Oracle International Corporation v. Andrew Klein
Claim Number: FA2006001898983
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Andrew Klein (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <communityoracle.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2020; the Forum received payment on June 8, 2020.
On June 4, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <communityoracle.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@communityoracle.com. Also on June 9, 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 July 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest developers and marketers of enterprise computing products and services, including cloud data storage and computer hardware systems.
Complainant holds a registration for the ORACLE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,107,556, registered October 21, 1997, and renewed most recently on September 27, 2017.
Respondent registered the domain name <communityoracle.com> on or about April 2, 2020.
The domain name is confusingly similar to Complainant’s ORACLE mark.
The domain name is almost exactly identical to Complainant’s official domain name found at: <Community.Oracle.com>.
Respondent is not licensed or otherwise authorized to use Complainant’s ORACLE mark.
Respondent has not been commonly known by the domain name.
Respondent does not use the domain name to facilitate a bona fide offering of goods or services or in a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online in order to redirect Internet users to Complainant’s website, presumably for Respondent’s commercial gain, whether by seeking to earn affiliate revenue from forwarding users to Complainant’s site or by seeking to capture the login credentials of users for use in phishing, identity theft or other cyber-crime.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent failed to respond to multiple items of correspondence demanding that it cease using the domain name as alleged in the Complaint.
Respondent registered the domain name with knowledge of Complainant’s rights in the ORACLE mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
2. Respondent has no rights to or legitimate interests in respect of the domain name; and
3. the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the ORACLE service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum December 24, 2018):
Complainant’s ownership a USPTO trademark registration for the … mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <communityoracle.com> domain name is confusingly similar to Complainant’s ORACLE service mark.
The domain name incorporates the mark in its entirety, with only the addition of the generic term “community,” which is borrowed from Complainant’s own official domain name <Community.Oracle.com>, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018):
Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the … mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s … mark per Policy ¶ 4(a)(i).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business, did not sufficiently distinguish the resulting domain name from that mark under Policy ¶ 4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <communityoracle.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the contested domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the ORACLE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Andrew Klein,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <communityoracle.com> domain name to pass itself off as Complainant online in order to redirect Internet users to Complainant’s website, presumably for Respondent’s commercial gain, whether by seeking to earn affiliate revenue from forwarding users to Complainant’s site or by seeking to capture the login credentials of users for use in phishing, identity theft or other cyber-crime. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, WordPress Foundation v. Berat Berisha, FA 1657211 (Forum March 1, 2016):
In similar cases where the domain name in dispute resolves to the complainant’s own webpage, prior panels have found bad faith…. Respondent is presumably profiting from this behavior.
See also Better Existence with HIV v. AAA, FA 1363660 (Forum January 25, 2011), finding that:
[E]ven though the … domain name … resolves to Complainant’s own website, Respondent’s registration of the … domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the … domain name under Policy ¶ 4(a)(ii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <communityoracle.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that a respondent acted in bad faith by using a disputed domain name to direct Internet traffic to a UDRP complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”).
See also Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011):
The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant’s rights in the ORACLE mark when it registered the <communityoracle.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Google Inc. v. Ahmed Humood, FA1591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent has [sic] actual knowledge of Complainant’s mark at the time of domain name registration [and thus exhibited bad faith in registering it].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby GRANTED.
Accordingly, it is Ordered that the <communityoracle.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 3, 2020
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