Oracle International Corporation v. DAINA TRADING COMPANY LIMITED
Claim Number: FA1504001612604
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is DAINA TRADING COMPANY LIMITED (“Respondent”), Mahe Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oralce.com>, <orcale.com> and <oracel.com>, registered with Domain.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2015; the Forum received payment on April 7, 2015.
On April 1, 2015, Domain.com, LLC confirmed by e-mail to the Forum that the <oralce.com>, <orcale.com> and <oracel.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@oralce.com, postmaster@orcale.com, and postmaster@oracel.com. Also on April 8, 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 May 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Oracle International Corporation, headquartered in Redwood, California. in the United States, is one of the world’s largest developer and marketer of computer hardware systems and enterprise software products – particularly its own brands of database management systems. As of 2011, Oracle is the second-largest software maker by revenue, after Microsoft. Among its popular and well-known products are an object-relational database known, in its most current release, as ORACLE Release 12c, an open-source computer operating system called ORACLE Linux, and a line of network servers sold as the ORACLE SuperCluster.
These and many other computing and database related products and services are sold throughout the world under the ORACLE trademark (the “ORACLE Mark”). Complainant’s customers have access to an extensive network of both live and online support services and resources and many local and national user groups have formed around the ORACLE products and services. Complainant extensively promotes its ORACLE products and services through a variety of advertising and promotional mediums. It utilizes ads in both general-interest and industry-focused magazines, on websites and social media pages, and at computing industry trade shows. The ORACLE products and services have been the subject of extensive unsolicited news coverage in high-profile outlets such as CNN, the New York Times, and others, and have also garnered marketing and industry awards including being ranked No. 16, by Interbrand, amongst “Best Global Brands” of 2014. Complainant also takes seriously its duty to give back to the community and has created Oracle Giving, a philanthropy endeavor which donates over ten million dollars each year to worthy causes.
As a result of the long usage and promotion of the ORACLE Mark, it has become overwhelmingly famous and widely recognized around the world by both computing industry professionals and members of the general public.
Further, the ORACLE Mark is aggressively protected through registration and enforcement. Complainant owns many trademark registrations around the world for the ORACLE Mark, including those in the United States and the European Community:
Mark Goods and Services Reg. No. Reg. Date
ORACLE IC 009. US 021 023 026 036 038. G & S: Pre-Recorded Computer Programs Recorded on Tapes, Disks [ and Diskettes ]. FIRST USE: 19790615. FIRST USE IN COMMERCE: 19790615
IC 016. US 038. G & S: Introductory Manuals, User Manuals and Guides for Operation of Computerized Data Based Management Systems. FIRST USE: 19790615. FIRST USE IN COMMERCE: 19790615 1200239 (US) 6-Jul-1982 (Filed 7-Feb-1980)
ORACLE IC 041. US 107. G & S: Educational services, namely conducting classes and seminars in the field of computers and computer software used for data base management purposes. first use: 19860600. first use in commerce: 19860600
ic 042. us 100 101. g & s: consulting services in the field of computer software used for data base management purposes. FIRST USE: 19860600. FIRST USE IN COMMERCE: 19860600 1555182 (US) 5-Sep-1989 (Filed 12-Dec-1988)
ORACLE IC 35, 36, and 42 (see below) 2107556 (US) 21-Occt-1997 (Filed 19-Jul-1994)
IC 035. US 100 101 102. G & S: analysis and consulting services in the field of business information management, namely business analysis, business enterprise modeling, and business information organization; licensing software. FIRST USE: 19860630. FIRST USE IN COMMERCE: 19860630
IC 036. US 100 101 102. G & S: financing and credit services in the fields of computer software and hardware, computer related printed material, and computer related technical support, education and consulting; analysis and consulting services in the fields of finance, insurance, monetary affairs and real estate. FIRST USE: 19880824. FIRST USE IN COMMERCE: 19880824
IC 042. US 100 101. G & S: computer software and database design for others; computer hardware, software, and network analysis and consultation in the fields of finance, insurance, monetary affairs, real estate, and business information management. FIRST USE: 19860630. FIRST USE IN COMMERCE: 19860630
ORACLE IC 9, 16, 35, 36, 38, 41, and 42 (see below) 2843019 (CTM) 16-Jun-2004 (Filed 10-Sep-2002)
IC 9 Computer software and related goods, including hard discs, diskettes, compact discs and other machine-readable media containing pre-recorded data and computer software, earphones, laptop computer cases, hand held computer cases, calculators, and computer mouse pads; computers, computer hardware and computer peripherals.
