Oracle International Corporation v. Joshua Perrymon / NTUNE
Claim Number: FA1510001642463
Complainant is Oracle International Corporation (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is Joshua Perrymon / NTUNE (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <openworld-oracle.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2015; the Forum received payment on October 14, 2015.
On October 15, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <openworld-oracle.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2015 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@openworld-oracle.com. Also on October 20, 2015, 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 timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
On November 15, 2015, Respondent communicated with the Forum indicating no objection to the relief sought by Complainant. 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 timely or substantive response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant is one of the world’s largest developers and marketers of computer hardware systems, enterprise software products, database management systems, and a broad range of other goods and services, including educational services, educational conferences, and trade shows. Complainant has registered the ORACLE OPENWORLD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,031,543, registered December 20, 2005), which demonstrates its rights in its mark. See Compl., at Attached Ex. 2. The <openworld-oracle.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, and merely transposes the terms “Oracle” and “Openworld” and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent cannot show that it is commonly known by the disputed domain name or any derivative of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name as the domain name resolves to a webpage that displays the messages “Website Coming Soon!” and “Please Check Back Soon to See if the Site is Still Available.” Compl., at Attached Ex. 19. Additionally, Respondent is engaged in the tactic of phishing, attempting to fraudulently obtain personal information from Complainant’s customers for the purpose of infecting the customers’ computers with malware. See Compl., at Attached Ex. 21.
3. Respondent registered and is using the disputed domain name in bad faith. First, Respondent introduces malware onto Internet users’ computers in an attempt to profit from a domain name that is confusingly similar to Complainant’s mark. Second, Respondent uses the disputed domain name for the deceptive e-mail address, noreply@openworld-oracle.com, to impersonate and pass itself off as Complainant in order to carry out a phishing scam; Respondent’s use of the disputed domain name to send false registration information for Complainant’s trade show is clearly designed to induce third parties into believing that e-mails sent from an address associated with the disputed domain name originated from Complainant. Third, Respondent makes no active use of the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent’s Contentions
1. Respondent did not submit a timely or substantive response in this proceeding. After the deadline, Respondent indicated no objection to the relief being sought by Complainant.
1. Respondent’s <openworld-oracle.com> domain name is confusingly similar to Complainant’s ORACLE OPENWORLD mark.
2. Respondent does not have any rights or legitimate interests in the <openworld-oracle.com> domain name.
3. Respondent registered or used the <openworld-oracle.com> domain name 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:
(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 timely or substantive response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is one of the world’s largest developers and marketers of computer hardware systems, enterprise software products, database management systems, and a broad range of other goods and services, including educational services, educational conferences, and trade shows. Complainant has registered the ORACLE OPENWORLD mark with the USPTO (Reg. No. 3,031,543, registered December 20, 2005). Complainant contends that its USPTO registration demonstrates its rights in its mark. The Panel concludes that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its marks for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <openworld-oracle.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, and merely transposes the terms “Oracle” and “Openworld” and adds a hyphen between the terms and the gTLD “.com.” Previous panels have found confusing similarity pursuant to Policy ¶ 4(a)(i) where a respondent transposes the terms that make up a complainant’s mark. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”). Further, previous panels have concluded that the affixation of the gTLD “.com” and a hyphen does not serve to adequately distinguish a respondent’s disputed domain name from a complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Joshua Perrymon / NTUNE” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant argues that Respondent fails to make an active use of the disputed domain name as the domain name resolves to a webpage that displays the messages “Website Coming Soon!” and “Please Check Back Soon to See if the Site is Still Available.” Previous panels have held that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent fails to make an active use of a disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). As such, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Further, Complainant argues that Respondent sends scam e-mails with false registration information to phish for user information and/or to harm victims by sending victims to a website that contains no content, but launches an executable that may infect the victim’s computer with malware or a virus. Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to fraudulently acquire the personal and financial information of a complainant’s customers. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent’s disputed domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Registration and Use in Bad Faith
Complainant argues that Respondent introduces malware onto Internet users’ computers in an attempt to profit from a domain name that is confusingly similar to Complainant’s mark. Specifically, Complainant contends that Respondent uses the disputed domain name to perpetuate a fraud by sending scam e-mails by using the disputed domain name to falsely inform victims that they have registered for Oracle’s ORACLE OPENWORLD conference. Further, Complainant contends that Respondent sends scam e-mails with false registration information to phish for user information and/or to harm victims by sending victims to a website that contains no content, but launches an executable that may infect the victim’s computer with malware or a virus. Complainant alleges bad faith registration and use on the part of Respondent as it claims that Respondent receives fees and revenue for introducing malware onto Internet users’ computers. Past panels have determined that bad faith registration and use existed pursuant to Policy ¶ 4(b)(iv) where a respondent uses a disputed domain name to distributed malware of Internet users’ computers. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). As such, the Panel finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent uses the disputed domain name for the deceptive e-mail address, noreply@openworld-oracle.com, to impersonate and pass itself off as Complainant in order to carry out a phishing scam. In so arguing, Complainant asserts that Respondent’s use of the disputed domain name to send false registration information for Complainant’s trade show is clearly designed to induce third parties into believing that e-mails sent from an address associated with the disputed domain name originated from Complainant. Previous panels have found evidence of bad faith registration and use under Policy ¶ 4(a)(iii) where a respondent uses a disputed domain name to fraudulently acquire the personal and financial information of a complainant’s customers. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Therefore, the Panel finds that Respondent engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant contends that Respondent makes no active use of the disputed domain name. Exhibit 19 is a screenshot of Respondent’s resolving webpage, which displays the message “Website Coming Soon!” Past panels have found evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where a respondent failed to make any active use of a disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that its prior use, trademark registrations, and fame of its marks make it clear that Respondent registered the disputed domain name with actual knowledge of its mark. Previous panels have determined that a respondent demonstrates bad faith registration pursuant to Policy ¶ 4(a)(iii) when it is clear that the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark in violation of 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 <openworld-oracle.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 25, 2015
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