Oracle International Corporation v. jesse fastenberg
Claim Number: FA2009001912344
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, United States. Respondent is jesse fastenberg (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tiktokoracle.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2020; the Forum received payment on September 15, 2020.
On September 15, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <tiktokoracle.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 September 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@tiktokoracle.com. Also on September 22, 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.
A timely Response was received and determined to be complete on October 13, 2020.
An Additional Submission was received here from the Complainant on October 16, 2020 and an Additional Submission was received here from the Respondent on October 17, 2020.
On October 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <tiktokoracle.com> domain name is identical to Complainant’s ORACLE mark. In support of this Complainant asserts that:
· Oracle International Corporation is a developer and marketer of enterprise software products and services and computer hardware systems furthermore Complainant is engaged in the mobile app industry;
· has rights in the ORACLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,239, registered July 6, 1982);
· internet users will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <tiktokoracle.com> domain name;
· Respondent intends to attract searchers to its website by using identical copies of the Complainant’s ORACLE Mark and the third-party TIK TOK mark;
· previous panels have consequently held in decisions, that the addition of a third-party trademark to a complainant’s trademark in a single domain name does not avoid confusion with any one of them, in support of which the Complainant cites numerous decisions;
· addition of the .com gTLD does nothing to alleviate confusion between the ORACLE Mark.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that:
· <tiktokoracle.com> domain name resolves to a classic pay-per-click page displaying links which divert visitors to other websites which are not associated with Complainant;
· the Whois record for the <tiktokoracle.com> domain name identifies the Respondent as “jesse fastenberg” and as such, Respondent is not commonly known by the <tiktokoracle.com> domain name or the term “Oracle”;
· Respondent does not operate a business or other organization under the ORACLE Mark, and it does not own any trademark or service mark rights in the “ORACLE” name;
· Respondent is not making a legitimate noncommercial or fair use of the <tiktokoracle.com> domain name without intent for commercial gain;
· the content at the website under the domain name <tiktokoracle.com> has no relation to any common dictionary meaning of the word “oracle”;
· <tiktokoracle.com> domain name is not being used for any generic or descriptive “fair use” meaning despite having been owned by Respondent for nearly five months.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that:
· Respondent intentionally targeted the ORACLE Mark for commercial gain without consent from Complainant;
· Respondent was on actual notice of Complainant’s rights in its globally famous Mark as a result of Complainant’s extensive use of the Mark which long predates the date on which Respondent acquired the <tiktokoracle.com> domain name;
· Respondent intentionally used the Disputed Domain Name with knowledge of, and in violation of Complainant’s rights in the famous ORACLE trademark for commercial gain;
· further evidence that Respondent is seeking commercial gain from its registration and use of the <tiktokoracle.com> domain name based on confusion with the ORACLE Mark is seen from the resolving website’s content;
· Respondent has sought commercial gain from a possible sale of the <tiktokoracle.com> domain name based upon a likelihood of confusion with the ORACLE Mark.
B. Respondent
1. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(i) that his <tiktokoracle.com> domain name is identical to Complainant’s Marks. In support of this Respondent asserts that:
· there is no likelihood of confusion the <tiktokoracle.com> domain name incorporates two separate terms, namely, “tiktok” and “oracle”;
· the addition of the term “tiktok” results in the <tiktokoracle.com> domain name being different in sight, sound and commercial impression from the ORACLE Mark and makes them not confusingly similar;
· addition of the term “tiktok” to the <tiktokoracle.com> domain name makes it unlikely that users would be confused into thinking that <tiktokoracle.com> domain name is somehow endorsed, sponsored by or affiliated with Complainant;
2. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(ii) that it should be considered as having no rights and legitimate interests in the disputed domain name and it contests Complainant’s assertions. In support of this Respondent asserts that:
· has legitimate rights and interests in the Domain, which he registered as part of developing software to analyze and predict future trends on the TikTok mobile application, without any intent to capitalize on the reputation and goodwill of the ORACLE Mark or otherwise mislead internet users;
· he is able to demonstrate rights and/or legitimate interests in the <tiktokoracle.com> domain name by evidence of the Github repository, text exchanges, and emails proving that he was, and is, building an aggregation tool for the TikTok mobile application named TikTok Oracle.
3. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(iii). In support of this Respondent asserts that:
· he registered the <tiktokoracle.com> domain name more than 5 months before any publicly announced merger between Complainant and TikTok due to the generic term “oracle”;
· the word oracle was appealing because it describes a “knowledgeable individual or seer”, similar to the oracles of ancient Greece;
· the <tiktokoracle.com> domain name was a fitting name for his predictive software for the TikTok;
· has invested substantial funds, resources, time, and effort into building this predictive software prior to being approached by Oracle representatives regarding any sale of the <tiktokoracle.com> domain name;
· Complainant approached him to sell the <tiktokoracle.com> domain name;
· has legitimate rights and interests in developing the <tiktokoracle.com> domain name and corresponding software, but was willing to sell the <tiktokoracle.com> domain name and conceptualize a new name for its predictive software had Complainant submitted a sufficient offer.
C. Additional Submissions
In its Additional Submission Complainant asserts the following:
· Respondent has a pattern of adopting domains containing of technology provider brands such as <tiktokzoom.com> and <tiktoksnap.com> and its intent to monetize those domains through pay-per-click websites or resale;
· Respondent has not proven that it is making a bona fide use of the <tiktokoracle.com> domain name or that it registered and is using it in anything other than bad faith.
In its Additional Submission Respondent asserts the Complainant statement regarding the adoption of domains containing technology provider brands is baseless and without proof.
· Respondent registered this domain name on April 21, 2020.
· Complainant is the owner of numerous trademarks protecting the ORACLE mark.
· Complainant mark is well known in the United States and around the world.
· Respondent offered evidence of software development. Respondent asserted that the entire correspondence regarding the development has been attached as evidence. The attached evidence only shows text messages and development of a software (without mentioning the disputed domain name) for April 2020 whereas the Respondent claimed that the development was continuous. It has to be noted that the total expenses evidenced by Respondent for the development of the software was $150 USD.
· Complainant and Respondent were negotiating regarding the sale of the disputed domain name.
· No conclusive evidence was submitted that Respondent has a pattern of adopting domains containing of technology provider brands.
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.
Complainant asserts rights in the ORACLE mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per 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)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,200,239, registered July 6, 1982). Therefore, the Panel may find that Complainant has rights in the ORACLE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tiktokoracle.com> domain name is confusingly similar to Complainant’s mark since it includes the ORACLE mark and adds the TIKTOK mark as well as the “.com” gTLD. Addition of a term and a gTLD to a mark generally does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also G.D. Searle & Co. v. Mahony, FA 112559 (Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors). Thus, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <tiktokoracle.com> domain name because Respondent is not commonly known by the disputed domain name and did not have consent to use Complainant’s ORACLE mark. Relevant WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Jesse Fastenberg,” and no information suggests that Respondent was authorized to use the ORACLE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <tiktokoracle.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead hosts pay-per-click links which divert users to other commercial websites. Use of a disputed domain name to host commercial hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots or Respondent’s website and makes notes of the click-through links on the page. Thus, the Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Respondent was not able to demonstrate active use of the disputed domain name nor was able to demonstrate substantial software development and that the development is at all relating to the disputed domain name. Therefore, this Panel finds that failing to make an active use of the disputed domain names does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Based on the above, the Panel finds that Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <tiktokoracle.com> domain name in bad faith because Respondent registered the disputed domain name with intent to sell. Registration of a disputed domain name for the purpose of selling it may evidence bad faith pursuant to Policy ¶ 4(b)(i), and an intent to sell may be inferred by the respondent’s actions. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”). Complainant argues that Respondent’s rejection and commentary on purchase offers indicates that Respondent is holding out to sell the domain name for maximum commercial gain. The Panel agrees with Complainant that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also argues that Respondent registered and uses the <tiktokoracle.com> domain name in bad faith because Respondent attracts users for commercial gain by displaying third-party commercial links. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel is reminded that Complainant provides screenshots of the webpage resolving at the disputed domain. The Panel agrees with Complainant that displaying third-party commercial links is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
According to the Respondent, it registered the disputed domain names to offer services relating to TIK-TOK with a software that he is developing and he has been consciously developing the said software. The Panel disagrees, since no evidence was submitted in support of (i) any service that was offered, (ii) any use of the disputed domain name, (iii) any substantial development of a software. Previous panels have determined that failing to use a disputed domain name can satisfy the requirement of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Therefore, the Panel finds that Respondent’s failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tiktokoracle.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Szamosi Katalin, Panelist
Dated: October 30, 2020
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