The Complainant is Oracle International Corporation, of the United States of America, represented by Nabarro, LLP, United Kingdom of Great Britain and Northern Ireland (“The United Kingdom”).
The Respondent is Contractors Network Limited, of the United Kingdom, represented by Wedlake Bell, of the United Kingdom.
The disputed domain name <oraclecontractors.com> (the “Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2008. On October 3, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On October 3, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. Pursuant to Rules, paragraph 5(d), the Center extended the time for the Respondent to file a Response, to November 4, 2008. The Response was filed with the Center on November 4, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on November 20, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a wholly-owned subsidiary of Oracle Corporation (“Oracle”), one of the world's largest software companies. According to the Complaint, Oracle develops, manufactures, markets, distributes and services database and middleware software and applications software. The Complainant is the owner of certain intellectual property rights used by the Oracle Group in its business, including certain registered trademarks which are used by Oracle under license from the Complainant.
Oracle's customers range from large organizations to small businesses, and Oracle sells its software and services directly to end consumers as well as through intermediaries. Many of Oracle's products require specialized expertise for their installation, configuration, operation and maintenance, and much of that expertise is provided by third party contractors. Oracle supports a network of such third party service providers known as “partner affiliates”. Qualified third parties can be accredited as official Oracle partners.
Oracle operates its principal website at “www.oracle.com”, and that website is used to offer online sales of Oracle's products, and to provide product information and updates. Oracle also organizes an annual conference called the Oracle Open World exhibition, where thousands of Oracle professionals present and learn the latest in Oracle-related news, products, techniques and trends. The attendees at the Oracle Open World exhibition are said to include “contractors being individuals who offer services related to Oracle products on a contract basis”.
The Complainant is the proprietor of the mark ORACLE, registered in the United Kingdom in international classes 16, 35, 36, 41, and 42. The application for registration in classes 16, 35, 36, and 41 was filed on March 2, 1994, and that application proceeded to registration on December 15, 1995. The class 35 registration covers “technical assistance to businesses in the field of computers, computer software, database development and design, information processing and management … management consulting and business management assistance services relating to computers, computer software and computer systems”.
The application for registration in international class 42 was filed on October 1, 1986, and proceeded to registration on August 3, 1990. The specification covers “computer design services; feasibility study services relating to computers and to computer software; computer software consultancy services; information services relating to computers”.
The Complainant also holds a Community Trademark Registration for the word mark ORACLE. The Community Trademark Application was filed in September 2002, and registered in June 2004. The Complainant has also produced a list of applications for, and/or registrations of, the mark ORACLE in numerous other jurisdictions, but has not provided proof of the registrations in these other jurisdictions.
The Complainant says that Oracle has been active in the United Kingdom since at least as early as 1986, and that a significant proportion of Oracle's overall revenues is derived from the United Kingdom. (The Respondent disputes that contention, saying that the Complainant has not provided any evidence that Oracle conducts business in Europe, or indeed that the Complainant is a subsidiary of, or otherwise connected with Oracle. The Respondent also says that there is no evidence of the Complainant having used the mark ORACLE on or in relation to the goods and services for which that mark has been registered.)
The Domain Name was registered on December 12, 2000. Evidently the Respondent was not the first registrant, because the Complainant has produced an extract from the United Kingdom Companies Office register showing that the Respondent was only incorporated in September 2001. The Domain Name resolves to a website at “www.oraclecontractors.com” (the “Respondent's website”), and the Complainant has produced extracts from the Respondent's website printed on August 28, 2008. The Panel has reviewed these extracts, and has himself visited the Respondent's website (on November 27, 2008).
The Respondent's website is prominently headed “Global Oracle Contractors Network”. On the left hand side of each web page, there appears in a rectangle the expression “ORACLE contractors.com”, with “ORACLE” in much larger font than the expression “contractors.com”, which is printed in lower case lettering. The Respondent's website appears to be focused solely on Oracle products. It does not appear to contain any third party advertising.
The “About” page of the Respondent's website refers to the Respondent's operation as a “Global Oracle Contractors Network”, with a 100% focus on Oracle's E-Business Suite”. The business was described in the following terms:
“- We are operated by Oracle Applications Contractors with 11 offices worldwide.
- We offer Contractor Resourcing with access to over 10,000 pre-qualified Oracle Applications Contractors through our local offices.
- We have an innovative and cost-effective model for Implementations & Upgrades – our “Hybrid Team” solution.
- We are able to offer access to Global Resolution Groups for ad hoc work from as little as 15 minute increments.
- We provide the only global Oracle specific job search engine with a view of 10,000 + Oracle specific roles.
- We interact with over 15,000 client personnel involved with the Oracle E-Business Suite.
- We promote a community spirit through an Apps Blog, with 50+ Regional Authors that produce 20 articles a month.
- We are a Publishing House for White Papers authored by Oracle Contractors and distribute these free, to clients and Contractors alike.
- We offer access for training and demonstration of the latest release there and online Vision environment at no cost.
- We offer Oracle contractors special membership to a network of Oracle User Groups, under our umbrella, at a discounted rate.
- We exhibit & present at all Regional Oracle Conferences, worldwide as well as local Special Interest …”
The “About” web page said that the Respondent's network had been established in 1999, and that many of the Respondent's directors had been involved in some of the first Oracle ERP implementations in the early-to-mid 1990's. The web page described the Respondent as operating in five specific service areas, which included “E-Business Suite Applications, Database & Application Development, and Enterprise Performance Management & Business Intelligence”.
