Oracle International Corporation v. Zhi Chao Yang
Claim Number: FA2305002045880
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, Washington D.C., USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclcorp.com>, (‘the Domain Name’) registered with Cloud Yuqu LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on May 24, 2023; Forum received payment on May 24, 2023.
On May 25, 2023, Cloud Yuqu LLC confirmed by e-mail to Forum that the <oraclcorp.com> Domain Name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 May 25, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 14, 2023 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@oraclcorp.com. Also on May 25, 2023, the Chinese and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant is the owner of the trade mark ORACLE registered, inter alia, in the USA for computer software related goods and services with first use recorded as 1979.
The Domain Name registered in 2022 is confusingly similar to the Complainant’s mark merely omitting the letter ‘e’, adding the descriptive term ‘corp’ and the gTLD .com none of which prevents the said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used for competing pay per click links which is not a bona fide offering of services or a legitimate non commercial or fair use. The Domain Name which is an example of typosquatting has been registered and used in opportunistic bad faith in full knowledge of the Complainant’s rights to take advantage of the Complainant’s trade mark to confuse Internet users for commercial gain.
The Respondent has been the subject of many adverse decisions under the UDRP including a case involving the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
The Complainant is the owner of the trade mark ORACLE registered, inter alia, in the USA for computer software related goods and services with first use recorded as 1979.
The Domain Name registered in 2022 has been used for competing pay per click links. The Respondent has been the subject of many adverse decisions under the UDRP including a case involving the Complainant.
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”).
The Domain Name in this Complaint combines ‘oracl’ a sign confusingly similar to the Complainant’s ORACLE mark (registered, inter alia, in the USA for software related goods and services with first use recorded as 1979) omitting the letter ‘e’ and adding the generic term ‘corp’ and the gTLD .com.
Panels have found that omitting one letter of a registered mark does not prevent confusing similarity between a domain name and that mark. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). As such the omission of the letter ‘e’ from the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic word ‘corp’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.
A gTLD does not prevent confusing similarity between the Domain Name and the Complainant’s mark per Policy 4(a)(i). See Red Hat Inc v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied
Rights or Legitimate Interests
The Complainant has not authorised the use of a sign confusingly similar to its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the 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).
Use for pay per click links does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of .. domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Further the Respondent has pointed the site attached to the Domain Name to a site offering links to competing software related goods/services which are not connected with the Complainant. The usage of the Complainant’s mark which is well known for software goods and services in relation to similar goods or services not connected with the Complainant is not fair, and confusing. As such it cannot amount to the bona fide offering of services or a non commercial legitimate or fair use. (See Am. Intl Group Inc v. Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Panel notes the large numbers of adverse decisions against the Respondent under the UDRP including another case involving the Complainant’s mark indicating a pattern of bad faith activity. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)).
Use for pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain. The prior adverse UDRP decision against the Respondent involving the Complainant shows that the Respondent had actual knowledge of the Complainant and its rights, business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services and goods offered on it likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See Health Republic Insurance Company v. Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
The Panel notes the allegation that the Respondent has misspelled the Complainant’s mark in the Domain Name, but declines to make a formal finding of typosquatting due to the inclusion of the additional descriptive element ‘corp’ in the Domain Name meaning that the Domain Name does not consist only of the Complainant’s mark or a url of the Complainant including the technical gTLD.
In conclusion, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oraclcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 21, 2023
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