DECISION

 

Oracle International Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico

Claim Number: FA2202001983074

 

PARTIES

Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, District of Columbia, USA.  Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orfacle.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).

 

PANEL

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.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 3, 2022; the Forum received payment on February 3, 2022.

 

On February 4, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <orfacle.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  The Registrar has verified that Respondent is bound by the GoDaddy.com, 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 February 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2022 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@orfacle.com.  Also on February 7, 2022, 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 March 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, founded in 1977 and headquartered in Redwood City, California, United States, is one of the world’s largest developers and marketers of enterprise software products and services, cloud data storage, and computer hardware systems. Currently, Complainant has more than 430,000 customers. As a result of the long usage and promotion of its brand, Complainant has become widely recognized worldwide by both computing industry professionals and members of the general public.

 

Complainant claims rights in the ORACLE trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Reg. No. 1,200,239, registered on July 6, 1982). Moreover, Complainant also claims rights in the ORACLE trademark in numerous other jurisdictions worldwide. The foregoing trademarks will hereby be collectively referred to as the "ORACLE Mark”.

 

Complainant contends that Respondent’s <orfacle.com> disputed domain name is identical or confusingly similar to Complainant’s ORACLE Mark, as it incorporates the mark in its entirety, only adding the letter “f” and the “.com” generic top-level domain name (“gTLD”). Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.

On January 6 and 21, 2022, Complainant’s attorney sent cease-and-desist letters to Respondent, demanding that it cease the use of the disputed domain name and transfer it to Complainant. Complainant’s attorney received no response.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant has rights in the ORACLE Mark based on its trademark registration with the USPTO and other jurisdictions worldwide. Registration with the USPTO and other trademark offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ORACLE Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.

 

DISCUSSION

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 disputed domain name should be cancelled or transferred:

 

(1)  the disputed 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 disputed domain name; and

(3)  the disputed 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”).

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the ORACLE Mark through its registration with the USPTO and other trademark offices worldwide. Registration of a mark with multiple trademark authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).

 

In the present case, the disputed domain name consists of a misspelling[i] of the ORACLE Mark, merely adding the letter “f” to the ORACLE Mark, and then followed by the gTLD “.com“. Registration of a domain name that merely adds one letter to a trademark does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). In addition, adding a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See TXDC, L.P. v. Kevin Americain, FA 2106001953061 (Forum July 26, 2021) (finding that the addition of the letter “s” plus the gTLD “.com” in the disputed domain name <zalesoutlets.com> do not substantially diminish the similarity between the disputed domain name and complainant's trademark ZALES OUTLET); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Respondent misspells Complainant’s ORACLE Mark by merely adding the letter “f” to result in “ORFACLE”. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the ORACLE Mark.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.  Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).

 

In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.

 

In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its ORACLE Mark in the disputed domain name.

 

In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because the resolving website has third party sponsored pay-per-click links that list several parties that offer similar to those of Complainant. Using a disputed domain name to resolve to a page with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). Panels have found that using a well-known trademark to lead consumers who are searching for a particular business to a site that lists competing services provided by third parties, is not a bona fide use. See Lockheed Martin Corporation v. Kevin Peter Jones / SakeStyle Media Group, FA 1929877 (Forum Mar. 10, 2021) (“Respondent’s pay-per-click use 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.”).

 

In the present proceeding, the Panel finds that the use of pay-per-click third party sponsored links does not constitute a bona fide offering or a legitimate noncommercial or fair use of the disputed domain name.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.

 

First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Second, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by adding the letter “f” to the ORACLE Mark (resulting in “ORFACLE”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Third, the fame of the ORACLE Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ORACLE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its ORACLE Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Fourth, the Panel concludes that Respondent registered and is using the <orfacle.com> disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. 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).”).

 

Fifth, Respondent has engaged in a long-standing pattern of cybersquatting in registering multiple domains that infringe on the trademarks of other brand owners. Such cases demonstrate that Respondent has engaged in an extensive pattern of conduct designed to infringe upon the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010).  Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). Nearly 400 UDRP cases have been successfully brought against Respondent and the registered domain names in those cases were transferred to each of the Complainants. See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico,  FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants). Here, since Respondent has registered and is using disputed domain names containing third-party trademarks; such conduct is indicative of bad faith registration and use.

 

Finally, Respondent’s failure to respond to Complainant’s cease-and-desist letters indicates Respondent’s bad faith. Bad faith may be found when a Respondent does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <orfacle.com> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

 

Lynda M. Braun, Panelist

Dated:  March 7, 2022

 



[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.

 

 

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