Oracle International Corporation v. Quan Zhong Jun / Li Jin Liang
Claim Number: FA2008001907232
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy, District of Columbia. Respondent is Quan Zhong Jun / Li Jin Liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oaclecloud.com>, <oracleclod.com>, <oracleclou.com>, <oraclecoud.com>, and <oralecloud.com>, registered with DNSPod, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2020; the Forum received payment on August 5, 2020.
On August 6, 2020, DNSPod, Inc. confirmed by e-mail to the Forum that the <oaclecloud.com>, <oracleclod.com>, <oracleclou.com>, <oraclecoud.com>, and <oralecloud.com> domain name) are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 August 11, 2020, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of August 31, 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@oaclecloud.com, postmaster@oracleclod.com, postmaster@oracleclou.com, postmaster@oraclecoud.com, postmaster@oralecloud.com. Also on August 11, 2020, the Chinese 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 September 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Multiple respondents
There are two named respondents. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain names, provided that the domain names are registered by the same domain name holder.” Nonetheless, the Panel may accept on the evidence that there is a sufficient nexus or link between the named respondents so as to treat them as a single entity. The evidence of such a link here is (i) the fact that all of the disputed names are obvious misspellings of Complainant’s English language trademark, ORACLE CLOUD; (ii) all resolve to similar sites, (iii) all use the same registrar, and (iv) all use the same IP address. The Panel accepts Complainant’s submission that the disputed domain names are owned or controlled by a single person, whether that be one or other of the named respondents, or some third person. The Panel accordingly finds Rule 3(c) is satisfied. The term “Respondent” is accordingly used herein to refer to both named persons.
B. Language of the proceedings
The Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings be in the English language. The Panel has discretion under the Rules to allow that request and in the past UDRP panels have taken account of factors which demonstrate a respondent’s proficiency with the English language.[i] Here, the Panel notes that the resolving websites are in English and the disputed domain names are corruptions of an English language trademark. The Panel finds sufficient evidence to warrant that the proceedings should be in English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant asserts trademark rights in ORACLE CLOUD and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides computer and data software products and systems by reference to, inter alia, the trademark ORACLE;
2. Among those systems is a cloud-based computing service known as the ORACLE CLOUD.
3. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 5,195,735, registered May 2, 2017 for ORACLE CLOUD;
4. the disputed domain names were registered in July 2019 and all resolve to sites hosting advertisements for the goods or services of third parties; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 based on 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.[ii]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iii] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in ORACLE CLOUD.
Stripped of their non-distinctive TLDs the terms to be compared with the trademark are all obvious misspellings of the trademark. The Panel finds the disputed domain names to be confusingly similar to Complainant’s trademark.[iv]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The identity of the domain name registrants was shielded by a privacy service but in consequence of these proceedings the Registrar disclosed the names of the two respondents. The information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose.
The evidence is that the disputed domain names resolve to what appear to be similar websites with links to goods or services either unrelated to Complainant’s business under the trademark or competitive with that business. The Panel finds that there has been no bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names.[vi]
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds registration and use in bad faith pursuant without the need to refer to these four scenarios. The Panel has already found the disputed domain names to be confusingly similar to the trademark. In the absence of another explanation the Panel finds that Respondent targeted Complainant’s trademark and business at the time of registration[vii]. The Panel finds registration in bad faith. Further, it is more likely than not that the resolving websites exists for commercial gain in some form or another, most likely by way of pay-per-click referral fees. This use is in bad faith[viii].
The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oaclecloud.com>, <oracleclod.com>, <oracleclou.com>, <oraclecoud.com>, and <oralecloud.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 8, 2020
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also (Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 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; 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.”)
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, 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.”); DD IP Holder LLC v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1748952 (Forum Oct. 23, 2017) finding <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> confusingly similar to Complainant’s DUNKIN’ DONUTS mark.); Sanofi v. Marek Zdanowicz, D2017-0095 (WIPO Mar. 16, 2017) (“The disputed domain name [snaofi.com] is nearly identical to the SANOFI Trademarks, with a minor difference in the inversion of the two letters ‘a’ and ‘n’”).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) finding respondent’s use of <expediate.com> to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
[vii] See, for example, Oracle International Corporation v. Ahmad Farshchi, D2017-0010 (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.”)
[viii] See, for example, Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000).
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