DECISION

 

Oracle International Corporation v. Dong Chen Payments L.D.C.

Claim Number: FA1901001827285

 

PARTIES

Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Dong Chen Payments L.D.C. (“Respondent”), Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orale.com>, registered with SafeNames Ltd..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on February 1, 2019.

 

On January 30, 2019, SafeNames Ltd. confirmed by e-mail to the Forum that the <orale.com> domain name is registered with SafeNames Ltd. and that Respondent is the current registrant of the name. SafeNames Ltd. has verified that Respondent is bound by the SafeNames 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 February 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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@orale.com.  Also on February 5, 2019, 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 February 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Oracle International Corporation, is one of the world’s largest developers and marketers of enterprise software products and services. Complainant claims rights in the ORACLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,239, registered on July 6, 1982). See Compl. Ex. E. Respondent’s <orale.com> is confusingly similar as it contains Complainant’s ORACLE mark in its entirety, merely removes the letter “c” and adds the “.com” generic top level domain “gTLD”.

 

2.    Respondent does not have rights or legitimate interests in the <orale.com> domain name. Respondent is not permitted or licensed to use Complainant’s ORACLE mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent has historically used the <orale.com> domain name to divert Internet users to Respondent’s website and redirect them to competing third-party websites. Currently, Respondent fails to make an active use of the disputed domain name. Further, Respondent’s use of the disputed domain name tarnishes and dilutes Complainant’s ORACLE mark.

 

3.    Respondent has registered and used the <orale.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration based on its ownership of multiple other obviously infringing domain names. Moreover, Respondent attempts to attract, for commercial gain, users to the disputed domain name’s resolving webpage, which redirects users to third-party competitors. In addition, Respondent fails to make an active use of the disputed domain name. Further, Respondent failed to respond to Complainant’s cease and desist letter. See Compl. Ex. G. Finally, Respondent had actual knowledge of Complainant’s ORACLE mark when it registered the <orale.com> domain name.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <orale.com> domain name is confusingly similar to Complainant’s ORACLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <orale.com> domain name.

 

3.    Respondent registered and used the <orale.com> 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 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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the ORACLE mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the ORACLE mark (e.g., Reg. No. 1,200,239, registered on July 6, 1982). See Compl. Ex. E. Therefore, the Panel finds that Complainant has rights in the ORACLE mark per Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the <orale.com> domain name is confusingly similar to the ORACLE mark as it contains the mark in its entirety, merely removing a letter and adding a gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD to the mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Here, Complainant argues that the disputed domain name contains the ORACLE mark in its entirety, merely removing the letter “c” from the mark and adding the gTLD “.com”. The Panel agrees with Complainant and find that the <orale.com> domain name is confusingly similar to Complainant’s ORACLE mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent has no rights or legitimate interests in the <orale.com> domain name. Specifically, Complainant contends Respondent is not licensed or permitted to use Complainant’s ORACLE mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel notes that the WHOIS information of record identifies registrant as “Dong Chen Payments L.D.C.,” and there is no evidence to suggest Respondent was authorized to use the ORACLE mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Next, Complainant contends that the Respondent fails to use the <orale.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent has historically used the disputed domain name to host a parked webpage that contained links to third party websites which compete with Complainant’s business. Use of a domain name to host a parked webpage containing third party links to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also 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.”). Here, Complainant provides a screenshot of a webpage that the disputed domain name has allegedly resolved to in the past, which Complainant claims competes with its business. See Compl. Ex. F-1. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).

 

In addition, Respondent currently fails to make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy  ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012) (finding that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names”). Here, Complainant provides a screenshot displaying the message, “Safari Can’t Find the Server.” See Compl. Ex. F-2. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy  ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and uses the <orale.com> domain name in bad faith, as Respondent engages in a pattern of bad faith registration by registering domain names that infringe on famous third-party marks. Registration of multiple other domain names that obviously infringe on third-party trademarks may be evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides a list of domain names containing famous third-party marks that were registered by Respondent. See Compl. Ex. H. Thus, the Panel finds that Respondent engages in a pattern of bad faith registration per Policy ¶ 4(b)(ii).

 

Furthermore, Complainant claims Respondent registered and uses the <orale.com> domain name in bad faith because Respondent has historically attempted to attract, for commercial gain, users to the disputed domain name, which Complainant claims redirected users to third-party competitors. Using a confusingly similar domain name to commercially benefit by redirecting users to third-party websites can evince bad faith registration and use per Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant contends that Respondent is intending to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent hosts links to third party websites that compete directly with Complainant’s business to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. See Compl. Ex. F-1. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).

 

Complainant also asserts that Respondent currently fails to make an active use of the domain name. Failure to make an active use a domain name may evince bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides a screenshot displaying the message, “Safari Can’t Find the Server.” See Compl. Ex. F-2. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent registered the <orale.com> domain name with actual knowledge of Complainant’s rights in the ORACLE mark. Registering a domain name with knowledge of another’s rights in its mark may indicate bad faith under Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <orale.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to redirect users to Complainant’s competitors. See Compl. Ex. F. Therefore, the Panel finds that Respondent registered the <orale.com> domain name with actual knowledge of Complainant’s ORACLE mark, thus demonstrating bad faith per Policy ¶4(a)(iii).

 

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 <orale.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 11, 2019