WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc.

Case No. D2015-0218

1. The Parties

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

The Respondent is Kumud, G. of Noida, Uttar Pradesh, India / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <localolx.com> ("the Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 10, 2015, 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 February 12, 2015, 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 February 12, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2015. On February 27, 2015, the Respondent sent an email to the Complainant indications, "I am not understanding why you have put my email this mail chain", further to which the Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2015.

The Center appointed Isabel Davies as the sole panelist in this matter on March 18, 2015. 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 owns a variety of trademarks around the world, including the European Union and the United States of America (the United States) which were registered prior to the registration of the Domain Name which took place on December 12, 2014.

5. Parties' Contentions

A. Complainant

The Complainant provides evidence to show that it is the owner of the OLX trademark, which is the principal trademark relevant to this Complaint.

The Complainant states that the Domain Name is registered with "privacy protection service", and that although the proxy service resides in the United States, the Respondent may well reside somewhere else.

The Complainant states that the trademark OLX is short for "online exchange". 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, 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.

The Complainant states that it was founded in 2006 and based in Hoofddorp, The Netherlands, and is today one of the world's leading free online classifieds platforms. The Complainant is currently present in over 40 countries and its service is available in 50 languages. Together with its subsidiary, OLX Inc., the Complainant has registered domain names incorporating the OLX trademark in several countries across the world. The Complainant's online classifieds platform is No.1 in Pakistan, India, Brazil, and several other countries. The Complainant maintains offices in Buenos Aires, Cape Town, Delhi, Sao Paulo, Rio de Janeiro, Lisbon and New York, and operates subsidiaries in Argentina, Pakistan and in China where the Respondent is located. The Complainant's 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 states that the fame of the OLX trademark has been established in previous WIPO decisions, for example; OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 involving the Complainant, where it was stated that: "The Panel recalls that the trademark OLX is a well-known trademark..." In OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqib, WIPO Case No. D2013-0473, the panel stated that: "The Complainant has rights in the mark OLX by virtue of its registered trademarks. The Complainant has also acquired common law rights derived from extensive trading under the name 'OLX'." The Complainant states that the OLX trademark is in possession of substantial inherent and acquired distinctiveness, and the OLX mark and brand are well-recognized by consumers, industry peers, and the broader global community in all of its markets.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant is the owner of the famous OLX trademark, registered in numerous countries. The Complainant contends that the dominant part of the Domain Name comprises the term "OLX", identical to said trademark.

It states that the addition of the generic Top-Level Domains ("gTLd") ".com" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.

The Complainant contends that the Domain Name is confusingly similar to the Complainant's well-known OLX trademark. More specifically, the "olx" portion of the Domain Name is identical to said trademark. In addition to the trademark, the Domain Name comprises the generic prefix "local". Past UDRP panels addressing use of the OLX trademark have also found that the addition of generic words such as "ad", "ads", or "repair", to the full OLX trademark does not distinguish a disputed domain name from the Complainant's famous mark, and that such domains are confusingly similar to the OLX trademark.

Thus, the Complainant avers, by extension, the same logic must apply in the instant case where the OLX trademark is paired with the prefix "local". The Complainant refers to previous cases OLX Inc., OLX S.A. v. Privacy Protect/ Raees Ur Rehman, WIPO Case No. D2012-1245; OLX Inc. and OLX S.A. v. Aamir Nehal, Aamir Nehal,WIPO Case No. D2011-2249; OLX Inc. v. Mian Anees - EIT Developer, WIPO Case No. D2013-2132; OLX, Inc. - OLX S.A. v. PrivacyProtect.org / Saqib, N/A, Rana Saqib, supra.

The Complainant contends that anyone viewing the Domain Name is bound to mistake it for a name linked, associated, or affiliated with the Complainant. The likelihood of confusion quite obviously includes a mistaken association with the Complainant's OLX trademark as there is a considerable risk that the public will mistakenly perceive the Respondent's Domain Name either as a domain name owned by the Complainant, or else, as possessing some commercial partnership with the Complainant. The overall impression given by the Domain Name is that it is somehow connected to the Complainant, when in fact it is not. This is particularly true since the Complainant runs its own extremely popular platform under several similar domain names, for example: "www.olx.com". By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and fame of the trademark, which may result in dilution and other damage to the Complainant's trademark.

In summary, the Complainant contends, the above facts serve to establish that the Domain Name is confusingly similar to the Complainant's registered and famous OLX trademark. The prefix, added to the OLX trademark, does not distinguish the Domain Name from said trademark.

