Oracle International Corporation v. DOMAIN ADMIN / WHOIS PRIVACY CORP.
Claim Number: FA1712001764610
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), <<PARTYLOCATION>>.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adthis.org>, registered with Internet Domain Service BS Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2017; the Forum received payment on January 5, 2018.
On December 29, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <adthis.org> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 January 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@adthis.org. Also on January 8, 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 February 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant, Oracle International Corporation, uses the ADDTHIS mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,497,283, registered Sept. 2, 2008). Respondent’s <adthis.org> is confusingly similar as it contains Complainant’s ADDTHIS mark in its entirety, merely removing the letter “d”, and adding the generic top level domain (“gTLD”) “.org.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the ADDTHIS mark for any purpose. 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. Respondent is not making an active use of the disputed domain name and uses the name in attempt to download malware on user’s computers.
Respondent has registered and used the disputed domain name in bad faith. Respondent is passively holding the <adthis.org> domain name in attempt to download malware on user’s computers. In addition, Respondent has employed a privacy service to hide its true identity. Further, Respondent has failed to respond to Complainant’s cease and desist letters. Finally, Respondent must have had actual knowledge of Complainant’s mark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Oracle International Corporation of Redwood Shores, CA, USA. Complainant is the owner of domestic and international registrations for the mark ADDTHIS, which it has continuously used since at least as early as 2006, in connection with its provision of a web based social bookmarking service. Complainant is also the owner of numerous domain names and sites, including <addthis.com>, through which it purportedly promotes its social bookmarking service to billions of unique visitors monthly.
Respondent is Domain Admin / Whois Privacy Corp. of Nassau, The Bahamas.
Respondent’s registrar’s address is listed as the same. The Panel notes that the disputed domain name was created on or about March 24, 2014.
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 ADDTHIS mark based upon its registration with the USPTO (e.g. Reg. No. 3,497,283, registered Sept. 2, 2008).
Registration with 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)). The Panel here finds that Complainant has rights in the ADDTHIS mark per Policy ¶ 4(a)(i).
Complainant asserts that <adthis.org> is confusingly similar to the ADDTHIS mark as it contains the mark in its entirety, only deleting the letter “d”, along with adding the gTLD “.org.” Prior panels have found that slight differences between domain names and registered marks, such as deleting a letter in connection with the mark, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds the <adthis.org> does not contain changes that sufficiently distinguish it from the ADDTHIS mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <adthis.org>. Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Domain admin / whois privacy corp. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. 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, Complainant has not authorized Respondent to use the ADDTHIS mark in any way. 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 here finds that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name for any bona fide offering of goods or services, or legitimate noncommercial or fair use. Complainant contends that Respondent has made no effort to use <adthis.org> since it was registered. When the respondent is not using the disputed domain name in connection with an active website, the Panel may find that the respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant contends Respondent’s domain name resolves to a blank webpage. The Panel here finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has registered and uses the <adthis.org> domain name in bad faith because Respondent is attempting to commercially gain from its use of the <adthis.org> domain name, via a malicious attack scheme to harm others. Use of a disputed domain name to install malware on user’s computers or phish Internet users may be evidence of bad faith. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Here, Complainant asserts that Respondent’s attempt to harm others through the use the <adthis.org> domain in a malicious attack scheme also shows its attempt at commercial gain – either for itself or for others who may profit from such activities. However, Complainant fails to provide any direct evidence of Respondent’s alleged malicious attack scheme to harm others via attempts to install malware.
Complainant argues that Respondent has registered and uses the <adthis.org> domain name in bad faith because Respondent is merely passively holding the disputed domain name. Bad faith under Policy ¶ 4(a)(iii) can be found where a respondent does not make an active use of a domain name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant contends the domain name does not resolve to an active website, and provides evidence in support thereof. The Panel here finds that Respondent’s inactive holding of the domain name indicates it registered and uses the name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <adthis.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 16, 2018
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