Oracle International Corporation v. cheng yang yao
Claim Number: FA2109001965042
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is cheng yang yao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclecrp.com>, registered with Gname.com Pte. Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2021; the Forum received payment on September 28, 2021. The Complaint was received in English.
On October 2, 2021, Gname.com Pte. Ltd. confirmed by e-mail to the Forum that the <oraclecrp.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 October 6, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of October 26, 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@oraclecrp.com. Also on October 6, 2021, the Chinese and English language 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 name be transferred from Respondent to Complainant.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in English and Chinese and so under Rule 11 the proceedings may properly be held in the English language as has been requested.
A. Complainant
Complainant asserts trademark rights in ORACLE. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been put to use.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a global software company and is the owner of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 1,200,239, registered July 6, 1982). for the trademark ORACLE;
2. the disputed domain name was registered on August 21, 2020 and is not in use; and
3. there is no association between the parties and Complainant has not authorized Respondent to use the trademark or register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark ORACLE with the USPTO, a national trademark authority.
The disputed domain name takes the trademark, simply adding the letters “crp”, (an obvious misspelling of the abbreviation, “corp.”, being part of Complainant’s name) and the gTLD, “.com”. Those additions are not of any distinctive value and the Panel finds the domain name to be confusingly similar to the trademark (see, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding confusing similarity where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain; Baylor University v. Dan Myers, FA 0808001220742 (Forum Oct. 1, 2008) finding <baylorhelth.com> confusingly similar to the complainant’s BAYLOR mark as it merely added a misspelling of a descriptive word).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The Registrar confirmed that the domain name registrant is “cheng yang yao” which does not indicate that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties. The disputed domain name is not in use and so there is no basis for any finding that Respondent is using the domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under the Policy (see, for example, Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”).
The Panel finds that a prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that none of those scenarios has application to the facts. Evidence is presented of WHOIS records showing other domain names registered to Respondent, using the same email address, which misappropriate third party trademarks such as Facebook, Windows, Amazon but the Panel does not consider that this evidence supports paragraph 4(b)(ii) above since it is barely like that Complainant has an interest in registration of the disputed domain name, an incomplete and misspelt iteration of its company name. That said, the same evidence is very cogent evidence of registration in bad faith in this case and the Panel makes that finding.
That leaves to be considered use in bad faith where there is no use. The Panel refers to the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, concluding that “the question can only be answered in respect of the particular facts of a specific case”, whereafter he paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant’s rights.
The circumstances here largely coincide. In particular, the Panel accepts Complainant’s evidence that the ORACLE trademark is famous. Since 2011 it has been the second-largest software maker by revenue after Microsoft. There is more than enough in this Panel’s assessment to draw a finding of passive holding and “use” in bad faith following the decision in Telstra Corporation Limited v. Nuclear Marshmallows.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <oraclecrp.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 4, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page