Oracle International Corporation v. Isaac Goldstein / DOMAIN MAYBE FOR SALE, CHECK AFTERNIC.COM
Claim Number: FA2010001918801
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Isaac Goldstein / DOMAIN MAYBE FOR SALE, CHECK AFTERNIC.COM (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orecle.com>, registered with Snoqulamiedomains.com 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.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2020; the Forum received payment on October 29, 2020.
On October 30, 2020, Snoqulamiedomains.com LLC confirmed by e-mail to the Forum that the <orecle.com> domain name is registered with Snoqulamiedomains.com LLC and that Respondent is the current registrant of the name. Snoqulamiedomains.com LLC has verified that Respondent is bound by the Snoqulamiedomains.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 November 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@orecle.com. Also on November 2, 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.
A timely Response was received and determined to be complete on November 5, 2020.
On November 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, 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.
Complainant requests that the domain name <orecle.com>, be transferred from Respondent to Complainant.
PRELIMINARY MATTER: Language of the Proceedings
Per UDRP Rules, Paragraph 11, the language of the Registration Agreement for the (Orecle.com) domain name is in English. Therefore, English shall be the language employed in the case at bar.
A. Complainant
Complainant develops and markets software products and services. 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 Jul. 6, 1982). See Compl. Ex. E-1. Respondent’s <orecle.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely replaces the letter “a” with the letter “e” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <orecle.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use, as Respondent uses the disputed domain name to divert Internet users to a website that attempts to install malicious software on the Internet user’s computer.
Respondent registered and uses the <orecle.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name, in excess of, out-of-pocket costs. Additionally, Respondent has an established pattern of bad faith registrations, as evidenced by prior adverse UDRP decisions against the Respondent. Furthermore, Respondent is attempting to attract Internet users for financial gain and to disrupt Complainant’s business by attempting to install malicious software onto Internet user’s devices.
B. Respondent
Respondent concedes that Complainant has the ORACLE trademark, but the <orecle.com> domain name is unrelated to Complainant’s mark.
The <orecle.com> domain name was registered on September 28, 2020.
(1) the domain name <orecle.com>, 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 <orecle.com>; and
(3) the domain name <orecle.com>, has been registered and is being used in bad faith.
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.
Complainant asserts rights in its ORACLE mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,200,239, registered Jul. 6, 1982). See Compl. Ex. E-1. Registration with the USPTO is sufficient to demonstrate rights in a 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).”). Therefore, the Panel finds that the Complainant has rights in the ORACLE mark under Policy ¶4(a)(i).
Respondent did not specifically respond to Policy ¶4(a)(i) regarding whether or not its domain name of <orecle.com> is identical or confusingly similar to Complainant’s registered trademark of Oracle. However, Respondent did state that its domain name is unrelated to Complainant’s mark. Panel rules that the degree of relationship of Respondent’s goods and services to the goods and services of the Complainant, is not determinative. This is because it is commonplace for a singular brand name to span a wide variety of goods and services. And further, the similarity of the goods and services is a minor aspect of the overall analysis of the intellectual property concept of confusing similarity.
The predominate analytical aspect of ascertaining confusing similarity is an examination of the mark itself; as the mark is the vehicle through which the prospective customer visually recognizes the brand and vocally calls for the goods. Here, Respondent’s <orecle.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely replaces the letter “a” with the letter “e” and adds the “.com” gTLD. Replacing a letter for another and adding a gTLD to a complainant's mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <orecle.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 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”).
Respondent has put forth no evidence that Respondent has incurred rights or legitimate interests in the <orecle.com> domain name via the conduits of being commonly known by the disputed domain name, or via being licensed or authorized by the Complainant to use Complainant’s mark.
Panel has not viewed any relevant WHOIS information, as nomination evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS of record identifies the Respondent as “Isaac Goldstein / DOMAIN MAYBE FOR SALE, CHECK AFTERNIC.COM.”
Respondent has not propounded any evidence indicating that Respondent has been authorized by Complainant to use the complainant’s mark. Hence, a further indication that the Respondent lacks rights or legitimate interests in the disputed domain name of <orecle.com>. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
As Respondent has not acquired the status of being commonly known by the disputed domain name, nor of being authorized to use the disputed name. The Panel therefore finds, that Respondent has acquired no rights or legitimate interests in the <orecle.com> domain name under Policy ¶ 4(c)(ii).
Respondent fails to use the <orecle.com> domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users to a website that attempts to install malicious software on the Internet user’s computer.
Panel has viewed screenshots of the disputed domain name’s resolving webpage, which directs Internet users to different webpages that attempt to install malware. See Compl. Ex. F-1 and F-2.
Using a disputed domain name to divert Internet users seeking a Complainant’s goods or services to a website that attempts to install malicious software is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”).
The Panel concludes, based upon an analysis of the above stated facts and law, that Respondent fails to use the <orecle.com> domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The totality of Complainant’s evidence, adduced above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name of <orecle.com>, under Policy ¶ 4(a)(ii).
Panel concludes that Respondent has not subsequently shouldered its shifted burden of proof, to evidence that Respondent does indeed have rights or legitimate interests, so as to satisfy Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant has pro-offered credible evidence that Respondent has registered and uses the <oracle.com> domain name in bad faith.
Specifically, Respondent is attempting to sell the disputed domain name in excess of out-of-pocket costs. Here, Complainant provides a screenshot of the disputed domain name’s current resolving webpage, showing the domain name is for sale for $888, as well as a listing for the disputed domain name on a domain reseller site, showing the domain was available for $14,340. See Compl. Ex. F-3 and F-5.
Registering a disputed domain name with an intention of selling it for a price that exceeds the initial cost of registering the domain name is evidence of bad faith registration under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i).”).
Respondent has an established pattern of bad faith registrations as evidenced by prior UDRP decisions that were held adverse to Respondent. Here, Panel has viewed a list of prior UDRP disputes, wherein Isaac Goldstein was a party, that resulted in the transfer of the disputed domain names from Mr. Goldstein. Panel has also viewed a list of currently held domain names that alludes to precipitous infringement upon other well- known trademarks. See Compl. Ex. G-1 and G-2.
A pattern of bad faith may be established if a Respondent has been a party to prior UDRP complaints that resulted in the transfer of the at-issue domain name under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search at the Forum, http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn). Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(ii)”).
Therefore, the Panel finds that Respondent has an established pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Panel has reviewed Complainant’s screenshots of the disputed domain name’s resolving webpage, which directs Internet users to different webpages that attempt to install malware, which Complainant contends is a disruptive use and clearly aimed at commercial gain. See Compl. Ex. F-1 and F-2. Panel concludes that Respondent is attempting to attract Internet users for financial gain and to disrupt Complainant’s business by attempting to install malicious software onto Internet user’s devices.
Registering a disputed domain name to disrupt a Complainant’s business and to attract internet users for financial gain by installing malicious software onto Internet user’s devices is considered to be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a Complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Based upon the above cited evidence and analysis, the Panel finds that Respondent registered and uses the <orecle.com> domain name in bad faith under Policy ¶¶¶ 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 <orecle.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: November 23, 2020
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