IC 16 Printed materials, namely books, pamphlets, user manuals, instruction manuals, newsletters and magazines concerning computer software, computers and related topics; pens; pencils; notepad holders.
IC 35 Business consultation services, providing commercial information to others, and promoting and conducting trade shows and exhibitions, all in the fields of computer software, technology planning, and business management; licensing of computer software; providing an Internet web site at which users can offer goods for sale and buy goods offered by others; providing an Internet web site which features advertisements promoting the goods and services of others; on-line retail store services in the field of computer software.
IC 36 Financing and credit services in the fields of computer hardware, computer software, information technology, and related services.
IC 38 Communication services, namely, transmission of video, audio, images, documents and other data in the fields of computers, computer software, and a wide range of general interest information, all via wired, wireless and voice-activated access to wide area networks, local area networks and the internet; providing wired, wireless and voice-activated on-line facilities for interaction among computer users via wide area networks, local area networks and the Internet, namely bulletin boards, chat rooms and electronic messaging.
IC 41 Educational services, namely conducting training through classes, workshops and seminars in the field of computers and computer software.
IC 42 Computer services, namely, consultation in the field of computer software; programming, design, development, analysis, implementation, management, integration, deployment, maintenance, updating and repair of computer software for others; dissemination, leasing and rental of computer software; leasing access to non-downloadable computer software; hosting of computer software; technical support services for computer software; providing technical information via the Internet; testing, analysis and evaluation of the goods and services of others for the purpose of certification; providing technical means to enable purchase and sales of goods via the Internet; computer database development services; creating web sites for others; providing technical information via the Internet; design, creation, hosting and maintenance of web sites for others; consultation services and providing technical assistance related to design, creation, hosting, maintenance, operation, and management of web sites for others.
Respondent’s registration of the Disputed Domains violates the Policy.
The Disputed Domains are confusingly similar to the ORACLE Mark under Policy ¶4(a)(i). Each of Respondent’s Disputed Domains is confusingly similar, on its face, to Complainant’s registered ORACLE Mark. Since the term ORACLE is a world-famous trademark that is closely associated with Complainant, searchers will almost certainly be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the Disputed Domains. This confusion is not lessened where a domain incorporates a minor misspelling of a complainant’s trademark. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark, possibly against the same Respondent as in the present dispute). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Further, it has been held, in decisions too numerous to mention, that a legacy generic top-level domain such as .com is typically not considered when examining whether a domain is confusingly similar to a complainant’s trademark. See, e.g., Higher Education Loan Authority of the State of Missouri (MOHELA) v. To Thi Thanh Tam / Vietnam Domain Privacy Services, WIPO Case No. D2014-1602 (“the generic Top-Level Domain suffix ‘.com’ is not taken into account for these purposes ”); Alstom and ABB Asea Brown Boveri Ltd v. Claudette Drakes, Name Equities, WIPO Case No. D2014-1489 (“The addition of generic Top-Level Domains (i.e. the ‘.com’ suffix) may be disregarded when comparing the similarities between a domain name and a trade mark.”)
Similar to the above-cited decisions, the Disputed Domains merely incorporate various transpositions of certain letters in Complainant’s ORACLE Mark and then add the “.com” gTLD thereby making visitors to Respondent’s websites think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers eventually discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the websites to which the Disputed Domains resolve. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Mark listed in the body of the web pages of the Disputed Domains they will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the Disputed Domains under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s websites under the Disputed Domains are classic pay-per-click sites displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites, many of which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), the whois records for the Disputed Domains list Respondent as Daina Trading Company Limited. Upon information and belief, Respondent is not commonly known by the Disputed Domains or the name “ORACLE” nor does Respondent operate a business or other organization under the Mark or these names and does not own any trademark or service mark rights in the “ORACLE” name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”).
