Oracle International Corporation v. Danny B / Admedia
Claim Number: FA1605001674542
Complainant is Oracle International Corporation (“Complainant”), represented by Nadya Davis of Holland & Hart LLP, Colorado, USA. Respondent is Danny B / Admedia (“Respondent”), represented by Julian Smith, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oracl.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 12, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <oracl.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2016 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@oracl.com. Also on May 17, 2016, 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 June 10, 2016.
An Additional Written Statement was submitted by the Complainant pursuant to Supplemental Rule 7(a) and received on June 15, 2016.
On June 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert 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 be transferred from Respondent to Complainant.
A. Complainant
Complainant has been engaged in marketing and developing computer hardware systems, enterprise software products, database management systems, and a broad range of other goods and services, in connection with its ORACLE mark since 1979. Complainant owns four US Trademark Registrations relating to its ORACLE trademark: Reg. No. 1,200,239, registered July 6, 1982; Reg. No. 1,555,182, registered September 5, 1989; Reg. No. 2,107,556, registered October 21, 1997; Reg. No. 3,893,045, registered December 21, 2010. Complainant registered the <oracle.com> domain name in 1988 and has since used this domain name for “www.oracle.com,” its main company website.
Oracle’s federal trademark registration constitutes prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.
Respondent’s <oracl.com> domain name is confusingly similar to the ORACLE mark because it contains the mark, less the letter “e,” combined with the generic top-level domain (“gTLD”) “.com,” and because it is phonetically equivalent to the mark. It is also likely that Respondent is seizing on Internet users’ typographical errors to divert them to the <oracl.com> domain, i.e. “typosquatting.”
Respondent is not commonly known by the <oracl.com> domain name. The available WHOIS information identifies “Danny B / Admedia” as Registrant, and there is no evidence to suggest Respondent had ever been known by the <oracl.com> domain name prior to its registration. Respondent has also never been authorized to use the ORACLE mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website has been used in attempts to download malware and currently constitutes an inactive holding.
Complainant has extensively and prominently used and promoted its ORACLE mark through various media, including print and television, for over three decades. As a result, Complainant’s ORACLE mark is famous and well-known. Therefore, Respondent’s registration of the <oracl.com> domain name on March 8, 2016 (well after Complainant had begun to use the ORACLE mark) was in bad faith because it did so with actual or constructive knowledge of Complainant’s rights in the ORACLE mark. Respondent uses the <oracl.com> domain name in bad faith because the resolving website has been used in attempts to download malware and currently constitutes an inactive holding. Furthermore, Respondent uses the domain in a manner that constitutes typosquatting (and has registered over four hundred other domains which appear to typosquat on other valid domain names and trademarks) and uses of a privacy shield, further evidencing bad faith use of the <oracl.com> domain name.
B. Respondent
Respondent has owned the <oracl.com> domain since 1998. However, Respondent was not in control of the <oracl.com> domain name during the time in which it was being used for malware. Respondent uses the domain as a shopping portal which sells products to end consumers, which is a legitimate non-competing business.
Respondent also denies ownership of the <luxembourairline.com> domain name, one of the many domain names which Complainant pointed to as containing computer viruses and/or constituting further typosquatting.
C. Complainant’s Additional Submission
Respondent’s claim to have owned the <oracl.com> domain name since 1998 is unverifiable given that the domain name was registered to a privacy service at that time. Nonetheless, this is still twenty years after Complainant first began using its ORACLE mark and sixteen after Complainant first registered the mark. Respondent registered the <oracl.com> domain name without permission or consent from the Complainant.
Respondent is responsible for the content and use of the <oracl.com> domain name and cannot escape a bad faith finding by blaming its domain administrator.
Respondent’s claim to be a good faith user is contradicted by longstanding illegitimate use of the <oracl.com> domain name. As early as November 29, 1999, the <oracl.com> domain name was used as a pass-through site to redirect to various unrelated, third-party websites. At other times over the past fifteen years, the <oracl.com> domain name has also been used to link to competitive products and pornographic websites. As of June 13, 2016, the <oracl.com> domain name continues to function as a pass-through site. Respondent’s evidence of legitimate use of the <oracl.com> domain is undated and unauthenticated and cannot counteract the evidence that for the past fifteen years, Respondent has never been, and is not now, known as or doing business under the ORACL mark.
On June 6, 2016, counsel for Respondent offered the sell the <oracl.com> domain name to Complainant for $50,000. Given that Respondent has never used the <oracl.com> domain name for any legitimate purpose, $50,000 is unlikely to be commensurate with Respondent’s out-of-pocket costs related to the domain name, which is further evidence of Respondent’s bad faith.
The Complainant, Oracle International Corporation, is a developer and marketer of computer hardware systems, enterprise software products, database management systems, and a broad range of other goods and services.
It has been using the ORACLE mark described above since at least as early as 1979.
The Respondent, Danny Bibi, is the CEO of Ad.com Interactive Media, Inc. (“Admedia”) and the current owner of the <oracl.com> domain name.
The <oracl.com> domain name was registered on February 2, 1998. At some point on or after that date, Respondent became the owner of said domain.