On the “Philosophy” page on the Respondent's website, the Respondent noted that “the most experienced and knowledgeable Oracle applications consultants exist in the Contractor space”. The notes on the “Philosophy” web page went on to express the view that little had been done thus far to pro-actively showcase the skills of the contractor group to the wider Oracle Applications community, and that the Respondent's website would, among other things, promote “our fellow Contractors to a far wider audience than previously possible”.
A “Start office” web page on the Respondent's website invited “like minded Oracle Contractors” with entrepreneurial spirit, the ability to network and promote the global business and services, to contact their nearest regional office.
In addition to providing pages intended for the community of “Oracle Contractors”, the Respondent's website also offered services to end-users of Oracle software products, including access to the Respondent's “formal network of Oracle E-Business Suite Contractors that offers experience and skills … across the Oracle Product Domain”. The service was said to be aimed at clients that required “ad hoc work remotely in 15 minute increments, and/or ad hoc days on site – 24 x 7 x 365 as well as the skills and experience this Network can offer ….”
There were technical papers, described as “White Papers” posted on the Respondent's website, and a section for blog entries. There was also a “Resourcing” section, where a client could log in to inform the network of its particular need for an Oracle contractor, or obtain more information relating to the services offered.
The Complainant noted in its Complaint that the Respondent had posted a small disclaimer in light grey font at the bottom of the Respondent's website, immediately following a copyright claim. The wording of the disclaimer was:
“OracleContractors.com is not affiliated to Oracle Corporation. To visit Oracle's website go to www.oracle.com“.
That disclaimer was still on the Respondent's website when the Panel checked the Respondent's website on November 27, 2008. In addition, however, the Respondent had added immediately below the prominent heading “Global Oracle Contractors Network” at the top of each page of the Respondent's website, the following words:
“This website is not affiliated to Oracle Corporation”.
Metatags/Keywords associated with the Respondent's Website
The Complainant asserts that a Whois extract for the Domain Name indicates that the Respondent has been using as metatags and keywords the expressions “Oracle Contractors”, “SAP Contractors”, and “ICE Group”. The Complainant explains that SAP is one of its competitors in the enterprise software market, and that ICE Group appears to be a related consulting business which also specializes in Oracle products. The Respondent owns the domain name <sapcontractors.com> (the “SAP domain name”), and the SAP domain name points to a website that is in a format which is virtually identical to the Respondent's website, with the word “Oracle” replaced with “SAP”. The SAP domain name was registered by the Respondent on August 17, 2005.
The Complainant has also produced evidence showing that the Respondent owns the domain name <ice-group.com>, and that the Respondent operates a website at this domain name. The Complainant has produced extracts from the website at “www.ice-group.com” (the “ICE Group website”), which appear to show that “ICE Group” is a collection of businesses consulting in relation to Oracle's products. The contact details for “America”, “EMEA”, and “Asia Pacific” offices provided at the ICE Group website, are the same as those provided respectively for those regions on the Respondent's Website.
(The Respondent says that it never authorized the use of these metatags on the Respondent's website, and only became aware of them when it received the Complaint in this proceeding. The Respondent says that it has checked earlier versions of its website (on the website at “www.archive.org”) and noted that between October 2001 and August 2005 the metatags referred to by the Complainant were not present. They were present between September 2005 and October 2006, but have not been present on the Respondent's website after October 2006. The Respondent says that it did not know of their presence, and “can only assume that the independent website design firm incorrectly included these meta-keywords in a misguided attempt to be helpful”. The Respondent also says that the Complainant's reference to Ice Group Limited is incorrect. It says that ICE Group is an unconnected business operated by a company called I.C.E. Solutions Limited, and that, again, the metatag was erroneously entered on the Respondent's website by the independent website designer. The Respondent says that ICE Solutions Limited is run independently of the Respondent, and that there are no links or references to it on the Respondent's website.)
The Complainant says in its Complaint that the Respondent has participated in Oracle-related trade shows and events using “oraclecontractors.com” branding, including attendance at conferences operated by the United Kingdom Oracle User Group, a third party service that disseminates information about Oracle products, and regularly holds conferences and seminars.
The Complainant says that it first became aware of the Respondent's activities in December 2007, after it saw one of the Respondent's displays at a United Kingdom Oracle User Group event.
The Complainant's representatives sent a cease and desist letter to the Respondent on December 11, 2007. In this letter, the Respondent's representative referred to the Complainant's trademark registrations for the mark ORACLE, and sought the usual undertakings relating to the cessation of use of the ORACLE mark and the cancellation (or transfer to the Complainant at no cost) of the registration of the Domain Name. The letter acknowledged the widespread use of Oracle products, and the fact that that widespread use occasioned a number of opportunities for third party service providers to offer specialist services relating to Oracle products. The Complainant's representative noted in the letter: “Your business appears to be one such”. The letter advised that, while Oracle accepted that a business may provide consulting or advice regarding its products, the business could not (when so doing) use “Oracle” in its name. Such a use was said to suggest that the business had a particular connection, association, or affiliation with Oracle.
There followed some communications between the Complainant's representative and the Respondent (including some without prejudice communications which have not been provided to the Panel), but the parties were unable to reach any resolution of the Complainant's claims. This administrative proceeding followed when the Complainant did not receive any reply (which it regarded as acceptable) to a final warning letter sent by its representatives on August 5, 2008.