Respondent is not making a legitimate noncommercial or fair use of the Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain names to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s ORACLE goods and services, who used the Disputed Domains would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing goods and services. Such use cannot be considered fair.
Respondent’s use has also tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the ORACLE Mark with the quality goods and services offered under the Mark by Complainant as a result of its using the Mark in association with unrelated sites which provide goods and services not associated with or related to Complainant’s quality branded products and services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
Finally, the Respondent may claim that its Disputed Domains are some combination of the generic terms (e.g., “oral” and the letters “CE”; “or” and “cale”; “ora” and “cel”) and, as such, they are used in an innocent or generic manner which provides Respondent with some rights. However, this would not rebut the prima facia case presented by Complainant and would be disproved by the website content to which the Disputed Domains resolve.
(c) Respondent registered the Disputed Domains in bad faith under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Mark without consent from Complainant. Respondent was on actual notice of Complainant’s rights in the world-famous ORACLE Mark through Complainant’s Trademark Registrations/Applications, its common-law trademark rights, and its extensive, global use of the Mark which predates the date on which Respondent acquired the Disputed Domains. See, Oracle International Corporation v. oracle-books.net / Irfan Bin Faruk, WIPO Case No. D2009-0070 (Noting “the well-known status of the ORACLE mark.”) Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s rights in the Marks.
Respondent is obtaining commercial gain from its use of the Disputed Domain websites. When a visitor to any of these websites clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <Oralce.com> site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its Disputed Domains results from pay-per-click links and alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the Disputed Domains and its websites results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the website of the Disputed Domains. There is no other rational explanation for Respondent having registered and maintained the Disputed Domains and resolved them to pay-per-click sites with commercial, computer related links. Respondent’s use of the Disputed Domains is commercial because the various companies forwarded from the websites benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the Disputed Domains, Respondent is entirely and solely responsible for the content of their websites and the functioning of the Disputed Domains. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged. Policy ¶4(b)(ii). It is apparent that Respondent is a known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. The following UDRP cases have been successfully brought against Respondent:
Case No. Domain(s) Case Name Status Decision Date
1533432 (NAF) xboxentertainment.com
www-xbox.com
msntoday.com
[3 more] Microsoft Corporation v. DAINA TRADING COMPANY LIMITED Transferred 2-Jan-2014
1503289 (NAF americafunds.com American Funds Distributors, Inc. and The Capital Group Companies, Inc. v. Daina Trading Company Limited Transferred 21-Jul-2013
1362620 (NAF dinerclub.com Diners Club International Ltd. v. Daina Trading Company Limited Transferred 7-Jan-2011
Respondent is also the owner of over 3,300 other domain names, many of which are confusingly similar to other well-known trademarks. A reverse whois search of Respondent’s email address, staurolite@mail.ua, reveals the following examples among them:
Domain Trademark Copied
nyimes.com NEW YORK TIMES (newspaper)
hyndai.com HYUNDAI (automobiles)
ebaych.com EBAY (auction site)
lympics.com OLYMPICS (sporting event)
citibankcheckingaccount.com CITIBANK (bank)
kaitemoss.com KATE MOSS (fashion/couture)
movada.com MOVADO (wristwatches)
drudgereort.com THE DRUDGE REPORT (news site)
cevrolet.com CHEVROLET (automobiles)
mototrend.com MOTOR TRENDS (magazine)
These prior decisions against Respondent are highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others. In particular, noting the Respondent’s long history of losing UDRP decision, the Panel in on case found “that this is evidence of a pattern of registering domain names incorporating marks belonging to others, and is thus evidence of bad faith under Policy ¶4(b)(ii).” Webster Financial Corporation and Webster Bank, National Association v. Ryan G Foo / PPA Media Services, NAF Claim No. FA 1588118 (2015). See also, Boston Medical Center Corporation v. Ryan G Foo / PPA Media Services, NAF Claim No. FA 1586917 (2014) (“The Panel finds that Respondent’s history of bad faith supports Complainant’s contentions and therefore finds Respondent has engaged in a pattern of bad faith use and registration pursuant to Policy ¶4(b)(ii).”)
