Oracle International Corporation v. Ferdinand Robert
Claim Number: FA2104001941372
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Ferdinand Robert (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oracies.co>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 13, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <oracies.co> 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 April 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2021 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@oracies.co. Also on April 14, 2021, 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 May 10, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the ORACLE trademark, acquired though its ownership of the portfolio of trademark registrations described below and its extensive use of the mark in its software business across the world. Complainant submits that beginning in 2011, Complainant became the second-largest software maker by revenue and it currently has more than 430,000 customers across the world.
Complainant submits that the disputed domain name <oracies.co> is confusingly similar to its registered and distinctive ORACLE mark and is nearly identical to its own domain name which it uses as its website address at <www.oracle.com>. Complainant submits that Internet searchers 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 disputed domain name. It has been held, in decisions too numerous to mention, that a minor misspelling of a complainant’s trademark creates a confusingly similar domain name. Citing, Kellogg North America Company v. james hoggins / freight, FA 1863624 (Forum Oct. 19, 2019) (confusing similarity found where Respondent’s <kell0gg.com> domain name copies the Complainant’s KELLOGG mark by “substituting the numeral zero for the letter ‘O,’ and appending the ‘.com’ top-level domain.”)
Complainant adds that the <.co> country code Top Level Domain (“ccTLD”) extension does nothing to alleviate confusion between the ORACLE Mark and the <oracies.co> domain. Citing Xerox Corporation v. Milen Radumilo, FA 1879314 (Forum Feb. 17, 2020) (“Neither the hyphen nor the <.co> gTLD extension, separately or together create any distinguishing difference between the domain name and Complainant’s mark.”)
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not identified by the disputed domain name in the WhoIs record and upon information and belief, Respondent is not commonly known by the <oracies.co> domain or the word “oracle”, nor does Respondent operate a business or other organization under the ORACLE mark nor own any trademark or service mark rights in such word. Citing Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”).
Complainant refers to copies of emails which have been produced in an annex to the Complaint, which illustrate that the disputed domain name has been used for the purposes of phishing.
The chain of communications commences with email dated March 10, 2021 from an account established using the disputed domain. The initial email, which purports to come from Complainant, is addressed to an educational institute which is one of Complainant’s customers. The email purports to advise the recipient that Complainant is updating its billing system, that new arrangements for payment were being established and requesting payment of outstanding invoices to a bank account that is not associated with Complainant.
Complainant submits that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial use of the disputed domain name. Citing Target Brands, Inc. v. Patrice Zingaro, FA 1855507 (Forum Sept. 7, 2019) (Respondent’s use found not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) where Complainant provided a copy of “the emails sent by Respondent to Complainant’s customers seeking payment for fake invoices”.).
Additionally, Complainant refers to a screen capture annexed to the Complaint which illustrates that the disputed domain name does not resolve to any website content. The results of the Internet search which is submitted shows that the URL generates a message that the browser cannot find the <www.oracies.co> server.
Complainant submits that where a domain name is identical or confusingly similar to a well-known trademark yet resolves only to a registrar parking page or does not resolve to any website content at all, panels have not hesitated to hold that no legitimate interest exists on the part of a respondent.
Complainant then alleges that the disputed domain name was registered in bad faith, arguing that the registrant of the disputed domain name intentionally targeted Complainant’s ORACLE mark without consent from Complainant.
Complainant submits that Respondent was on actual notice of Complainant’s rights in its globally famous mark.
The WIPO Overview 3.0 at par. 3.1.4 states that panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this regard, Complainant further cites the decision in Oracle International Corporation v. Ahmad Farshchi, DIR2017-0010 (WIPO, May 26, 2017) (“the Panel finds that the Complainant’s trademark ORACLE is a well-known trademark. Hence it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain names.”).