The Respondent has no rights or legitimate interests in respect of the Domain Name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. Neither has the Complainant found anything that would suggest that the Respondent has been using OLX in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by statute or common usage.

The Complainant states that no license or authorization of any kind has been given by the Complainant to the Respondent to use the OLX trademark. However, no disclaimer has been used on the website connected to the Domain Name explaining any relationship with the Complainant. The Respondent is not an authorized provider or dealer of the Complainant's services and has never had a business relationship with the Complainant.

The Complainant states that, until recently, the Respondent has been using the Domain Name to operate a commercial website, directly copying the business of the Complainant, in terms of classified advertisement. It states that the structure of the website (the navigation menu, search function, ad posting tab, etc.) has been practically identical to the Complainant's websites. Following the cease and desist letter, the modified logo was removed and the content of the website slightly changed. The Complainant states that the current website connected to the Domain Name appears to be under construction to some extent, however, it still appears to be commercial by promoting services similar to the Complainant and displaying what appears to be sponsored links.

The Complainant refers to a similar use of a Complainant's logo having been discussed in earlier UDRP cases, such as Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land,WIPO Case No. D2000-0385: "The panel finds that the use of the domain name was so closely associated with this improper use of the logotype that the respondent's use of the domain name in connection with its offering of goods or services was not bona fide." The same reasoning, the Complainant avers, applies here.

Considering that the Respondent has no rights in, or connection to, the name OLX, it is, contends the Complainant, obvious that the fame of the OLX trademark motivated the Respondent to register the Domain Name in the first place and that the Respondent cannot claim to have been using OLX without being aware of the Complainant's rights to it. The Complainant refers to case, Drexel University v. David Brouda, WIPO Case No. D2001-0067 in which the Panel stated that: "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant."

The Complainant therefore submits that the Respondent has no rights or legitimate interest in respect of the Domain Name.

The Domain Name was registered and is being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Complainant contends that the OLX trademark, in respect of online classified services provided by the Complainant, has the status of a well-known trademark with a substantial and widespread reputation throughout the whole Community where it operates. The Respondent registered the Domain Name on December 14, 2014, subsequent to the registration of numerous of the Complainant's trademarks, as well as the launch of the Complainant's famous website "www.olx.com (on February 8, 1999). Coupled with the arguments set forth in the sections above, it is, the Complainant contends, obvious that the Respondent has been trying to take advantage of the Complainant's brand. The Complainant states that its websites are attracting an enormous amount of visitors and "www.olx.com" has a rank of 6,112 on the Alexa Traffic Rank in the United States.

The Complainant evidences that it first tried to contact the Respondent on December 29, 2014, through a cease and desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the OLX trademark within the Domain Name violated the Complainant's rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name. The Respondent replied, following one reminder, by claiming that neither the Domain Name nor the Respondent's business were related to the Complainant. Further, the Respondent claimed that it had invested a large sum of money to run its business under to the Domain Name and hired people working non-stop for said cause. Once more, the Complainant requested a voluntary transfer of the Domain Name, reminding the Respondent that it would be reimbursed for the registration fee and eventual transfer fee. However, no further response was ever received. As the Complainant's efforts to solve this matter amicably were unsuccessful, the Complainant states that it chose to file a complaint according to the UDRP process.

The Complainant contends that, by virtue of the fact that the Respondent has been using the Domain Name to copy the Complainant's business, using a modified copy of the Complainant's logo, intentionally and specifically targeting OLX customers and falsely attempting to pass itself off as the Complainant, the Respondent must necessarily have been aware of the Complainant and its OLX trademark. By using the Domain Name to free ride on the Complainant's brand in order to direct traffic to the Respondent's website, by promoting services similar to the Complainants and displaying what appears to be sponsored links, the Respondent has not been making a legitimate fair use, but misleadingly diverted consumers for commercial gain.

The Complainant contends that the Respondent has been using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with its mark as to the source, sponsorship, affiliation or endorsement of the website. Thereby, the Respondent should be considered as having registered and used the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant therefore submits that, on the bases set out above the Respondent should be considered as having registered and used the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

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

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

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

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under the Rules, including the respondent's failure to file a response.

In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name.

