Oracle International Corporation v. Julio Diegues
Claim Number: FA2005001896206
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Julio Diegues (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oracle-cloud-infrastructure.com, postmaster@oracle-cloud-demo.com. Also on May 15, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Oracle International Corporation, is a company that develops and markets software products.
Complainant asserts rights in the ORACLE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names are confusingly similar to Complainant’s ORACLE mark as the disputed domain names incorporate the ORACLE CLOUD mark in its entirety and merely add the terms “infrastructure” or “demo” along with hyphens and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names. Respondent is not commonly known by the at-issue domain names and is not authorized or permitted to use Complainant’s ORACLE mark. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to divert Internet users to competing websites and tarnish the well-known ORACLE marks.
Respondent registered and uses the <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names in bad faith. Respondent uses the disputed domain names to attract Internet users for financial gain. Additionally, Respondent ignored attempted communication from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ORACLE mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in ORACLE.
Respondent uses the at-issue domain names to address a webpage displaying pay-per-click advertising links some of which reference Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its ORACLE mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain names contain Complainant’s ORACLE trademark followed either by both a hyphen and the hyphenated term “cloud-infrastructure”, or by both a hyphen and the hyphenated term “cloud-demo.” Each domain name is concluded with the top level domain name “.com.” The differences between Respondent’s <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names –i.e. irrelevant hyphens, generic terms, and the addition of a necessary top-level domain name‑ and Complainant’s ORACLE trademark are insufficient to distinguish either domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names are each confusingly similar to Complainant’s ORACLE trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either <oracle-cloud-infrastructure.com> or <oracle-cloud-demo.com>.
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Julio Diegues” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the either of the domain names. The Panel therefore concludes that Respondent is not commonly known by either of the <oracle-cloud-infrastructure.com> or the <oracle-cloud-demo.com> domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names to address a webpage displaying pay-per-click links which divert visitors to third party websites some of which compete with Complainant. Respondent’s use of the domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue confusingly similar domain names to address a webpage offering links to third parties including some that directly compete with Complainant. Respondent’s use of the confusingly similar domain names to support pay-per-click links disrupts Complainant’s business and shows Respondent’s bad faith registration and use of <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> per Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Moreover, Respondent registered <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> knowing that Complainant had trademark rights in the ORACLE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s registration of multiple domain names containing Complainant’s trademark. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark rights also indicates that Respondent registered and used the <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oracle-cloud-infrastructure.com> and <oracle-cloud-demo.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 9, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page