs 4.B.2 to 4.B.4 above, nor the Complainant’s case summarised in paragraphs 5.A.9 to 11 above. The Complainant has shown that circumstances under paragraphs 4(b)(i), (ii) and (iv) are present in this case. Accordingly, the Complaint satisfies the third requirement of the Policy.

7. Decision

For all 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 <olxjobs.com>, <olxpunjab.com> and <olxcoimbatore.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Date: August 24, 2017