Oracle International Corporation v. Wu Hai Tao
Claim Number: FA2010001916836
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Wu Hai Tao, China (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclecloudguard.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2020; the Forum received payment on October 13, 2020. The Complaint was received in English.
On October 15, 2020, DNSPod, Inc. confirmed by e-mail to the Forum that the <oraclecloudguard.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. 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 October 20, 2020, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of November 9, 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@oraclecloudguard.com. Also on October 20, 2020, the English and Chinese 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, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
The Panel notes that the relevant Registration Agreement present by Complainant is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant. Notably, Respondent has been a respondent in a prior UDRP proceeding conducted in English; Respondent has substantively responded to Complainant’s English language email communications without requesting their Chinese translation and; Respondent’s <oraclecloudguard.com> domain name consists of English words and uses the Roman alphabet. These circumstances indicate Respondent’s proficiency in English. Furthermore, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English as per Complainant’s request. Therefore, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Oracle International Corporation, develops and markets enterprise software products and services and computer hardware systems.
Complainant has rights in the ORACLE CLOUD mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <oraclecloudguard.com> domain name is confusingly similar to Complainant’s ORACLE CLOUD mark because it simply adds the descriptive term “guard” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <oraclecloudguard.com> domain name. Respondent is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name redirects internet users to third-party websites that attempt to install malware on users’ devices. To wit, internet users browsing to the at-issue domain name are automatically redirected to a series of third-party websites a technique sometimes known as the “Automatic Rapid Redirection to Malware” or “ARRM”. In this form of registration abuse, users are ultimately forwarded to a site that attempts to install malware on the user’s computer by way of a fake Adobe Flash Player Update message.
Respondent registered and uses the <oraclecloudguard.com> domain name in bad faith. Respondent offers to sell the at-issue domain name at a price beyond out of pocket expenses. Additionally, Respondent engages in a pattern of bad faith registration. Respondent also uses the domain name to attempt to attract users for commercial gain by confusing users as to the affiliation of the at-issue domain name with Complainant. Furthermore, respondent’s use of the domain name to distribute malware and the use of a privacy service indicate bad faith. Finally, Respondent had actual notice of Complainant’s rights in the ORACLE CLOUD mark based on the fame and extensive use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ORACLE CLOUD trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ORACLE CLOUD trademark.
Respondent uses the at-issue domain name the <oraclecloudguard.com> to offer it for sale and to distribute malware via a technique known as “Automatic Rapid Redirection to Malware.”
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its ORACLE CLOUD trademark and Complainant’s registration of its ORACLE CLOUD mark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s ORACLE CLOUD domain name contains Complainant’s ORACLE CLOUD trademark, less its domain name impermissible space, followed by the suggestive term “guard,” with all followed by a domain name-necessary top-level name, here “.com”. Additionally, Respondent registered the <oraclecloudguard.com> domain name the same day that Complainant announced a product named “Oracle Cloud Guard.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <oraclecloudguard.com> domain name from Complainant’s ORACLE CLOUD trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <oraclecloudguard.com> domain name is confusingly similar to Complainant’s trademark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Wu Hai Tao” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <oraclecloudguard.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <oraclecloudguard.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the <oraclecloudguard.com> to redirect internet visitors to <oraclecloudguard.com> to third-party websites that attempt to install malware on such users’ devices using a technique called “Automatic Rapid Redirection to Malware.” The technique directs <oraclecloudguard.com> visitors to a third-party webpage that prompts such visitors to install malware disguised as an “Adobe Flash Player Update.” Respondent’s use of the confusingly similar domain name to distribute malware indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <oraclecloudguard.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent is shown to have offered to sell the <oraclecloudguard.com> domain name to Complainant for $2000 or $3000. Under Policy ¶ 4(b)(i), Respondent’s offer to sell the <oraclecloudguard.com> domain name to Complainant for a price that exceeds Respondent’s out-of-pocket costs indicates Respondent’s bad faith. See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”); see also Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, specifically noting that it would cost the complainant more to enforce its rights legally than to succumb to the respondent's attempted extortion).
Next, Respondent has suffered prior adverse UDRP decisions suggesting a pattern of bad faith domain name registration and indicating Respondent’s bad faith domain name registration and use of <oraclecloudguard.com> in the instant case under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Additionally, Respondent’s use of the confusingly similar domain name creates the impression that Respondent’s confusingly similar domain name is sponsored by or affiliated with Complainant when there is no such sponsorship or affiliation. Using the <oraclecloudguard.com> domain name to give a false impression of affiliation with Complainant shows Respondent’s bad faith registration and use of the <oraclecloudguard.com> domain name per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Moreover and as mentioned above regarding rights and legitimate interests, Respondent’s confusingly similar domain name is used to direct traffic to online processes intent on downloading malware to the client’s device. Respondent’s distribution of malware via the at-issue domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Finally, Respondent registered <oraclecloudguard.com> knowing that Complainant had trademark rights in the ORACLE CLOUD mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s registration of the domain name coincident with the Complainant’s announcement of “Oracle Cloud Guard,” and from Respondent’s offering the at-issue domain name for sale to Complainant. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <oraclecloudguard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 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 <oraclecloudguard.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 16, 2020
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