Oracle International Corporation v. Zhichao
Claim Number: FA2103001936168
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myoraclebenefits.com>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2021; the Forum received payment on March 11, 2021.
On March 11, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <myoraclebenefits.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2021 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@myoraclebenefits.com. Also on March 12, 2021, 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 April 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 is one of the world’s largest developers and marketers of enterprise software products and services, cloud data storage, and computer hardware systems – particularly its own brands of database management systems and applications. Complainant has rights in the ORACLE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,200,239, registered July 6, 1982). Respondent’s <myoraclebenefits.com> domain name is confusingly similar to Complainant’s registered and distinctive ORACLE mark as it merely adds the generic words “my” and “benefits” and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <myoraclebenefits.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to a website featuring competitive pay-per-click hyperlinks.
Respondent registered and uses the <myoraclebenefits.com> domain name in bad faith. Respondent has a prior history of cybersquatting and uses the disputed domain name in connection with competitive pay-per-click hyperlinks. Respondent also registered the disputed domain name with actual knowledge of Complainant’s rights in the ORACLE mark as evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s largest developers and marketers of enterprise software products and services, cloud data storage, and computer hardware systems. Complainant has rights in the ORACLE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,200,239, registered July 6, 1982). Respondent’s <myoraclebenefits.com> domain name is confusingly similar to Complainant’s registered and distinctive ORACLE Mark.
Respondent registered the <myoraclebenefits.com> domain name on March 15, 2020.
Respondent lacks rights or legitimate interests in the <myoraclebenefits.com> domain name. The disputed domain name resolves to a website featuring competitive pay-per-click hyperlinks.
Respondent registered and uses the <myoraclebenefits.com> domain name in bad faith. Respondent has a prior history of cybersquatting and uses the disputed domain name in connection with competitive pay-per-click hyperlinks.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ORACLE mark through its registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <myoraclebenefits.com> domain name is confusingly similar to Complainant’s ORACLE mark per Policy ¶ 4(a)(i) as it adds the generic words “my” and “benefits” and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <myoraclebenefits.com> domain name as Respondent was not commonly known by the disputed domain name. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information for the disputed domain name lists the registrant as “ZHICHAO,” and there is no other evidence to suggest that Respondent is commonly known by the disputed domain name.
Respondent fails to use the <myoraclebenefits.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the domain name resolves to a website featuring competitive pay-per-click hyperlinks. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides a screenshot of Respondent’s resolving website, highlighting that the website is a classic pay-per-click page displaying monetized links which divert visitors to unrelated and competing websites.
Respondent registered and uses the <myoraclebenefits.com> domain name in bad faith. Respondent has a prior history of cybersquatting and uses the disputed domain name in connection with competitive pay-per-click hyperlinks.
A respondent’s prior UDRP history can evidence bad faith registration and use per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant highlights that Respondent is a habitual cybersquatter with over 200 UDRP decisions having been decided against it. Therefore, Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Respondent registered and uses the <myoraclebenefits.com> domain name in bad faith as Respondent hosts commercial hyperlinks at the disputed domain. Using a disputed domain name in connection with pay-per-click hyperlinks can evidence bad faith registration and use per Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Therefore, Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Respondent registered the <myoraclebenefits.com> domain name with actual knowledge of Complainant’s rights in the ORACLE mark. Worldwide prominence of a mark can show that a respondent had actual knowledge of the mark and bad faith per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, prior UDRP panels have found Complainant’s ORACLE mark to be famous. See e.g., Oracle International Corporation v. Ahmad Farshchi, DIR2017-0010 (WIPO May 26, 2017) (“the Panel finds that the Complainant’s trademark ORACLE is a well-known trademark. Hence it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the <MyOracleBenefits.com> domain name.”); Oracle International Corporation v. Linda Brooks, FA 1686338 (Forum Sept. 5, 2016) (“Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for her use of Complainant’s famous mark”). Therefore, Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myoraclebenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 19, 2021
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