For its part, the Respondent characterizes the services which it provides through the Respondent's website and through other communication channels, as the provision of “recruitment services”. It asserts that it is not itself a contractor, and does not supply Oracle consultancy services.
The Respondent says that it commenced trading in September 2001, and that it has always used the Domain Name in connection with its business. It says that it is not competing with Oracle or its partner affiliates. It explains the purpose of its website as being to provide a platform for individual Oracle contractors to showcase their individual skills in Oracle products to their peers and potential clients. The Respondent says that, in 2005, it decided that it could provide the same recruitment services for the SAP market. It purchased the SAP website, and uses the SAP website in connection with recruitment services for SAP contractors. The Respondent says that both websites deal in recruitment, but they serve different markets and are not linked to each other.
The Respondent says that there are many independent contractors who have expertise with Oracle's products, while others are expert with SAP products. The contractors refer to themselves and are known as “Oracle contractors”, or “SAP contractors”, as those terms describe their technical expertise and their independent status. The Respondent produced Google searches showing only four hits on a search run on the expression “Oracle independent contractors”, compared with 5,920 hits on a search run on “Oracle contractor”, and 15,400 hits on “Oracle contractors”. The Respondent also produced extracts from various online job recruitment sites, which contained click-on links such as: “Oracle Contractor Needed!”, or “Oracle Contractor”. An article from a website at “www.technojobs.co.uk” headed “Oracle Contractor Jobs”, referred to “Oracle contractors” and “Oracle contractor jobs”. Generally speaking, it appears from the material the Respondent has produced that the expression “Oracle contractor” has been used to describe a range of professional workers, including Oracle systems analysts, Oracle systems architects, Oracle systems developers, and Oracle program directors.
There appear to be numerous Oracle blog sites, and the Respondent produced copies of some (e.g. the website at “www.oracleappsblog.com”, headed “A day in the life of an Oracle Applications Consultant”). Another was the website at “www.oracle-base.com”. The Respondent says that almost all are unofficial blogs.
The Respondent says that Oracle provides its own bloggers' forum at “www.blogs.oracle.com”, and that on that site (which is connected to Oracle's principal website at “www.oracle.com”) there is a link to the Respondent's own blog on the Complainant's website. The Respondent says that that link was added by a senior director in Oracle's Applications Technology Integration Group, Mr. Steven Chan, and that Mr. Chan contacted the Respondent in January 2007 congratulating it on the Respondent's website and referring to the link from the Oracle bloggers' forum site.
The Respondent produced a copy of the email from Mr. Chan. It was sent from an email address at the Oracle principal website, and dated January 30, 2007. In the email, Mr. Chan noted that he had only recently discovered the Respondent's website. He said that he was impressed with the range and quality of the Respondent's coverage so far, and passed on his congratulations to the Respondent's editorial team.
The Respondent says that it had been in contact with Oracle regarding the supply of Oracle contractors, from as early as 2004. The Respondent has produced certain emails written between January 31, 2006 and May 23, 2006, which appear to show that the Respondent was indeed in direct communication with Oracle during that period. One email, from January 2006, included the sentence: “My name is Jason Howlett and I am the MD from Contractors Network – www.oraclecontractors.com”. Subsequently, there was email correspondence between Andrea Toscani of the Respondent and Oracle's service manager in Italy. Much of this correspondence is in Italian, and since the Respondent has not provided a translation as might be expected or indeed prudent, the most the Panel can conclude from it is that, at least in October of 2008 when these emails were written, Oracle appears to have been in regular email contact with the Respondent, using an email address at the Domain Name, on what might be supposed to be ordinary operational matters (and with no apparent discussion by Oracle regarding the Domain Name).
The Respondent has produced a list of company names registered in the United Kingdom, which commence with the word “Oracle”. The list runs to approximately 5 to 6 single-space typed pages. The Respondent asserts that numerous companies on the list have no connection with the Complainant. At annex 18 to the Response, the Respondent also produced extracts from the database maintained by the United Kingdom Intellectual Property Office, showing numerous ORACLE trade or service marks, covering a wide variety of goods and services, none of which appear to be related to the Complainant or Oracle. In similar vein, the Respondent has produced a list of a substantial number of domain names containing the word “oracle”. These include <oracleexpertise.com>, <oracledatabasetips.com>, and <oracledbasupport.co.uk>. The Respondent asserts that none of those domain names are owned or operated by the Complainant Oracle. The Respondent asserts that an Internet search on the word “oracle” produces 101 million hits.
The Respondent produced (annex 22 to the Response) a declaration signed by a forensic linguist, Mr. John Olsson. Mr. Olsson was retained by the Respondent to assess the level of linguistic similarity between the Domain Name and Oracle's principal domain name, <oracle.com>. Mr. Olsson says that he has been involved “in the analysis of language for legal purposes”, for 15 years. Mr. Olsson's declaration/report runs to 34 pages (including annexures and appendices). For present purposes, it is sufficient to note that, in Mr. Olsson's opinion, the use of the element “oracle” in the Domain Name has little relevance to Oracle the corporation, because it simply describes what the Respondent does: namely, supply contractors with Oracle expertise to end-user companies and consultancies.
