Oracle International Corporation and NetSuite, Inc. v. Gna Jobs
Claim Number: FA2202001986029
Complainant is Oracle International Corporation and NetSuite, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Gna Jobs (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclenetsiute.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2022; the Forum received payment on February 25, 2022.
On March 1, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <oraclenetsiute.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@oraclenetsiute.com. Also on March 1, 2022, 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 March 24, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On March 25. 2022, pursuant to Rule 12 of the Policy, the Panel issued a Procedural Order requiring the Complainants to clarify their request in Part VII of the Complaint at paragraph 13, Remedies Requested, and identify the Complainant to which they request the disputed domain name be transferred and allowing Respondent may make submissions on the Complainants’ said additional information within two days of the date on which it is served with said additional information.
On March 28, 2022, Complainants responded requesting that the disputed domain name be transferred to Complainant Oracle International Corporation.
No timely submissions were received from Respondent and the Panel proceeded to make this Decision.
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 disputed domain name be transferred from Respondent to Complainant Oracle International Corporation.
A. Complainant
In a preliminary issue, Complainants state that Complainant Oracle International Corporation is the parent company of Complainant NetSuite, Inc., having acquired it in 2016 through a share purchase and submit that consolidation of multiple related complainants under such circumstances has been granted without hesitation by prior Panels. See, Marriott International, Inc. and Marriott Worldwide Corporation v. Eco Pellets / Ecopellets ltd, FA 1766541 (Forum Feb. 13, 2018) (“because the Complaint suggests, without objection from Respondent, that the two Marriott entities together own, promote and enforce their rights in the MARRIOTT HOTEL mark, we conclude that those Complainant entities should be deemed a single Complainant for all purposes throughout this proceeding.”); Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., Case No. D2009-1243 (WIPO Nov. 6, 2009) (Consolidation upheld where “Complainants are represented by a single authorized representative; each Complainant seeks the same remedy with respect to each disputed domain name; and the Complaint involves a single Respondent….”).
Complainants submit that given the close legal relationship between the two Complainants as parent and subsidiary companies, their representation by the same attorney, and their seeking of the same remedy in this case based on closely related trademarks, consolidation of both into this single Complaint is appropriate, efficient, and will create no prejudice to the Respondent.
Relying on their ownership of their respective portfolios of trademark and service mark registrations described below, and extensive use of their marks which they submit have become globally famous, Complainants claim rights in the ORACLE and NETSUITE trademarks and service marks.
Complainants submit that Complainant Oracle International Corporation, founded in 1977 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.
In 1998, Complainant NetSuite, Inc. pioneered the cloud computing revolution, establishing the world’s first company dedicated to delivering business applications over the internet and today, provides a suite of cloud-based financial / Enterprise Resource Planning (ERP) and omnichannel commerce software that runs the business of more than 19,000 customers in more than 200 countries and territories.
In 2016, Complainant NetSuite, Inc. was acquired by the Oracle International Corporation. Since its inception, Complainant has continually operated in interstate commerce.
Complainants allege that the disputed domain name <oraclenetsiute.com> is confusingly similar, on its face, to Complainants’ registered and distinctive marks.
Users will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainants and Respondent by Respondent’s use of the <oraclenetsiute.com> domain name. It has been held, in decisions too numerous to mention, that a minor misspelling of a complainant’s trademark creates a confusingly similar domain name. See, Navy Federal Credit Union v. Terry Senn, FA 1677923 (Forum June 30, 2016) (“The at-issue domain name [navyfedearl.org] contains an obvious misspelling of Complainant’s NAVY FEDERAL trademark less its space where the letter ‘a’ and ‘r’ are transposed.”)
As in the above-cited decisions, Complainant submits that Respondent in the present dispute creates confusion by using identical copies of Complainants’ marks and merely transposing the letters “u” and “i” in the NETSUITE mark, thereby seeking to make those who view the <oraclenetsiute.com> domain name wrongly believe that it is a legitimate domain name and website of the Complainants, specifically, the <www.Oracle.com> or <www.NetSuite.com> addresses.
