Oracle International Corporation v. John Carter
Claim Number: FA2003001889142
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, United States. Respondent is John Carter (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclehris.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm,Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2020; the Forum received payment on March 20, 2020.
On March 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oraclehris.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 March 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2020 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@oraclehris.com. Also on March 25, 2020, 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 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Oracle International Corporation, is a company that develops and markets software products. 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). The disputed domain name is identical or confusingly similar to Complainant’s ORACLE mark as it contains the ORACLE mark in its entirety and merely adds the letters “HRIS” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s ORACLE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in furtherance of a phishing scheme.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract Internet users for commercial gain. In addition, Respondent uses the disputed domain name in furtherance of a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s rights in the ORACLE mark at the time of registration.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on November 20, 2019.
2. Complainant has established 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).
3. Respondent sent emails to Complainant’s customers and attempted to obtain their Oracle login credentials.
4. The disputed domain features hyperlinks not related to Complainant’s business.
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 asserts rights in the ORACLE mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). 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).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,200,239, registered July 6, 1982). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <oraclehris.com> is confusingly similar to Complainant’s mark because the disputed domain name incorporates the ORACLE mark in its entirety and adds the letters “HRIS”, which is an abbreviation connected to Complainant’s business, along with the “.com” gTLD. The addition of an abbreviation and gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Police ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ORACLE mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that 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). The WHOIS information for the disputed domain name shows that the registrant’s name is “JOHN CARTER” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to confuse Internet users in an email phishing scheme. Use of a disputed domain name in furtherance of a fraudulent scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant claims that Respondent registered the disputed domain name to cause confusion by sending emails to Complainant’s customers and attempted to obtain their Oracle login credentials. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent’s change to its resolving website to feature unrelated hyperlinks does not confer Respondent rights or legitimate noncommercial or fair use. A respondent’s use of a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks is evidence that Respondent fails to make a bona fide offering or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain’s resolving webpage that features hyperlinks not related to complainant’s business. Thus, the Panel agrees that Respondent’s use of the disputed domain name indicates that it lacks rights and legitimate interest in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith. Respondent’s use of Complainant’s well known mark along with an abbreviation that is connected to Complainant’s business signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”) Complainant argues that Respondent intentionally targeted the ORACLE mark to create a likelihood of confusion in order to attract Internet users familiar with Complainant for their own financial gain. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent disrupts Complainant’s business by creating confusion in furtherance of a phishing scheme. Use of a disputed domain name in furtherance of a fraudulent scheme may constitute bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Complainant claims that Respondent registered the disputed domain name to cause confusion by sending emails to Complainant’s customers and attempted to obtain their Oracle login credentials. The Panel finds that this is evidence of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant also contends due to the international fame of the ORACLE mark that it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the mark. Complainant provides articles and social media accounts that show the worldwide fame and notoriety of the mark. Complainant further asserts that Respondent’s use of the disputed domain name in a phishing scheme indicates it had actual knowledge of Complainant’s rights.
The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oraclehris.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 23, 2020
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