Regardless of whether this Panel determines that this demonstrates a pattern of conduct which deprives Complainant the ability to reflect its mark in the .org TLD under Policy ¶4(b)(ii), the facts of ¶4(b) are not exhaustive and this Panel may nevertheless consider Respondent’s past actions as evidence of its state of mind in the present dispute. Commonwealth Bank of Australia v. Howard Johns Consultancy P/L, WIPO Case No. DCO2014-0033 (“The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found…”)
Finally, as more fully set forth above, by infringing upon Complainant’s internationally famous ORACLE Mark, Respondent intentionally uses the Marks in its domain name to attract Internet searchers by creating a strong likelihood of confusion. This conclusively shows its bad faith intent.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the Disputed Domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(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 owns the ORACLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,239, registered July 6, 1982). Complainant uses the ORACLE mark in connection with its computer hardware systems and enterprise software products. Registration of a mark with a governmental trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant need only show it has SOME rights to the mark, not that Complainant’s rights are superior to Respondent’s rights. Complainant’s USPTO registration is sufficient to show rights under Policy ¶4(a)(i), even though Respondent resides in the Seychelles.
Complainant claims the <oralce.com>, <orcale.com> and <oracel.com> domain names are confusingly similar to Complainant’s ORACLE mark. Each disputed domain names incorporates a common misspelling of Complainant’s mark. Each disputed domain name features a transposition of merely two letters, and adds the generic top-level domain (“gTLD”) “.com” to disputed domain names. The <oralce.com> domain name transposes the letters “l” and “c.” The <orcale.com> domain name transposes the letters “c” and “a.” The <oracel.com> domain name transposes the letters “e” and “l.” There is confusing similarity where a disputed domain name merely transposes letters of a registered mark (at least where the first several letters remain the same). See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Adding a gTLD does not adequately distinguish the disputed domain names from the registered mark because it must be disregarded when making this analysis. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The disputed domain names are confusingly similar to the ORACLE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the disputed domain names (which is verified by the WHOIS record for the disputed domain names). The WHOIS information for the disputed domain names refers to “DAINA TRADING COMPANY LIMITED” as the registrant. There is no obvious relationship between the Respondent’s name and the domain names. These facts are sufficient to establish Respondent’s lack of rights to the disputed domain name according 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 claims Respondent lacks rights or legitimate interests in the <oralce.com>, <orcale.com> and <oracel.com> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. This appears to be true. Respondent’s domain names feature competing hyperlinks on the resolving websites, apparently diverting Internet users who are seeking Complainant’s website. Internet users can click on links such as “IT Services and Support,” “Java Development Software,” and “Cloud-Based Solutions.” The use of pay-per-click hyperlinks are not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)). Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is a known cybersquatter and has multiple prior UDRP decisions that resulted in a finding of bad faith or transfer. This Panel believes each case must rise or fall on its own merits. The fact Respondent has unsuccessfully defended (or even failed to defend) other proceedings unrelated to this Complainant means nothing in this proceeding.
Complainant claims Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent presumably receives pay-per-click fees through the use of its disputed domain names. Internet users may reach websites such as <craftechrms.com> and <intertech.com> by clicking on any of the featured hyperlinks. Respondent’s use of hyperlinks for the purpose of getting referral fees is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent has engaged in bad faith use under Policy ¶4(b)(iv).
The final question is whether Respondent registered the domain names primarily for the purpose of a competitor under Policy ¶4(b)(iv). Certainly, Respondent has disrupted Complainant’s business. It does not take much to determine Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business. The only question is whether or not Complainant and Respondent are competitors. This Panel is willing to infer this fact based upon the available information (especially since Respondent is advertising Complainant’s competitors).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <oralce.com>, <orcale.com> and <oracel.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 11, 2015
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