Finally, the addition of the gTLD <.com> extension does nothing to alleviate confusion between the Marks and the <oraclenetsiute.com> domain name.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that with respect to Policy ¶ 4(c)(ii), the public Whois record for the <oraclenetsiute.com> domain name identifies Respondent as “Gna Jobs”. As such, there is no evidence that Respondent is commonly known by the <oraclenetsiute.com> domain name or the terms “oracle” or “netsuite”.
Complainants argue that Respondent does not operate a business or other organization under these names and nor does it own any trademark or service mark rights in the terms ORACLE and/or NETSUITE. See, Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”)
Complainants add that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(ii). Respondent is not affiliated with, nor authorized by Complainants to use the ORACLE or NETSUITE Marks yet the disputed domain name gives the false impression that it is so affiliated and authorized.
Further, Complainant alleges that the disputed domain name resolves only to a parking page or does not resolve to any website at all, as shown in a screen capture annexed to the Complaint. Complainant contends that panels established under the Policy have not hesitated to hold that no legitimate interest exists on the part of a respondent. In a case that highlights this point, a Panel found that the respondent had no rights or legitimate interests in the <harrywinston.tokyo> domain name because “parked pages do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).” Harry Winston, Inc. v. Sean Romaro / Searom Global Pty Ltd, FA 1608000 (Forum Apr. 17, 2015).
Furthermore Complaint submits that there is a Mail Exchange (MX) record associated with the disputed domain name and this indicates that Respondent has used, or intends to use it for email, and argues that the fact that the famous ORACLE and NETSUITE marks are copied strongly in the disputed domain name suggests that Respondent plans to use such email for phishing or spam and neither of these activities are bona fide offerings. Decathlon v. Privacy service provided by Withheld for Privacy ehf/ Tanya Rivera, D2021-4369 (WIPO Feb. 12, 2022) (“the fact that the mail exchanger record (MX record), which identifies the mail server dedicated to accepting email messages on behalf of a specific domain name, is configured, clearly suggests that the Respondent is using or is preparing to use the disputed domain name also to send and receive email communications. Such messages would in fact result to be sent from [...]@decathlon.work email addresses which therefore would certainly be apt to mislead the recipients as to their source and as to the endorsement of the content by the Complainant.”)
Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the <oraclenetsiute.com> domain name without intent for commercial gain, so its actions do not fall within Policy ¶ 4(c)(iii) and Respondent has no plausible basis to claim otherwise – particularly in light of its unique combination of Complainants’ marks to mimic Complainants’ own ,www.Oracle.com> and/or <www.NetSuite.com> website addresses – and any claim of innocent use should be viewed with great suspicion. See, DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Forum July 14, 2015) (Respondent’s claim that its <Dunkin.menu> domain would be used to promote its basketball classes – i.e., a “menu” of techniques for “dunkin” the ball – held not credible and provided it with no rights or legitimate interests in the domain).
Complainants next allege that the disputed domain name was registered and is being used in bad faith arguing that Respondent intentionally targeted their respective marks without consent from Complainants.
Complainants submit that Respondents were on actual notice of Complainants’ rights in its globally famous marks as a result of Complainants’ extensive use of the marks which long predates the date on which Respondent acquired the <oraclenetsiute.com> domain name. See, 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 disputed domain names.”)
Complainants assert that claimed lack of knowledge of Complainant’s marks by Respondent is simply not credible given the global fame of the marks and the similarity of the disputed domain name to Complainant’s own long established websites at <www.Oracle.com> and <www.NetSuite.com>.
Furthermore, in numerous UDRP decisions the international fame of a trademark has been held, alone, sufficient to create a presumption of bad faith. See, WIPO Overview 3.0, at par. 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”).
In Alberto-Culver International, Inc. v. Goodsteed Limited / Domains by Proxy, Inc., D2009-1643 (WIPO Mar. 2, 2010), the Panel agreed with Complainant’s position that “[w]hen a trademark is famous, there is a prima facie inference of bad faith”).
Respondent has no substantive content at the website affiliated with the disputed domain name which is being merely passively held despite the potential for improper use. Beginning with Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), a number of Panels have held that, after considering all the circumstances of a given case, and despite the fact that none of the representative examples of Policy ¶ 4(b) are directly implicated, it is possible that a “[r]espondent’s passive holding amounts to bad faith.” Telstra, supra (stating that the Policy “recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”).