Finally under this heading, the Respondent produced copies of a Yahoo! UK-Ireland search on the expression “oracle contractor”. The name “Oracle Contractors”, with a click-on link to the Respondent's website, was the first result. The Yahoo! results printout contained the sentence: “Contractors Network Ltd., OracleContractors.com is not affiliated to Oracle Corporation ...”. Similarly, a Google search on “oracle contractor”, showing a reference to the Respondent as the first result, contained in the printout a disclaimer stating that “Contractors Network Limited, OracleContractors.com” is not affiliated to Oracle.
The Complainant contends as follows:
1. The Domain Name is confusingly similar to the ORACLE mark in which the Complainant has rights. The leading word “oracle” is the core identifying element of the Domain Name, and the word “contractors” is no more than a well-known descriptor in the computer software industry to describe an individual offering services on a “contract” basis to install or repair software. When a domain name incorporates a complainant's trademark in its entirety, the domain name is confusingly similar to that mark regardless of the addition of any other words (citing Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292). Where (as in this case) what is added is a descriptive term which describes services that the complainant also provides, the likelihood of confusion is increased (citing Dell Inc v. Intercardnetwork/Jonathan Jairo Aguirre Huertas, WIPO Case No. D2004-0788). And confusing similarity is regularly found in relation to disputed domain names where a descriptive term has simply been appended to a famous mark. The “.com” suffix is to be ignored in the comparison between a complainant's mark and the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) The Respondent is not a licensee of the Complainant, or in any other way connected with the Complainant. The Complainant has not permitted the Respondent to use any domain name incorporating its ORACLE trademark.
(ii) The Respondent was obviously aware of the Complainant's ORACLE mark at the time it registered the Domain Name, as it offers services in relation to Oracle's products.
(iii) The Respondent's only purpose in registering the Domain Name, was to attract Internet users to the Respondent's website by trading on the fame of the Complainant's ORACLE mark. In those circumstances, the Respondent cannot claim that it has been using the Domain Name in connection with a bona fide offering of goods or services.
(iv) In seeking to capitalize on the Complainant's ORACLE mark and take unfair advantage of its rights, the Respondent has acted in bad faith, and cannot contend that its actions have been in connection with a bona fide offering of services (citing Barnes & Noble College Bookstores Inc v. Leasure Interactive, WIPO Case No. D2001-1216).
(v) The Respondent's services offered through the Respondent's website compete with those of Oracle and the members of Oracle's authorized partner network. Offering services in a competing field of endeavor cannot constitute bona fide commercial or fair use sufficient to legitimize any interest in the Domain Name.
(vi) The Respondent's use of the ORACLE mark in the Domain Name will confuse potential customers into thinking that the Complainant is the source of, or is associated with or has sponsored, the Respondent's website. While the Respondent may say that it is offering services in relation to Oracle's goods, it is not entitled to appropriate the Complainant's trademark in a domain name, business name or any other identifier (citing Volvo Trademark Holding AB v. Peter Lambe, supra). Even members of Oracle's official partner network are specifically prohibited from making such uses of the ORACLE mark.
(vii) The disclaimer posted on the Respondent's website, in very light grey font at the bottom of the page, cannot cure the initial and illegitimate diversion of Internet traffic.
(viii) The Respondent was not commonly known by the Domain Name prior to the date of registration of the Domain Name.
(ix) This is not a case where a legitimate reseller is dealing in goods previously trademarked and sold with a complainant's consent. Rather, the Respondent is using the Complainant's trademark to offer directly competing services and to pull Internet users to the Respondent's website and away from Oracle's services and partner network.
3. The Domain Name was registered and is being used in bad faith, having regard to the following factors:
(i) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of products or services on the Respondent's website. The Respondent has selected a domain name which is well suited to trade on the fame of the Complainant's ORACLE mark and cause confusion among Internet users, and the Respondent was clearly aware of the ORACLE mark when it registered the Domain Name.
(ii) The Respondent's ongoing use of the Domain Name is also likely to disrupt the Complainant's businesses by damaging the reputation and distinctiveness of its ORACLE mark. The disclaimer on the Respondent's website cannot cure the Respondent's bad faith registration.
(iii) The Domain Name was registered primarily for the purpose of disrupting the business of a competitor. Oracle has offered identical services to those promoted by the Respondent at the Respondent's website, for many years. Oracle also supports a network of partner businesses and organizations who offer services in relation to its products. The Respondent has chosen the Domain Name, and set up the Respondent's website, in a fashion calculated to mimic Oracle's own support of its partners as well as draw business from both Oracle and its partners. The Domain Name was therefore registered in bad faith primarily for the purpose of disrupting the business or businesses of a competitor or competitors.
(iv) The Domain Name was registered to prevent the Complainant from reflecting the ORACLE mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct. The Complainant refers in that regard to the Respondent's registration of the SAP domain name. The Respondent appears to be engaged in a pattern of registering “.com” domain names incorporating world-famous software brands and the descriptive word “contractors”, with a view to taking unfair advantage of the reputation in those brands and to create commercial benefit for itself.
The Panel will not set out all of the Respondent's contentions, which were lengthy and repetitive. It is enough to set out the essence of the Respondent's contentions, which were as follows:
1. The term “Oracle contractors” is a customary usage in the bona fide and established practices of the trade.
2. The Respondent has always used the Domain Name in connection with its business, which is “labor recruitment”. The Domain Name is simply descriptive of the services that the Respondent provides, namely the provision to end-user businesses of individual contractors who are skilled in working with Oracle products.
