Oracle International Corporation v. guo dy
Claim Number: FA2107001953991
Complainant is Oracle International Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is guo dy (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraclecoin.info>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oraclecoin.info> 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 July 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2021 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@oraclecoin.info. Also on July 8, 2021, 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 July 30, 2021, 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.
A. Complainant
Complainant contends as follows:
Complainant, Oracle International Corporation, is a global database management company.
Complainant has rights in the ORACLE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <oraclecoin.info> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the generic term “coin” and the “.info” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <oraclecoin.info> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant licensed or permitted Respondent to use the ORACLE mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use because Respondent passes off as Complainant on the resolving website, likely to collect personal information from users who believes they are visiting Complainant’s official site.
Respondent registered and uses the <oraclecoin.info> domain name in bad faith because Respondent created a website that impersonates Complainant in order to disrupt Complainant’s business and capitalize on the confusion with Complainant’s ORACLE mark. Moreover, Respondent failed to respond to Complainant’s several letters to clarify the matter of trademark infringement yet continues to operate the disputed domain name. Respondent also had actual knowledge of Complainant’s rights in the ORACLE mark based on the global fame of the mark and Respondent’s scheme to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ORACLE 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 trademark.
Respondent uses the at-issue domain name to address a website that impersonates an official website of 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its ORACLE mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain name contains Complainant’s ORACLE trademark followed by the term “coin” and is concluded with the top level domain name “.info.” The differences between Respondent’s <oraclecoin.info> domain name and Complainant’s ORACLE trademark are insufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <oraclecoin.info> domain name is confusingly similar to Complainant’s ORACLE trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
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 “guo dy” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <oraclecoin.info>. The Panel therefore concludes that Respondent is not commonly known by the <oraclecoin.info> 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 confusingly similar <oraclecoin.info> domain name to address a website aimed at passing itself off as being sponsored by, or affiliated with, Complainant. Respondent’s website may be further used to phish for the personal information of website visitors who, because of Respondent’s intentional deception, mistakenly believe that they are interacting with Complainant when they are not. Respondent’s use of the confusingly similar domain name to pass itself off as Complainant and/or phish for the private information of third party internet users 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 DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). Respondent’s intent to pass itself off as Complainant ‑even without promoting a phishing scheme‑ likewise fails to indicate a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a non-commercial 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 <oraclecoin.info> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as revealed above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name and its associated website to impersonate Complainant. The <oraclecoin.info> website features Complainant’s ORACLE mark, links to Complainant’s official website and social media pages, and a link to download a “White Paper,” which relates to Complainant’s use of block-chain technology. Also adding to the confusion, the bottom of Respondent’s website contains an incomplete California address (the location of Complainant’s office), a non-working phone number, and a footer stating “© 2021 ORACLE US”. Respondent’s website is obviously a sham designed to in some way benefit Respondent. Notably, Respondent’s use of <oraclecoin.info> disrupts Complainant’s business and attempts to exploit the intended confusion Respondent created between the domain name and Complainant’s ORACLE mark to likely phish for private data. Respondent’s use of the at-issue domain name in this matter shows Respondent’s bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) and Respondent’s bad faith registration and use of the domain name to attract users for commercial gain under Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts); see additionally Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website).
Moreover, Respondent registered <oraclecoin.info> knowing that Complainant had trademark rights in the ORACLE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name and its associated website as mentioned elsewhere herein. 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 <oraclecoin.info> 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 <oraclecoin.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 2, 2021
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