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 prove each of the following three elements to obtain an order that a domain name 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’s federal trademark registrations and widespread use, advertising, and promotion of the ORACLE mark since 1979 sufficiently establish its rights in the mark pursuant to paragraph 4(a)(i) of the UDRP. 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).).
Under paragraph 4(a)(i), Respondent’s <oracl.com> domain name is confusingly similar to the ORACLE mark because it contains the mark, less the letter “e,” combined with the gTLD “.com” and because it is phonetically equivalent to the mark. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (FORUM Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1596560 (FORUM Feb. 2, 2015) (“The terms remain phonetically identical and the alteration is trivial and does nothing to dispel the obvious the correspondence between the trademark and the domain name.”).
Complainant has therefore shown that the <oracl.com> domain name is confusingly similar to Complainant’s mark.
Complainant’s first use and first registration of its ORACLE mark predates any use by Respondent may have made of the <oracl.com> domain name by at least sixteen years. Additionally, Complainant registered and used the <oracle.com> domain name to operate its main company website at “www.oracle.com” for ten years before Respondent registered the <oracl.com> domain name.
Respondent must have been aware of Complainant’s ORACLE mark and associated domain name and website prior to his registration of the <oracl.com> domain. Complainant’s mark and line of products were well known and widely advertised at the time the <oracl.com> domain was registered and their website was operational and easily accessible to the Respondent.
Respondent is not commonly known by the <oracl.com> domain name, which is plainly different from Respondent’s name. Furthermore, Respondent does not argue that he is commonly known by the <oracl.com> domain name. Therefore, the Respondent has never been and is clearly not now known by the <oracl.com> domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (FORUM Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Complainant has also never authorized Respondent to use its ORACLE mark.
Complainant contends that Respondent has failed to use the <oracl.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website has been used in attempts to download malware and, as of June 13, 2016, continued to function as a pass-through site. 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)”).
While the Respondent claims to use <oracl.com> domain name for a shopping portal which sells products to end consumers, the undated and unauthenticated evidence he provides for this claim is insufficient, especially in light of the conflicting evidence provided by Complainant. Complainant has shown that the <oracl.com> domain name has functioned as a pass-through site since November 29, 1999, that as of June 13, 2016 the domain name continued to be used as a pass-through site, and that at times the site was used to promote competing products or to direct to pornographic material. Given this evidence, Respondent does not appear to have any legitimate use of the <oracl.com> domain name. See Paperless Inc. v. Ics Inc c/o ICS Inc, FA1605001673997 (NAF June 6, 2016) (finding no legitimate use where Respondent used domain name to “redirect unsuspecting Internet users to a website featuring pay-per-click links to third-party websites which compete with Complainant’s business”); Ashley Furniture Industries, Inc. v. domain admin, FA1506001626253 (NAF July 29, 2015) (finding no legitimate use where “Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant”).
For the above reasons, Complainant has shown that Respondent lacks rights or legitimate interests in the disputed domain name.
As explained above, Respondent must have been aware of Complainant and its goods and services at the time that it registered a domain name which so closely resembled the ORACLE mark. Accordingly, Respondent plainly registered the <oracl.com> domain name in bad faith and with full knowledge of Complainant’s rights in the ORACLE mark.
Complainant contends that Respondent uses the <oracl.com> domain name in bad faith because the resolving website has been used in attempts to download malware. See Google, Inc. v. Petrovich, FA 1339345 (FORUM September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
While Respondent has claimed that he did not control the <oracl.com> domain name at the time that it was being used for malware, he remains responsible for the content associated with it. See Chevron Intellectual Property LLC v. blazer, harry, FA1409001578526 (NAF Nov. 4, 2014) (rejecting attempt to “shift the responsibility for the content of the websites to first the Registrar, then to the
Complainant” as “wholly without merit,” and holding “Respondent is responsible for the content of websites that his Domain Names resolve to”). Therefore, given the evidence that the <oracl.com> domain name has, for several years, been alternately used for malware, to redirect to pornographic material, and to advertise competing products, it is clear that it has been used in bad faith. See Google, Inc. v. Petrovich, FA 1339345 (FORUM September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. lin yanxiao, FA1605001674758 (NAF June 10, 2016) (where domain used to redirect to third-party websites, “infer[ring] that the domain name was registered for this purpose” and finding bad faith);Wells Fargo & Co. v. Party Night Inc., FA144647 (NAF Mar. 18, 2003) (tarnishing use of the disputed domain name to redirect internet users to adult-oriented websites is evidence of bad faith).
Furthermore, Respondent appears to be typosquatting the <oracl.com> domain name (and has not denied typosquatting multiple other valid trademarks and domains), further contributing to a finding of bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (FORUM Nov.18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, given the above finding that Respondent has demonstrated no bona fide offering of goods or services or a legitimate noncommercial or fair use of the <oracl.com> domain name, the attempt on June 6, 2016 to sell the domain name for $50,000 is additional evidence of bad faith. NIKE, Inc. and Nike Innovate C.V. v. Andrea Mariotti, FA1605001673357 (NAF June 2, 2016)(“Panels have routinely held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(i) where it makes an attempt to sell a disputed domain name for an amount in excess of its out-of-pocket costs to acquire the domain.”)
For the above reasons, Complainant has shown that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oracl.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: June 27, 2016
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