3. The metatags referred to by the Complainant were not associated with the Respondent's website by the Respondent, and they have not been present since November 2006.
4. Oracle has been aware of the Respondent's existence and of the Respondent's website at the Domain Name, since 2004. Oracle never complained about the Respondent's website, and indeed congratulated the Respondent's editorial team on the quality of the Respondent's website.
5. None of the Complainant's rights under the registered United Kingdom and Community Trademarks cover recruitment services. Oracle does not supply recruitment services, and accordingly does not have any rights in them.
6. Through use, “oracle” has come to be a common term used to describe a wider operating environment implemented by end-users, so that “oracle” is no longer an indicator of origin of the products themselves but is a reference to an amalgam of products (some Oracle, some not) implemented by the end-user companies. “Oracle” has therefore become generic, and no longer acts as a trademark.
7. The Domain Name is not confusingly similar to the Complainant's ORACLE mark. The visual, aural and conceptual similarities between the Domain Name and the Complainant's trademark are not sufficient to meet the “confusingly similar” test. In fact, the word “contractors” is the dominant feature of the Domain Name, as it is the longer word and contains more syllables. The word “oracle” has little phonetic prominence, whereas “contractors” is an instantly recognizable word with strong phonetic prominence. Furthermore, there are numerous companies in the United Kingdom which have the word “Oracle” as part of their company names, or as part of domain names used by them. Members of the public would not therefore be confused into believing that the Respondent's use of the Domain Name was a reference to Oracle.
8. The word “oracle” in the Domain Name, used with the word “contractors”, is a descriptive use of “oracle”, not a trademark use. The addition of the word “contractors” makes a crucial difference to the way the Domain Name is read, and it distinguishes it from the Complainant's mark and shows that the Domain Name is not affiliated with the trademark owner. The addition of descriptive words regularly serves to differentiate a disputed domain name from a complainant's mark (see Privilege Insurance Company Limited v. Warren Snook, WIPO Case No. D2002-0870).
9. The Respondent is making normal and fair use of the term “Oracle Contractors”.
10. The Respondent made legitimate use of the Domain Name for 7 years before it was notified of the Complaint. In that time, Oracle has been using the Respondent's services, and has had a link to the Respondent's website.
11. The Respondent uses the Domain Name only in respect of recruitment services for Oracle contractors. The reference to an Oracle contractor, is a reference to an individual who supplies services only in respect of Oracle products. It would be difficult, if not impossible, to describe the Respondent's services without making reference to Oracle (citing DaimlerChrysler AG v. Donald Drummonds, WIPO Case No. D2001-0160).
12. The Respondent's website has always accurately disclosed the Respondent's relationship with Oracle. In addition, the Respondent has recently given greater prominence to the disclaimer on the Respondent's website, by including it at both top and bottom of each page (with the hyperlink to Oracle's website remaining). The Respondent intends to retain the disclaimers in the new positions. The use of the disclaimers is evidence of the Respondent's good faith.
13. Internet users are not misled into assuming that the Respondent's website is operated by Oracle or by a partner affiliate of Oracle.
14. The Respondent has not tried to corner the market in domain names containing the mark ORACLE. The Respondent has only registered one domain name containing the word “Oracle”.
15. The Respondent purchased the Domain Name for its own use, and it has never offered the Domain Name for sale to Oracle or its competitors. The Respondent was aware of Oracle when it purchased the Domain Name, but as it is operating in recruitment services, and as the use of the word “oracle” in the Domain Name describes those services, there is no conflict with the use of “oracle” in the Domain Name.
16. The Respondent has not engaged in any pattern of abusive registration. The registration of the SAP domain name in addition to the Domain Name is not sufficient to show a pattern (citing Telstra Corporation v. Ozurls, WIPO Case No. D2001-0046). Furthermore, the SAP domain name is also descriptive of the services offered through the website at the SAP domain name.
17. The Respondent's ongoing use of the Domain Name will not disrupt the Complainant's business. “Oracle” is a common noun used worldwide in thousands of names of companies, clubs, products, etc; and is in every day usage. There are over 2,300 domain names which start with the word “oracle”, and a further 4,000 domain names have “oracle” in their URLs. The Complainant owns an insignificant percentage of those URLs.
18. The Respondent has operated for 7 years using the Domain Name, and there has been no evidence of confusion.
The Respondent produced numerous exhibits, including a statement running to20 pages, together with an additional 14 pages of appendices, from a forensic linguist. The forensic linguist described his instruction as being “to assess the level of linguistic similarity between the web domain name www.oraclecontractors.com and the web domain name www.oracle.com …….and to report on this question for a forthcoming World Intellectual Property Organization (WIPO) [administrative proceeding].”
The Panel can imagine circumstances where evidence from a forensic linguist might be helpful – for example, if some issue were to arise over the meaning of a particular English expression (or made-up word) in some particular field or culture e.g. an expression used in rap music, or in the “street language” of gangs. But such cases are likely to be rare, and this case is certainly not one of them. Experienced panels, assisted by submissions from competent counsel, are well able to decide the meanings of ordinary English expressions and the extent to which they may or may not be confusingly similar to a complainant's trademark. Furthermore, where the expression which is at issue is a technical one in some field of science or industry, the most helpful evidence is likely to be from an expert in that particular field. As far as the Panel can see in this case, Mr. Olsson has no expertise in the computer industry. Much of Mr. Olsson's statement appears to have the character of submissions, rather than evidence on matters of fact, or on issues calling for an expression of expert opinion.
