Oracle International Corporation v. MBAERI ANSELAM / MARCOS PLC
Claim Number: FA1512001653946
Complainant is Oracle International Corporation (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is MBAERI ANSELAM / MARCOS PLC (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <profile-oracle.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 24, 2015; the Forum received payment on December 24, 2015.
On December 28, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <profile-oracle.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@profile-oracle.com. Also on December 29, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
A. Complainant
Complainant is one of the world’s largest developers and marketers of computer hardware systems, enterprise software products, database management systems and other goods and services.
Complainant hold registrations for the ORACLE trademark, which are on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 3,893,045, registered December 21, 2010).
Respondent registered the <profile-oracle.com> domain name on or about October 21, 2015.
The domain name is confusingly similar to Complainant’s ORACLE mark.
Respondent has not been commonly known by the domain name or any derivative of Complainant’s ORACLE mark.
Respondent is not licensed or otherwise authorized to use Complainant’s ORACLE mark.
Respondent is not making a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
Respondent has used the domain name in a phishing scheme to send e-mails to customers of Complainant in an attempt to impersonate Complainant and defraud those customers.
Respondent now makes no active use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with actual knowledge of the ORACLE mark and Complainant’s rights in it.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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:
a. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
b. Respondent has no rights or legitimate interests in respect of the domain name; and
c. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ORACLE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a UDRP complainant’s trademark registration with the USPTO were adequate to establish its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Malaysia). See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <profile-oracle.com> domain name is confusingly similar to Complainant’s ORACLE mark. The domain name incorporates the mark in its entirety, and merely adds the generic term “profile”, the generic Top Level Domain (“gTLD”) “.com,” and a hyphen. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from a UDRP complainant’s AIM mark by adding the term “profiles”).
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a domain name is insufficient to differentiate the resulting disputed domain name from that mark).
Further see Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), finding that:
[the] addition of a hyphen to the registered mark [in forming a domain name] is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <profile-oracle.com> domain name or any variant of the ORACLE trademark, and that Respondent has no license or other authorization to use the ORACLE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “MBAERI ANSELAM / MARCOS PLC,” which does not resemble the domain name. On this record, we conclude that Respondent has failed to show that it has been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding, based on all evidence in the record, that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant contends, without objection from Respondent, that Respondent currently makes no active use of the <profile-oracle.com> domain name. In the circumstances here presented, we conclude that Respondent’s failure to make an active use of the domain name constitutes neither a bona fide offering of goods or services by means of the domain name, so as to establish its rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use such as would demonstrate that it has such rights or interests under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests in the domain name there in question under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where a respondent made no use of the domain name).
Complainant further asserts, again without objection from Respondent, that Respondent previously employed the <profile-oracle.com> domain name to send scam e-mails with a false warning and login link fraudulently to “phish” for Internet user information. This use of the domain name, presumably done for Respondent’s commercial gain, is likewise neither a bona fide offering of goods or services via the domain name nor a legitimate noncommercial or fair use of it. 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 Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has used the disputed <profile-oracle.com> domain name, which is confusingly similar to Complainant’s ORACLE trademark, to seek commercial gain from Internet users by creating a likelihood of confusion with the ORACLE mark. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Victoria's Secret Stores Brand Management, Inc. v. Private Whois victoriassecret-usa.com, FA 1415313 (Nat. Arb. Forum Dec. 20, 2011) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent employed a disputed domain name to send ‘fraudulent emails, posing as a Human Resources Manager for Victoria’s Secret and advertising purported job offers with Victoria’s Secret by directing recipients to the hiring site.’).
We are also convinced by the evidence that Respondent’s current failure to make active use of the <profile-oracle.com> domain name further shows its bad faith in the registration of the domain name. See, for example, Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a UDRP respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the ORACLE mark when it registered the <profile-oracle.com> domain name. This too is proof of Respondent’s bad faith in registering the domain name. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014):
Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <profile-oracle.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 28, 2016
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