WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oracle International Corporation v. Jin Dong Li, Li Jin Dong
Case No. D2019-0813
1. The Parties
The Complainant is Oracle International Corporation, United States of America (“the U.S.”), represented by Steven M. Levy, Esq., United States.
The Respondent is Jin Dong Li, Li Jin Dong, China.
2. The Domain Name and Registrar
The disputed domain name <orqcle.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 2, 2018.
On May 1, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 1, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on June 6, 2019. 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 was founded in 1977 and is headquartered in Redwood City, California, the U.S.. It is one of the world’s largest developers and markets of enterprise software products and services and computer hardware systems. As at 2011, the Complainant was the second-largest software maker by revenue, after Microsoft.
The Complainant’s goods and services are sold throughout the world under the ORACLE trade mark. The Complainant extensively promotes its ORACLE products and services through a variety of advertising and promotional mediums including its “www.oracle.com” website. The Complainant’s ORACLE products and services have been the subject of extensive news coverage in high-profile outlets such as CNN and the New York Times, and have garnered marketing and industry awards. It was ranked No. 17 by Interbrand as one of the “Best Global Brands” of 2016.
As a result of the long usage and promotion of the ORACLE mark, it has become famous and widely recognized around the world by both computing industry professionals and members of the general public.
The Complainant owns trade mark registrations for ORACLE around the world including in the U.S., the European Union and China. The Complainant owns, inter alia, U.S. Registration Nos. 1200239 (registered July 6, 1982) and 1555182 (registered September 5, 1989); European Union Registration No. 2843019 (registered June 16, 2004); and Chinese Registration Nos. 801813 (registered December 21, 1995) and 797963 (registered December 7, 1995).
The disputed domain name was registered on February 27, 2017. The disputed domain name resolves to a pay-per-click website displaying links which divert visitors to other websites which are not associated with Complainant and which, in many instances, feature services that compete with Complainant’s cloud computing services.
According to the Complaint, the Complainant’s representative wrote to the email address found on the WhoIs records on February 27, 2019. The Registrar responded on the same day, stating that it had forwarded the Complainant’s message to its customer, the Respondent. On March 7, 2019, the Complainant’s representative sent a follow-up message to the same email address and received a similar response from the Registrar. The Respondent never replied to the Complainant.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s ORACLE trade mark. The misspelling of the word “oracle” in the disputed domain name is minor and it is notable that the letters “a” and “q” are visually similar and directly proximate to each other on a standard QWERTY keyboard. The addition of the “com” generic Top-Level Domain (“gTLD”) does not alleviate the confusion between the ORACLE trade mark and the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name resolves to a pay-per-click page which displays links which divert visitors to other websites which are not associated with the Complainant and which, in many instances, feature services that compete with the Complainant’s cloud computing services.
The Respondent is not commonly known by the disputed domain name or “Oracle”. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The content of the Respondent’s landing page has no relation to the common dictionary meaning of the word “oracle”.
The disputed domain name was registered and is being used in bad faith. The Respondent has intentionally targeted the ORACLE trade mark. The Complainant’s ORACLE mark has been considered to be well known (reference made to Oracle International Corporation v. Ahmad Farshchi, WIPO Case No. DIR2017-0010). The minor typographical variation of the Complainant’s mark shows that the Respondent created the disputed domain name with its knowledge of the Complainant’s trade mark rights in ORACLE.
The Respondent is seeking commercial advantage from its registration and use of the disputed domain name through click-through fees generated from the links on its site.
The Respondent did not respond to the Complainant’s email communications. Further, there is evidence that the Respondent has engaged in a pattern of conduct in registering multiple domain names that infringe the trade marks of other brand owners. An example of this is a complaint filed by DD IP Holder LLC in respect of the domain names <dnkindonuts.com>; <dunkindobuts.com>; <dunkinnonuys.com>; <sunkindonuts.com>; <unkindonuts.com> (DD IP Holder LLC v. LiJin Dong, Li Jin Dong and Jin Dong Li, Li Jin Dong, WIPO Case No. D2019-0135).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Complainant requested that English be adopted as the language of the proceeding notwithstanding the fact that the Registration Agreement is in Chinese, as the contents of the Respondent’s pay-per-click website are in English and the disputed domain name adopts the use of Latin script letters. This shows that the Respondent is familiar with the English language. On the other hand, the Complainant operates its business in English and should not be put to the added expense of translating the Complainant and annexes.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(c) of the Rules provides that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel is persuaded that the Respondent is familiar with the English language, in view of the contents of the Respondent’s website and the choice of the disputed domain name. The Respondent could have raised any concerns it has or objected, but chose not to. Neither did it respond in these proceedings in Chinese. To require the Complainant to have Chinese translations prepared would lead to a delay in the proceeding whereas the Panel finds no compelling reason for this.
Accordingly, the Panel finds it appropriate to make a determination that English apply as the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the ORACLE trade mark in which the Complainant has rights. The only differences between the disputed domain name and the Complainant’s trade mark lie in:
(i) the Top-Level Domain “.com”, which is a technical requirement of domain names and has no relevance to the issue of identity or confusing similarity; and
(ii) the substitution of the letter “q” for the letter “a”.
In relation to point (ii), the Panel refers to section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
The disputed domain name is an obvious and intentional variation of the Complainant’s ORACLE trade mark and Internet users can be expected to mistype the word “oracle” on a QWERTY keyboard.
The aforesaid differences between the disputed domain name and the Complainant’s ORACLE trade mark therefore does not prevent a finding of confusing similarity.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name: (i) the Complainant did not authorize the Respondent to use the ORACLE trade mark or to register the disputed domain name incorporating a mis-spelling of the ORACLE trade mark; (ii) looking at the contents of the Respondent’s website to which the dispute domain name resolves, it is rather evident that the Respondent was very familiar with the Complainant’s ORACLE trade mark and its range of products and/or services when it registered the disputed domain name; (iii) there is no evidence that the Respondent is commonly known by the disputed domain name or “Oracle”; and (iv) there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Section 2.9 of the WIPO Overview 3.0 states that “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
The Respondent’s failure to rebut the Complainant’s allegations is also indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel therefore concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
It is rather evident that the Respondent was well aware of the Complainant’s business and ORACLE trade mark at the time it registered the disputed domain name. The Complainant’s famous ORACLE trade mark appears to have been specifically targeted by the Respondent for “typosquatting” purposes. The Panel is persuaded that the Respondent chose the disputed domain name for bad faith reasons, i.e. to redirect Internet users looking for the Complainant’s ORACLE products and services (and who mis-type the word “oracle”) to the Respondent’s website, and thereby profit from click-through fees.
Pursuant to section 3.2.1 of the WIPO Overview 3.0, the Panel finds these circumstances to be present and relevant in determining that the disputed domain name has been registered and used in bad faith:
(i) “a typo of a widely-known mark”;
(ii) “the content of any website to which the domain name directs”;
(iii) “any respondent pattern of targeting marks”; and
(iv) “a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name”.
The Respondent failed to provide any arguments in response and there is therefore no basis for a contrary finding by the Panel.
The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
The Panel finds that the circumstances of the instant case are described by and fall within paragraph 4(b)(iv)
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 name <orqcle.com> be transferred to the Complainant.
Date: June 19, 2019