In the end, the Panel has been able to decide this case readily enough without recourse to Mr. Olsson's lengthy statement. However, the Panel thinks it appropriate to emphasize that, except in cases involving particularly unusual words or usages, it will usually be neither necessary nor helpful for parties to provide lengthy and detailed evidence from forensic linguists. That has been especially so in this case, where the Complainant had already acknowledged (in its Complaint) that “the term ‘contractors' is a well-known descriptor in the computer software industry to describe an individual offering services on a ‘contract' basis to install or repair software” (Complaint, paragraph 6.1.4).
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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.”
The Respondent devoted some pages of its Response to an attempt to persuade the Panel that the Complainant does not have any relevant rights in the mark ORACLE (e.g. the submission that “oracle” has become generic, and no longer acts as a trademark). The Respondent also pressed the argument that Oracle does not supply recruitment services (the Respondent's claimed line of business), and accordingly does not have any rights in them.
At the same time, the Respondent advised in its Response that, for the first 5 years of its operation, the Respondent used a disclaimer commencing with the words: “Oracle is a registered Trademark of Oracle Corporation ….” The Response says that the Respondent intends to retain this disclaimer, and place it in a more prominent position.
The obvious contradiction between the wording of the disclaimer and the position the Respondent now takes on the Complainant's rights in the ORACLE mark, is illustrative of the “scattergun” approach adopted by the Respondent in its Response (i.e. every conceivable argument seemingly taken, regardless of its apparent merits).
The Complainant has quite clearly proved that it has registered rights in the mark ORACLE, in respect of certain computer-related products, both in the United Kingdom and in the European Union. Whether or not Oracle or the Complainant has rights in the mark ORACLE in respect of recruitment services, is neither here nor there in this part of the proceeding. This is not a trademark infringement action. All that is in issue under this part of the Policy, is whether or not the Complainant has rights in some trademark or service mark which is identical or confusingly similar to the Domain Name. If the Complainant proves that it does have such rights, the focus turns to the Respondent – does the Respondent have a legitimate interest or right in the Domain Name? (Policy, paragraph 4(a)(ii) If the Respondent had no right or legitimate interest, the next question is: “did the Respondent register the Domain Name in bad faith, and has the Respondent used the Domain Name in bad faith?” (Policy, Paragraph 4(a)(iii)).
Once the Complainant has proved, as it has, that it is the proprietor of the registered mark ORACLE, the only remaining question under paragraph 4(a)(i) of the Policy is whether that mark is identical or confusingly similar to the Domain Name.
The Complainant emphasizes that the Domain Name incorporates the ORACLE mark in its entirety, and that many panel decisions under the Policy have regarded that factor as at least compelling evidence of confusing similarity, if not as being dispositive of the question. This Panel agrees that the incorporation of a complainant's trademark in a disputed domain name is often an important factor, but does not believe that it must inevitably lead to a finding of confusing similarity. For example, a hypothetical domain name <ribmat.com> would incorporate, in its entirety, the mark IBM, but it would appear to be difficult to say that such a domain name was confusingly similar to the IBM mark. (For the sake of clarity, the Panel adds that he has no idea whether or not such a domain name exists, and expresses no concluded view on the hypothetical confusing similarity issue that it would raise. The example is used simply to illustrate the Panel's proposition that it goes too far to say that incorporating a complainant's trademark in full in a disputed domain name will always lead to a finding of confusing similarity.) In the end, the panel has to decide the issue of confusing similarity on the facts of each case.
In this case, the Respondent has demonstrated that there are numerous users of the expression “Oracle”, both in domain names and in the names of companies and businesses. The Complainant itself refers to the United Kingdom Oracle Users' Group, which it refers to as a “third party service”. There appear to be a vast number of other business users of the word “Oracle” who have no connection with the Complainant or Oracle.
The addition of the word “contractors” does, in the Panel's view, somewhat lessen the significance of the fact that the Complainant's mark has been incorporated in full in the Domain Name. That is because, on the evidence produced, the combined expression “Oracle Contractors” refers to an identifiable group of people which may be distinct from Oracle itself. Such group would not necessarily have any contractual or licensing relationship with Oracle or with the Complainant. As the Complainant put it in the Complaint, the term “contractors” is a well-known descriptor in the computer software industry to describe an individual offering services on a “contract basis to install or repair software”. The expression “Oracle Contractors” would sensibly be understood by most people in the computer industry, as referring to (possibly independent) contractors (as just defined) who specialize in Oracle software.
On the other hand, Oracle's partner affiliates could no doubt equally be described as “Oracle Contractors”. The issue is not without difficulty, and the Panel is mindful of the comment frequently made in Panel decisions under the Policy that the onus of proof under paragraph 4(a)(i) of the Policy is not a particularly high one. On balance, the Panel would probably find that the Domain Name is confusingly similar to the Complainant's ORACLE mark. In the event, however, that particular finding is not necessary, because in the Panel's view the Complainant has failed to make out its case under paragraph 4(a)(ii) – that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
The consensus view of WIPO panels is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.”
In this case, the Respondent's principal contention is that it has used the Domain Name, prior to receiving any notice of the present dispute, in connection with a bona fide offering of services, namely the provision of “recruitment services” for customers looking for contractors with expertise working with Oracle software. The Respondent says that it has been using the Domain Name in its recruitment services business for approximately 7 years, and that, for at least part of that period, Oracle has been well aware of the Respondent and its use of the Domain Name and has acquiesced in that use. The production of the email correspondence from Mr. Steven Chan of the Complainant appears to bear out the latter contention.