Given the Respondent’s obvious targeting of the ORACLE and NETSUITE marks, it is more than reasonable for the Panel to conclude that the circumstances of this case support a finding of bad faith through passive holding.
Complainant further submits that the fact that the disputed domain name contains an imitation and close typographical variation of Complainants’ own <www.Oracle.com> and <www.NetSuite.com> addresses reveals that Respondent is likely planning to use it for phishing activity intended to harvest the personal and financial information of Complainants’ customers, and is likely to commit identity theft and other cyber abuse. AmerisourceBergen Services Corporation v. John Sommers, FA 1960587 (Forum Sept. 20, 2021) (“Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business.
At a minimum, Respondent is creating initial interest confusion by registering and using the disputed domain name. A respondent’s use of a disputed domain name to cause Internet users initial interest confusion as to affiliation with a complainant has been found to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See, Medline Industries, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1886034 (Forum Mar. 31, 2020).
Next, Complainants note that there is a mail exchange (MX) record associated with the <oraclenetsiute.com> domain name and asserts that this indicates Respondent’s bad faith intent. When viewed against all of the circumstances of a given case, the configuration of MX records for a disputed domain name may indicate a probability that it will be used in connection with spam, phishing, or other activity that would be considered bad faith use under Policy ¶ 4(a)(iii). See Equifax Inc. v. Whois Privacy, Private by Design, LLC / Damien Surray, D2021-2748 (WIPO Oct. 6, 2021) (“The disputed domain name is also associated with MX records, demonstrating that Respondent has the ability to send from and receive email communications to the disputed domain name. Prior UDRP panels have found the association of MX records with a disputed domain name to be evidence of use in bad faith.”).
An additional consideration for the Panel is Respondent’s prior cybersquatting activity that neatly fits the pattern shown in the present dispute. In the case of PepsiCo, Inc. v. Gna Jobs, 103724 (CAC June 10, 2021) it was held that “[t]he disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: PEPSSICO.COM is, in itself, a clear typosquatting of the world-famous PEPSI / PEPSICO trademarks.”
Here, as well, Respondent has typosquatted on two famous trademarks and has created the facility for its use in email campaigns.
Finally, the Complainants’ Representative made a good-faith effort to communicate with the Respondent prior to the filing of this UDRP complaint using the only contact information available, that appearing in the public Whois record for the disputed domain name.
On January 24, 2022 Complainants’ Representative wrote to the Respondent demanding that it cease all use of the disputed domain name and transfer it to the Complainant as shown in copy emails exhibited in an annex to the Complaint. Follow-up messages were sent on February 1, 2022 and February 8, 2022. Id. Despite these multiple attempts at communicating with the Respondent, no response has been received. Such non-responsiveness has also been held to support a finding of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants are developers and marketers of enterprise software products and services, cloud data storage, and computer hardware systems.
Complainant Oracle International Corporation is the parent company of Complainant NetSuite, Inc., having acquired it in 2016 through a share purchase.
Complainant Oracle International Corporation is the owner of the ORACLE trademark for which it owns an international portfolio of trademark registrations including:
· United States registered trademark ORACLE, registration number 1,200,239, registered on the Principal Register on July 6, 1982 for goods in international classes 9 and 16; and
· United States registered service mark ORACLE, registration number 2,107,556, registered on the Principal Register on October 21, 1997 for services in international classes 35, 36 and 42.
Complainant NetSuite, Inc. is the owner of the NETSUITE service mark for which it owns an international portfolio of trademark and service mark registrations including:
· United States registered service mark registration, NETSUITE, registration number 3,452,921, registered on June 24, 2008 for services in international class 42;
· United States registered service mark registration, NETSUITE, registration number 4,648, 029, registered on the Principal Register on December 2, 2014 for services in international classes 35, 41 and 42.
Complainants have established Internet presences maintaining their respective principal websites at <www.Oracle.com> or <www.NetSuite.com> addresses.
The record shows that disputed domain name <oraclenetsiute.com> was registered on January 10, 2022 and does not resolve to any active website.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
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”).
