Oracle International Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1811001819052
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oracleloud.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2018; the Forum received payment on December 5, 2018.
On December 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oracleloud.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC 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 December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 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@oracleloud.com. Also on December 6, 2018, 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 December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
A. Complainant
i) Complainant is one of the world’s largest developers and marketers of enterprise software products and services and computer hardware systems – particularly its own brands of database management systems and applications. Complainant has rights in the ORACLE (e.g. Reg. No. 1,200,239, registered July 6, 1982) and ORACLE CLOUD (e.g. Reg. No. 5,195,735, registered May 2, 2017) marks through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. E. Respondent’s <oracleloud.com> domain name is confusingly similar to Complainant’s mark as it deletes the letter “c” from Complainant’s ORACLE CLOUD mark and adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <oracleloud.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a series of third-party commercial websites, some of which compete with the Complainant in the fields of cloud computing and technology. See Compl. Ex. F. Further, Respondent merely deletes the letter “c” from the word “cloud” which creates a minor typographical variation of the ORACLE CLOUD mark.
iii) Respondent registered and uses the <oracleloud.com> domain name in bad faith. Respondent is a prolific cybersquatter and has been involved in numerous prior UDRP cases where panels have ordered the transfer of infringing domain names. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to its domain name where it redirects users to competing third-party websites. See Compl. Ex. F. Additionally, Respondent was on actual notice of Complainant’s rights in its globally famous ORACLE and ORACLE CLOUD marks as a result of Complainant’s extensive use of the marks in commerce.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on May 21, 2018.
2. Complainant has established rights in the ORACLE (e.g. Reg. No. 1,200,239, registered July 6, 1982) and ORACLE CLOUD (e.g. Reg. No. 5,195,735, registered May 2, 2017) marks through its registration of the mark with the USPTO.
3. Respondent uses the disputed domain name to redirect users to a series of third-party commercial websites, some of which compete with the Complainant in the fields of cloud computing and technology.
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 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 (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 claims rights in the ORACLE (e.g. Reg. No. 1,200,239, registered July 6, 1982) and ORACLE CLOUD (e.g. Reg. No. 5,195,735, registered May 2, 2017) marks through its registration of the mark with the USPTO. See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ORACLE and ORACLE CLOUD marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <oracleloud.com> domain name is confusingly similar to Complainant’s ORACLE CLOUD mark as it deletes the letter “c” from the mark and adds the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel therefore finds that the <oracleloud.com> domain name is confusingly similar to the ORACLE CLOUD 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <oracleloud.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant. See Amend. Compl. Ex. B. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ORACLE or ORACLE CLOUD marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <oracleloud.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to redirect users to a series of third-party commercial websites, some of which compete with the Complainant in the fields of cloud computing and technology. Using a domain name to redirect users to competing third-party websites generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant provides screenshots of two examples of this redirection, one of which resolves to <aws.amazon.com> and the other being <deals.dell.com>. See Compl. Ex. F. Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to redirect users to competing third-party web pages fails to confer rights and legitimate interests in the disputed domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is a prolific cybersquatter and has been involved in numerous prior UDRP cases where panels have ordered the transfer of infringing domain names. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides a list of prior UDRP proceedings involving Respondent in which the panel ordered the transfer of a domain name. Accordingly, the Panel finds that Respondent registered the <oracleloud.com> domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.
Next, Complainant claims that Respondent intentionally attempts to attract, for commercial gain, Internet users to its domain name where it redirects users to competing third-party websites. Using a disputed domain name to redirect users to competing third-party websites can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted above, Complainant provides screenshots of two examples of this redirection, one of which resolves to <aws.amazon.com> and the other being <deals.dell.com>. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ORACLE and/or ORACLE CLOUD marks at the time of registering the <oracleloud.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent’s knowledge can be inferred as a result of Complainant’s extensive use of the marks in commerce. The Panel infers due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <oracleloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 4, 2019
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