The Respondent refers to the Panel decision in DaimlerChrysler A.G. v. Donald Drummonds, supra, where the disputed domain name was <mercedesshop.com>. The respondent in that case maintained a website at the disputed domain name, on which there was a discussion forum for mechanics and owners of the complainant's products. The respondent also offered genuine Mercedes parts and accessories for sale, which parts and accessories were obtained through fully authorized channels of distribution. The respondent also sold re-built and used parts through the website at the disputed domain name. The respondent included an appropriate disclaimer on the home page of his website, disclaiming any affiliation with the complainant.
The majority of the Panel in the DaimlerChrysler A.G. case noted that the disputed domain name and the name of the respondent's website (“MercedesShop”) was descriptive of the business conducted there. The majority went on to say:
“It would be difficult, if not impossible for [the Respondent] to avoid altogether the use of the word ‘Mercedes' … which [is] the normal term which, to the public at large, signify [the Complainant's] cars.' - Volkswagenwerk Akpiengesellschaft v. Church, 4111F.2d 350 (9th Crir 1969)”.
Later in their decision in DaimlerChrysler AG, the majority said:
“Under the present facts, if the Panel were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and after market accessories could ever register a Domain Name descriptive of that business. The Policy was designed to deal only with the limited problem of cybersquatting. It was not designed to establish for the holder of a strong trademark a bar to entry of online competitors.”
The minority decision in the DaimlerChrysler A.G. case suggested that the majority's “legitimate competition” point could be met by the competitor registering a more generic domain name such as “<germanauto.com>, then disclaiming any affiliation to a specific manufacturer on its website.”
Pausing there, the Panel notes that he finds the majority view in the DaimlerChrysler AG case, rather more compelling than the view expressed by the minority panelist.
The Complainant refers to two cases on this issue, namely Volvo Trademark Holding AB v. Peter Lambe, supra, and Dell Inc v. Intercard Network/Jonathan Jiro Aguirre Huertas, supra. These cases were respectively concerned with the domain names <volvoexhausts.com>, and (in the Dell Inc case) <dellinspironrepair.com> and <dellspecialist.com>. No response was filed in either case. In the Volvo Trademark Holding AB case, the respondent was using the website at the disputed domain name in connection with his business of manufacturing and selling exhausts that inter alia could be used for Volvo cars and vehicles (i.e. the exhausts could also be used on other vehicles). In the Dell Inc case, the panel found that the respondent's repair services were not limited to Dell computers, and that the respondent had chosen the disputed domain name with a view to trading on the fame of the complainant's marks. The complainants' complaints were upheld in both cases.
Since those cases were decided, there have been numerous panel decisions on the issue of a reseller's right to use a trademark owner's trademark in a domain name pointing to a website at which the reseller sells the trademark owner's goods or services. The differing approaches of panels on this issue, were helpfully summarized in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, where the Panel said:
“The Panel observes that there are different views as regards the question of the conditions under which authorized or non-authorized resellers or distributors have a legitimate interest to use as domain name the manufacturer's trademark in identical form or with the addition of descriptive elements.
Three views can be distinguished in the previous WIPO UDRP decisions:
(1) At one end of the spectrum, it is argued that the authorization to market the products under the trade name does not as a matter of principle constitute an authorization to use the manufacturer's trademark as a domain name or as part of a domain name. If the use of the domain name is not expressly granted, the right to market the trademark holder's products under the complainant's trademark merely establishes a right to use the trademark for the marketing of the trademark holder's products but not a more extensive right to use the trademark as a domain name (See Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 - <worldnokia.com>, finding that a licensed reseller could only have a right to a domain name which included the trademark NOKIA if the trademark owner has specifically granted that right. (See Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 - <volvoexhausts.com>, finding that the manufacturer of ‘unoriginal' spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but that this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.).
(2) The contrary opinion was upheld in a dispute between Milwaukee Electric Tool Corporation and one of its resellers concerning the domain name <milwaukeetool.com> (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). The panel pointed out that it did not suggest a general rule regarding relationships between trademark holders and authorized distributors, but in the specific case held that a reseller who was entitled by contract to use the complainant's trademark in his advertising and had lawfully marketed the trademark holder's products over many years had a legitimate interest in the domain name and in any event was not using it in bad faith. Similar reasoning was applied in the Daimler Chrysler A.G. v Donald Drummonds decision ( WIPO Case No. D2001-0160, with dissent,), in which the holder of the domain name <mercedesshop.com> was admittedly not acting as a reseller but marketed spare parts and accessories on the Internet using a disclaimer, and for the this reason was regarded by the panel as a legitimate user of the domain name. Similar views have also been upheld by UDRP panels. (See Draw-Tite Inc. v. Plattsburg Spring Inc., WIPO Case No. D2000-0017 - <drawtite.com>; Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 - <webergrills.com>; <webergrill.com>).
(3) The majority view lying between these two was first put forward in the case of Oki Data Americas, Inc. v ASD, Inc., a conflict between a US manufacturer of computer accessories and an authorized reseller (Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 - <okidataparts.com>). In the panel's view, the use of a manufacturer's trademark as a domain name by an authorized dealer or reseller is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com>) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>).
