Oracle International Corporation v. Terence / tellraceheart
Claim Number: FA1701001713066
Complainant is Oracle International Corporation (“Complainant”), represented by Darin L. Brown of Holland & Hart LLP, Colorado, USA. Respondent is Terence / tellraceheart (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oracie.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 January 18, 2017; the Forum received payment on January 18, 2017.
On January 19, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <oracie.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2017 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@oracie.com. Also on January 20, 2017, 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 February 21, 2017, 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 uses the ORACLE mark in connection with its business as one of the world’s largest developers and marketers of computer systems.
Complainant registered the ORACLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,200,239, registered July 6, 1982).
Respondent’s <oracie.com> mark is confusingly similar as it only differs by the use of the letter “i” instead of the letter “L”. The domain name also incorporates the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in <oracie.com>. WHOIS information identifies “Terence” as registrant of the disputed domain name. There is no evidence that Respondent has ever been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the ORACLE mark. Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name. Respondent currently only uses the disputed domain name as a holding page for a different domain name. Respondent’s use of the domain name was a phishing scam to impersonate Complainant by using an email address at the <oracie.com> domain name in an attempt to steal money and sensitive financial information. Finally, Respondent engages in typosquatting by slightly misspelling Complainant’s mark.
Respondent registered and is using <oracie.com> in bad faith. Respondent disrupted the business of Complainant by attempting to intercept Complainant’s customers’ payments and conduct an illegal phishing scheme designed to extract personal identifiable information and financial information from its victims. Respondent engaged in typosquatting, which is strong evidence of bad faith registration of a domain name. Finally, Respondent also had actual knowledge of Complainant’s mark, evinced by the use of the disputed domain name in a phishing scheme, the international fame of the ORACLE mark, registering the domain name the same day it sent a phishing email, and the similarities between ORACLE and ORACIE.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ORACLE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in ORACLE.
Respondent used the at-issue domain name in an email address to impersonate Complainant so that it might defraud third parties into directing funds meant for Complainant, to Respondent.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 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); see also 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its ORACLE mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i).See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <oracie.com> domain name contains Complainant’s ORACLE trademark with its “l” replaced by the similarly shaped letter “i” and the top-level domain name “.com” appended thereto to form the at-issue domain name. However, the differences between Respondent’s domain name and Complainant’s ORACLE mark are insufficient to materially distinguish one from the other under the Policy. Therefore, the Panel finds that Respondent’s <oracie.com> domain name is confusingly similar to Complainant’s ORACLE trademark. 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, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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, absent evidence of Policy ¶4(c) circumstances 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.
WHOIS information for the at-issue domain name lists “Terence” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <oracie.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <oracie.com> domain name was used in an email address as part of a scheme to impersonate Complainant and thereby trick a third party into sending payments meant for C, to Respondent. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, 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 as mentioned above, Respondent used the at-issue domain name in an email address to attempt to commandeer Oracle customer payments by diverting funds destine for Complainant, to Respondent. Respondent’s scam demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark, or as in the instant case, will otherwise confuse a misspelled trademark laden domain name with the target trademark. Here, Respondent replaces the “l” in ORACLE with an “i” and uses the misspelling in an email address towards that end. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <oracie.com> domain name knowing that Complainant had trademark rights in the ORACLE trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from <oracie.com>’s use in an email address in s manner designed to impersonate an address used by Complainant. The foregoing makes 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 <oracie.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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oracie.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 22, 2017
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