WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oracle International Corporation v. Above.com Domain Privacy / Protection Domain
Case No. D2017-1987
1. The Parties
The Complainant is Oracle International Corporation of Redwood Shores, California, United States of America (“United States”), represented by Steven M. Levy, United States.
The Respondent is Above.com Domain Privacy, Beaumaris, Victoria, Australia / Protection Domain of Panama City, Panama.
2. The Domain Names and Registrars
The disputed domain names <oraacle.com> and <oraclle.com> are registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2017. On October 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. The Complainant filed an amended Complaint on October 13, 2017. On October 13, 2017, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain names;
(b) the language of the registration agreement is English;
(c) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain names;
(d) but disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on October 31, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on November 3, 2017. The Complainant filed a third amended Complaint on November 9, 2017.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 19, 2017. 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.
4. Factual Background
The Complainant is the well-known computer software and hardware company. It was founded in the United States in 1977. It is particularly well-known for its enterprise relational database products, which are marketed and provided under the trademark ORACLE. According to the Complaint, the Complainant is the second largest software maker after Microsoft Corporation and has some 420,000 customers around the world. In 2016, it was ranked at number 17 in Interbrand’s Best Global Brands survey.
The Complaint provides evidence of registered trademarks for ORACLE in the United States including Registered Trademarks Nos _LINK1">1,200,239, 1,555,182 and 2,107,556. These are registered in International Classes 9 and 16 (Trademark No. 1,200,239), 41 and 42 (Trademark No. 1,555,182) and classes 35, 36 and 42 (Trademark No. 2,107,556). US Trademark No. 1,200,239 was registered on July 6, 1982, US Trademark No. 1,555,182, on September 5, 1989 and US Trademark No. 2,107,556 on October 21, 1997.
The Complainant has also registered European Union Trade Mark No. 002843019 on June 16, 2004 for ORACLE in International Classes 9, 16, 35, 36, 38, 41 and 42.
The Registrar has not confirmed the date (or dates) that the disputed domain names were first registered in the Respondent’s name. According to the Complaint, the first disputed domain name was registered on April 24, 2012 and the second disputed domain name was registered on April 23, 2013.
According the Complainant, the disputed domain names have resolved to a rotating series of third-party websites under what is known as the fast flux DNS (FFDNS) technique.1 . Sometimes this means that the disputed domain names resolve to a webpage which attempts to install malware on the user’s computer. On other occasions, the resolving website displays a warning page. The disputed domain name <oraclle.com> has also resolved at times to a webpage with pay-per-click (PPC) links to various websites which are not related to the Complainant and, on occasion, in competition with the Complainant.
5. Discussion and Findings
Both disputed domain names were registered in the name of a privacy service. However, the registrant revealed by the Registrar on the filing of the Complaint is a second privacy service. In this circumstance, the Complainant has requested consolidation of the Complaint in respect of both domain names.
Paragraph 3(c) of the Rules provides that a complaint may relate to several domain names where they are registered in the name of the same respondent. Panels have also allowed consolidation where domain names are not formally registered in the same name but it appears that the same person is in fact the registrant or the domain names are otherwise under common control. In such circumstances, the panel has also taken into account the potential efficiency of consolidation and also, importantly, the interests of fairness both to the complainant and the respondent(s). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), Section 4.8.
In the present case, although the registrant is a (second) privacy service, the disputed domain names are both formally registered in the name of the same person. Also it appears that a common technique has been used in forming the disputed domain names and, according to the Complaint, they have been put to use in the same or very similar ways.
In these circumstances, the Panel considers consolidation is appropriate in the interests of efficiency and there being no apparent prejudice or unfairness to the registrants of the disputed domain names if they are not the same person. As the Complainant notes, it was open to registrants, if different, to advance reasons why consolidation should not be allowed, or any particular prejudice or unfairness that would arise from consolidation in response. In the event, however, no response has been filed.
Although no response has been filed, the Complaint has been sent to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and/or aural comparison of each disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, each of the disputed domain name differs from the Complainant’s trademark by a simple misspelling by the addition of an extra letter. This kind of similarity has been long recognised as sufficient to satisfy the requirements of confusing similarity: WIPO Overview 3.0, section 1.9. Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove for each disputed domain name is that the Respondent has no rights or legitimate interests in that disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorized the use of either disputed domain name. So far as the record in this proceeding shows, neither of the disputed domain names is derived from the Respondent’s name. The way the disputed domain names are being used is not a legitimate noncommercial or fair use. On the contrary, the use of the FFDNS technique and the use of the PPC links of the kind described above have both been recognised as not qualifying as legitimate or bona fide use under the Policy: e.g. CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144 and LF, LLC v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, Gustavo Winchester, Jasper Developments Pty Ltd, Pearl Admin, Pearl Advertising, domain admin, Global Access, domain admin, Xedoc Holding SA, Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, Namescope Limited, Above.com Domain Privacy / Shu Lin, WIPO Case No. D2017-1622 (FFDNS technique) and WIPO Overview 3.0, section 2.9 (PPC links).
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
To succeed in respect of any particular disputed domain name under the third requirement of the Policy, the Complainant must show that the relevant Respondent has both registered and used the relevant disputed domain name in bad faith. These are cumulative or conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010‑0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The nature of each disputed domain name as a simple misspelling of the Complainant’s trademark and the way each of the disputed domain names has in fact been used, as set out in section 4 above, demonstrates a clear intention to take advantage of the Complainant’s trademark for its trademark significance. As already noted, that conduct cannot be considered to be in good faith under the Policy. That use is also quite inconsistent with an intention to register the disputed domain names in good faith. It does not seem at all credible that the Respondent would have thought, when registering the disputed domain names, that it was legitimate to redirect it to websites which seek to install malware on the browser’s computer or to websites competing with the Complainant’s business. Accordingly, the Panel is satisfied that each disputed domain name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <oraacle.com> and <oraclle.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 26, 2017
1 According to Wikipedia, “Fast flux is a DNS technique used by botnets to hide phishing and malware delivery sites behind an ever-changing network of compromised hosts acting as proxies. It can also refer to the combination of peer-to-peer networking, distributed command and control, web-based load balancing and proxy redirection used to make malware networks more resistant to discovery and counter-measures.”