This Panel follows the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent.”
Nowadays, the consensus of panel decisions on this issue, is that it will normally be appropriate for panels addressing the “reseller” issue, to apply the four-step proposed by the panel in Oki Data Americas, Inc v. ASD Inc, WIPO Case No. D2001-0903. In the Panel's view, there is no reason why that test should not be applied in this case. Although the Respondent is not reselling Oracle's products, it is providing services which are effectively “aftermarket accessories” to Oracle's products (to borrow the expression used by the majority of the panel in the DaimlerChrysler A.G. case), and it would be difficult for the Respondent to describe its services in a domain name without including the word “Oracle”. For the purposes of the application of the Policy, the Respondent is effectively in the same position as a reseller of Oracle products would be.
Applying the Oki Data Americas, Inc test in this case, the Panel notes the following:
1. The Respondent does appear to be offering the relevant services. It is providing, through the Respondent's website, “Oracle contractors” to end-users who need the services of independent contractors to maintain or service their Oracle software.
2. The Respondent appears to be providing services through the Respondent's website which are only related to the provision of “Oracle contractors” to the market. The Respondent's website does not contain reference to the products of Oracle's competitors, nor indeed to any other products which are not related to the provision of “Oracle contractor” services (the Panel does not see the provision of a discussion forum at the Respondent's website, or the publication of the white papers, as pointing to any different conclusion. They are sufficiently connected to the primary service the Respondent is providing through the Respondent's website, namely the provision to the market of independent contractors who are skilled (and up-to-date) in the installation and maintenance of Oracle software).
The Respondent's use of the website at the SAP domain name, and the metatag references to “SAP Contractors”, “ICE Group”, and “Oracle Contractors”, did briefly give the Panel some cause for pause. The Respondent said in the Response that those metatags must have been selected by its website designer, as they were not authorized by the Respondent. The Respondent said they had not been used since November 2006. That explanation seems to the Panel to be credible. There would have been little point in sending prospective customers for SAP contracting services to the Respondent's website, which deals only with Oracle products. It seems rather more likely that that particular metatag was intended to be employed in association with the unrelated website at the SAP domain name. The “ICE Group” metatag does not incorporate or suggest the ORACLE mark in any way, and the use of an “Oracle Contractors” metatag neither adds to nor subtracts from the argument: it is the same as the Domain Name itself, and if the Domain Name has been used in connection with a bona fide offering of services before notice of the present dispute, that will not be affected by the use of an identical metatag.
3. In the Panel's view, the Respondent's website does accurately disclose the Respondent's relationship with the Complainant and/or Oracle. A disclaimer has been posted at the foot of each page of the Respondent's website (and is now posted more prominently at the top of each page). The Panel did have some concerns over the prominence of the disclaimer as it was originally positioned, at the foot of each page. But the adequacy or otherwise of a disclaimer must be judged according to each particular situation. In this case, as in the DailerChrysler A.G. case, supra (dealing with a disputed domain name consisting of the complainant's trademark with the word “shop”), it seems unlikely that any Internet user looking for the Complainant's website would type in the expression “oraclecontractors”. Also in this case, the services being offered through the Respondent's website are likely to be used by business or professional customers, who will either already appreciate the independent status of the contractors available through the Respondent's website, or will spend sufficient time before any commitment is made, learning about the offered services (including the fact that they are not associated with or endorsed by Oracle). A number of additional factors support the Panel's view on the sufficiency of the disclaimer in this case. First, the Panel has already observed that the issue of confusing similarity between the Domain Name and the Complainant's ORACLE mark, is finely balanced. That fact, together with Oracle's own acknowledgements of the Respondent's website (e.g. in Mr. Chan's email) and its failure to make any complaint over the period since December 2000, suggest that there has probably been very little, if any, confusion, and that the disclaimer on the Respondent's website, coupled with the disclaimers which appear on the Google and Yahoo! search results lists, have been doing their work.
4. There is no suggestion in this case that the Respondent has been trying to corner the market for domain names incorporating the expression “oracle” (or the longer expression “Oracle Contractors”).
In the Panel's view, therefore, the Respondent has, on the evidence produced, brought itself within the four-step Oki Data Americas Inc test for bona fide use.
In conclusion, the Panel notes that the Complainant's prima facie proof in this case has not been particularly strong. The issue of confusing similarity under paragraph 4(a)(i) of the Policy is marginal. Secondly, the Complainant's statement that it only found out about the Respondent's use of the Domain Name in December 2007, appears to be clearly wrong. On January 30, 2007, Mr. Steven Chan of Oracle sent an email to the Respondent stating that he had “only recently discovered your site”, and complimenting the Respondent's editorial team on the quality of the Respondent's website coverage. Mr. Chan went on to say that he had “added [the Respondent's] site to my blogroll”, and he gave the link to the relevant page on the principal Oracle website at “www.oracle.com”. It appears to the Panel that Oracle has been prepared to at least tolerate the continuing existence of the Respondent's website, for rather longer than the Complainant has been prepared to acknowledge in its Complaint. While that might not constitute consent to the Respondent's registration and use of the Domain Name, when considered with the other matters traversed in this part of this decision, the Panel is not persuaded that the Complainant has discharged its overall burden of proving that the Respondent lacks any right or legitimate interest in respect of the Domain Name.
The Complaint must therefore fail, and there is no need for the Panel to consider the issue of bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
Dated: December 4, 2008