Preliminary Issue
This Panel accepts Complainants’ uncontested submission that given the close legal relationship between the two Complainants as parent and subsidiary companies, their representation by the same attorney, and their seeking of the same remedy in this case based on closely related trademarks, consolidation of both into this single Complaint is appropriate, efficient, and will create no prejudice to the Respondent.
Complainants has provided convincing evidence that they have rights in the ORACLE and NETSUITE marks, established by their ownership of their respective portfolios of trademark and service mark registrations and extensive use of each of the marks in their enterprises as developers and marketers of enterprise software products and services, cloud data storage, and computer hardware systems
The disputed domain name <oraclenetsiute.com> consists of each of Complainants’ ORACLE and NETSUITE marks in their entirety, albeit with the a minor misspelling of the word the NETSUITE mark with the letters “u” and “i” in reverse order.
The misspelling of the NETSUITE mark in the disputed domain name is likely to be unnoticed by many Internet users.
Complainants’ ORACLE and NETSUITE marks are clearly identifiable within the disputed domain name and are in fact the only elements except for the gTLD extension <.com> which may be ignored for the purposes of comparison because in the circumstances of this case it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the ORACLE and NETSUITE marks, in which Complainants have rights and Complainants have therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).
Complainants have made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that:
there is no evidence that Respondent is commonly known by the <oraclenetsiute.com> domain name or the terms “oracle” or “netsuite”;
the public Whois record for the <oraclenetsiute.com> domain name identifies Respondent as “Gna Jobs”. As such:
· Respondent does not operate a business or other organization under these names and nor does it own any trademark or service mark rights in the terms ORACLE and/or NETSUITE;
· Respondent is not affiliated with, nor authorized by Complainants to use the ORACLE or NETSUITE Marks yet the disputed domain name gives the false impression that it is so affiliated and authorized;
· The disputed domain name is confusingly similar to Complainants’’ famous ORACLE and NETSUITE trademarks and service marks yet it is being passively held and resolves only to a parking page which does not constitute a bona fide offering of goods or services;
· the fact that the famous ORACLE and NETSUITE marks are copied strongly suggests that Respondent plans to use such email for phishing or spam and neither of these activities are bona fide offerings.
· Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i);
· Respondent is not making a legitimate noncommercial or fair use of the <oraclenetsiute.com> domain name without intent for commercial gain, so its actions do not fall within Policy ¶ 4(c)(iii).
It is well established that once a Complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainants have therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainants’ trademark and service mark rights in the ORACLE and NETSUITE marks long predate the registration of the disputed domain name. Both of these trademarks are not only distinctive but hey have each achieved a very high degree of recognition in the marketplace.
Given the distinctiveness, fame and strength of the Complainants’ trademarks and service marks and the extent of the reputation of the ORACLE and NETSUITE marks it is implausible that the disputed domain name which is a combination of both marks could have been registered without knowledge of Complainants, their marks, products and reputations.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainants’ mark and goodwill in the ORACLE and NETSUITE marks.
The screen capture adduced in evidence in the annex to the Complaint shows that the disputed domain name is being passively held resolving to a parking page.
Complainants submit that there is a Mail Exchange (MX) record associated with the disputed domain name which indicates that Respondent has or intends to use it for email and strongly suggests that Respondent plans to use such email for phishing or spam. It is not necessary to make a finding in this regard because the passive holding of the disputed domain name in the circumstances of this case is sufficient to prove on the balance of probabilities that the disputed domain name is being used in bad faith.
Those circumstance are that Respondent is passively holding the disputed domain name that is composed of Complainants’ famous ORACLE and NETSUITE marks, Complainants’ have not given any permission to use their marks, it is implausible that the disputed domain name could be used for any bona fide purpose without Complainants’ consent, the disputed domain name includes a misspelling of the NETSUITE mark which is indicative of typosquatting, Respondent has not responded to correspondence from Complainants’ representatives prior to the making of this Complaint, it appears that Respondent is engaged in a pattern of registering domain names which incorporate well known third party trademarks, Respondent has not engaged with this proceeding or submitted any Response or explanation as to why the disputed domain names are being held and parked.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <oraclenetsiute.com> domain name be TRANSFERRED from Respondent to Complainant Oracle International Corporation.
James Bridgeman SC
Panelist
Dated: March 31, 2022
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