The Panel accepts that the Complainant is the owner of the OLX trademark registrations that predate the Domain Name and that the trademark OLX is short for "online exchange". The Panel also accepts that Complainant has operated 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 for several years. The Panel also accepts that the OLX trademark is in possession of substantial inherent and acquired distinctiveness, and the OLX mark and brand are well-recognized by consumers, industry peers, and the broader global community in the Complainant's markets.

A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Panel finds that the dominant part of the Domain Name comprises the term "olx", identical to said trademark and that the addition of the gTLD ".com" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.

The Panel finds that the Domain Name is confusingly similar to the Complainant's well-known OLX trademark and that the "olx" portion of the Domain Name is identical to the OLX trademark and accepts the references to previous UDRP decisions relating to the Complainant which found that the addition of generic words such as "ad", "ads", or "repair", to the full OLX trademark does not distinguish a disputed domain name from the Complainant's mark, and that such domains are confusingly similar to the OLX trademark as is in this case where the addition is the word "local".

The Panel accepts that people viewing the Domain Name are likely to mistake it for the name associated with the Complainant and that the likelihood of confusion includes a mistaken association with the Complainant's OLX trademark as there is a considerable risk that the public will mistakenly perceive the Domain Name either as a domain name owned by the Complainant, or else, as possessing some commercial partnership with the Complainant. The overall impression given by the Domain Name is that it is somehow connected to the Complainant, when in fact it is not, especially as the Complainant runs its own platform under several similar domain names, for example: <olx.com>. The Panel accepts that by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and fame of the trademark, for its own commercial gain.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's registered OLX trademark and that the prefix, added to the OLX trademark, does not distinguish the Domain Name from the OLX trademark.

B. The Respondent has no rights or legitimate interests in respect of the Domain Name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Panel accepts that the Respondent has not been using OLX in a way that would give it any rights or legitimate interests in the Domain Name.

The Panel accepts that no license or authorization has been given by the Complainant to the Respondent to use the OLX trademark and that no disclaimer has been used on the website connected to the Domain Name explaining any relationship with the Complainant.

In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that: "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent."

The Panel also accepts that the Respondent is not an authorized provider or dealer of the Complainant's services and has never had a business relationship with the Complainant, as was considered a factor in finding of non-legitimate interest with the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The Panel accepts that, until recently, the Respondent has been using the Domain Name to operate a commercial website, copying the business of the Complainant, in terms of classified advertisement with the structure of the website (the navigation menu, search function, ad posting tab, etc.) having been practically identical to the Complainant's websites but that, following the cease and desist letter, the modified logo was removed and the content of the website slightly changed. The Panel also accepts that the website connected to the Domain Name appeared to be under construction to some extent but that it still appeared to be commercial by promoting services similar to the Complainant and displaying what appears to be sponsored links.

The Panel now finds that the website in unavailable.

The Panel refers to Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land,supra: "The panel finds that the use of the domain name was so closely associated with this improper use of the logotype that the respondent's use of the domain name in connection with its offering of goods or services was not bona fide." The Panel accepts that the same reasoning applies in this case.

The Panel finds that it would not be conceivable that the Respondent has been using the OLX mark without being aware of the Complainant's rights to it. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that: "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant."

The Panel therefore finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.

C. The Domain Name was registered and is being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Panel accepts that the OLX trademark, in respect of online classified services provided by the Complainant, has a substantial and widespread reputation. The Panel also accepts that the Respondent registered the Domain Name on December 14, 2014, subsequent to the registration of numerous of the Complainant's trademarks, as well as the launch of the Complainant's website "www.olx.com" (on February 8, 1999).

The Panel accepts that the Respondent has been trying to take advantage of the Complainant's brand and refers to Vevo LLC v. Ming Tuff, NAF Claim No. 1440981 ("the only feasible explanation for Respondent's registration of the disputed domain name is that respondent intends to cause confusion, mistake, and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name could only be in bad faith").

The Panel finds that by using the Domain Name to free ride on the Complainant's brand in order to direct traffic to the Respondent's website, by promoting services similar to the Complainants and displaying what appears to be sponsored links, the Respondent has not been making a legitimate noncommercial or fair use, but misleadingly diverted consumers for commercial gain.

The Respondent has been using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.

In GO Local NC Farms, LLC v. Paul Darcy, NAF Claim No 1426087, it has been established that a: "finding of bad faith hinges squarely on the probability that it was more likely than not that the respondent knew of, and targeted, the complainant's trademarks". The Panel accepts that this is the case.

The Panel finds that the Respondent has registered and used the Domain Name in bad faith.

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 <localolx.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: March 30, 2015