Complainant further contends that registration of a typographical variation of Complainant’s legitimate <oracle.com> domain name clearly reveals that the registrant intended the disputed domain name to be visually mistaken for Complainant’s address
Complainant adds inter alia that the disputed domain name, that is confusingly similar to Complainant’s mark, is being used in bad faith by Respondent for the purposes of the phishing scheme described above wherein Respondent is posing as a one of Complainant’s employees and asking Complainant’s customer to pay certain outstanding invoices to a bank account that is not associated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant develops and markets enterprise software products and services, cloud data storage, and computer hardware systems which is sold across the world under the ORACLE and is the registered owner of a portfolio of trademark registrations including:
· United States Trademark registration ORACLE registration number 1,200,239, registered on the Principal Register on July 6, 1982 for goods in international classes 9 and 16;
· United States service mark registration ORACLE, registration number 1,555,182, registered on the Principal Register on September 5, 1989 for services in international class 41;
· United States service mark registration ORACLE registration number 2107556, registered on the Principal Register on October 21, 1997 for goods in international classes 35, 36 and 42.
· European Trade Mark ORACLE, registration number2843019 registered on the Principal Register on June 16, 2004 for goods and services in classes 9, 16, 35, 36, 38, 41, and 42.
Complainant has an established Internet presence and its principal website is established at <www.oracle.com>.
The disputed domain name was registered on March 8, 2021. It is not used as an address of an active website. The uncontested evidence annexed to the Complainant however shows that the disputed domain name has been used as an email address to perpetrate a phishing scheme as described below.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this Complaint. Respondent had availed of a privacy service to conceal his identity which was disclosed by the Registrar in response to the Forum’s request.
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”).
Complainant has adduced clear, convincing and uncontested evidence of its rights in the ORACLE trademark, acquired though its ownership of the portfolio of trademark registrations described above and its extensive use of the mark in its software business across the world.
The disputed domain name <oracies.co> is visually very similar to Complainant’s ORACLE mark. The letter “L” in the mark is replaced by the letter “i” which is similar in appearance; and the letter “s” is added.
This Panel finds that the addition of the letter “s” does not distinguish the disputed domain name from Complainant’s mark and that the letter “i” would easily be misread as an “L”.
As Complainant submits that the country code Top Level Domain (“ccTLD”) <.co> extension does nothing to alleviate confusing similarity of the disputed domain name and Complainant’s ORACLE mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the ORACLE mark in which Complainant has rights and Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that
· Respondent is not identified by the disputed domain name in the WhoIs record;
· upon information and belief, Respondent is not commonly known by the <oracies.co> domain or the word “oracle”, nor does Respondent operate a business or other organization under the ORACLE mark, nor does Respondent own any trademark or service mark rights in any such word;
· copies of emails which have been produced in an annex to the Complaint, prove that the disputed domain name has been used for the purposes of perpetrating a phishing scam by impersonating one of Complainant’s employees to divert payments from an unsuspecting customer to a bank account that has no connection with Complainant;
· that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial use of the disputed domain name; and
· furthermore the disputed domain name does not resolve to any website content.
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Claimant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has made out a strong, convincing case that the registrant of the disputed domain name must have been aware of Complainant, its name, mark, reputation, and goodwill when the disputed domain name was registered. This argument is supported by the fact that the disputed domain name is confusingly similar not only to Complainant’s trademark but also to its <oracle.com> domain name which is used as the address of its principal website.
This Panel finds that it is implausible that the disputed domain name was registered for any reason other than to take predatory advantage of Complainant’s name, mark, reputation, and goodwill. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind.
This conclusion is supported by the fact that the disputed domain name is a typographical variation of Complainant’s legitimate <oracle.com> domain name, clearly indicating that the registration of the disputed domain name was an intentional act of typosquatting. The registrant intended that the disputed domain name to be mistaken for Complainant’s name due to its visual similarity to Complainant’s ORACLE mark.
Complainant has furthermore adduced clear and convincing, uncontested evidence that the disputed domain name is being used in bad faith to create an email account and to send emails to Complainant’s unsuspecting customers, purporting to come from an employee of Complainant in order to perpetrate a phishing scam.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oracies.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 12, 2021
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