WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oracle International Corporation v. / Irfan Bin Faruk Case No. D2009-0070 1. The Parties
The Complainant is Oracle International Corporation of Redwood City, California, United States of America, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is of Orem, Utah, United States of America / Irfan Bin Faruk of Damansara Utama, Malaysia. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 20, 2009, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On January 27, 2009, FastDomain, Inc. 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 January 28, 2009, 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 amendment to the Complaint on January 28, 2009. The Center verified that the Complaint together with the amendment to 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 proceeding commenced on January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 19, 2009.
The Center appointed David Perkins as the sole panelist in this matter on March 6, 2009. 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 4.A. The Complainant Oracle Corporation
4.A.1 The Complainant, Oracle International Corporation, is a wholly owned subsidiary of Oracle Corporation (“Oracle”). The Complainant owns the trademarks relied upon in this administrative proceeding, which are used by Oracle with the consent of the Complainant. Those trademarks are identified in paragraph 4.A.5 below.
4.A.2 Oracle was incorporated in California in 1977. It is the world's largest enterprise software company. It develops, manufactures, markets, distributes and services database and middleware software as well as application software. Its annual revenues for 2008 exceeded USD22 billion. Oracle University
4.A.3 Oracle provides, through an education service called Oracle University, training for Oracle technologies and products. Oracle University offers comprehensive training services to help executives, managers and end users make the most of new Oracle technology. Oracle University offers thousands of in-class, onsite, web-based and CD-ROM courses for learners around the world. Oracle University supports 99 countries and 24 languages, and it trains 320,000 students per year at its 446 worldwide locations. There are 480 Oracle University instructors and 670 classes are held per week.
4.A.4 Oracle University courses are available in a variety of training formats to provide students with flexible learning options. In addition to courses taught at Oracle Learning Centers, Oracle University offers private events, training at a customer's site and custom training. Students at Oracle University are provided with a variety of materials, including bound books called student guides, to assist with their learning The ORACLE registered trademarks
4.A.5 The Complainant is the proprietor of registered trademarks for the ORACLE word mark and/or ORACLE device mark for, inter alia, goods in classes 16 and 41 in some 96 countries worldwide. Those registrations include United Kingdom and European Community Registrations filed in September 2002 and October 2003. The earliest of the ORACLE word mark registrations dates from 1982 in the United States of America (“USA”). The Complainant is also the proprietor of registered trademarks for ORACLE FUSION and ORACLE PRESS. Oracle USA, Inc and McGraw-Hill
4.A.6 Another wholly owned Oracle subsidiary is Oracle USA, Inc (“Oracle USA”). Oracle USA has an agreement with the publisher, McGraw-Hill which dates from 1994 whereunder McGraw-Hill is licensed to use the ORACLE and ORACLE PRESS trademarks in relation to a series of books about various Oracle products and applications. There are currently more than 60 book titles available from McGraw-Hill under the ORACLE and ORACLE PRESS trademarks. Use of the ORACLE trademark as a domain name
4.A.7 The Complainant registered the domain name on December 2, 1988. That domain name has been in continuous use since then in relation to the Oracle website. That website is used to promote Oracle's products and services, to provide a wide range of information about the company and its products, to provide customer support and to promote Oracle University (see, paragraphs 4.A.3 and 4 above). 4.B The Respondent
4.B.1 In the absence of a Response, there is no information in relation to the Respondent and his activities except that which has been exhibited to the Complaint. That is extracts from the website to which the disputed domain name resolves and the fact that the domain name was created on June 27, 2008.
4.B.2 The disputed domain name resolves to a website at “www.”. The homepage of the Respondent's website states:
“These are the same Official Oracle University Curriculum Student Guide [sic] you would get when you enroll for the Oracle University Workshop Courses which cost few thousand dollars [sic]
** Please take note that these Student Guides Do Not Come with Appendix **
Sales & Support Email : support@
The Quality of the PDF files is crystal clear. Checkout the sample by clicking here
For Detail Information on their courses, Please checkout ”
4.B.3 The left-hand side of the website homepage has links headed “Oracle 9i”, “Oracle 10g”, “Oracle 11i”, “Oracle 11g” and “Oracle R12”. Oracle 9i, Oracle 10g, and Oracle 11g are all names given by Oracle to versions of its relational database management system. Oracle 11i and Oracle R12 are both versions of Oracle's E-Business Suite, which consists of a collection of enterprise resource planning, customer relationship management and supply-chain management computer applications.
4.B.4 Clicking on the “Oracle 9i”, “Oracle 10g”, “Oracle 11i”, “Oracle 11g” and “Oracle R12” links takes an Internet user to webpages which list a number of links to publications relating to that Oracle product. The description of each publication is headed “Official Oracle University Curriculum” and contains a link which states “Buy Now US$9.95”. Clicking on this purchase link takes an Internet user to a ClickBank Secure Payment Form which states “Immediate access to this product or service is available once payment is approved”. 5. Parties' Contentions 5.A. Complainant 5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant's case is that it has rights in the well-known ORACLE trademark. As an illustration of the high degree of consumer and media recognition of the ORACLE mark, the Complainant refers to Interbrand's “Best Global Brands” listing for 2008, which estimates the value of the ORACLE brand at approximately USD13.8 billion and places it as the 23rd best known trademark in the world.
5.A.1.2 The Complainant says that the ORACLE trademark is the distinctive element of the disputed domain name, the suffix “books” merely being a descriptive term. In that respect, the Complainant cites decisions under the Policy where the juxtaposition of a complainant's trademark with a descriptive term has been held to be confusingly similar for the purposes of paragraph 4(a)(i) of the Policy. For example, Volvo Trademark Holding AB v. Peter Lambe,WIPO Case No. D2001-1292, where the disputed domain name was . Another example found to be confusingly similar which the Complainant says is particularly apposite to this case is Wal-Mart Store, Inc v. Henry Chan,WIPO Case No. D2004-0056.
5.A.1.3 The Complainant also points to the fact that its ORACLE trademark is actually used in relation to books by its licensee, McGraw-Hill (see, paragraph 4.A.6 above) and also used in relation to the products of Oracle University (see, paragraph 4.A.3 above).
5.A.1.4 Finally, for likelihood of confusion, the Complainant also relies on “initial interest confusion”, citing in that connection two decisions under the Policy. Namely, Six Continents Hotels, Inc. v. Hotel Partners of Richmond,WIPO Case No. D2003-0222 where the complainant owned the well-known HOLIDAY INN trademark and where the disputed domain name was and Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036, where the complainant owned the VOLVO trademark and the disputed domain name was . 5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant says that the Respondent is not licensed or otherwise authorized to use the ORACLE trademark or to use copyright owned by the Oracle Group. As to the latter, it can be seen from paragraph 4.B.2 above that the Respondent's homepage incorporates two Oracle copyright notices. The publications which the Respondent advertises on his website and makes available for downloads by web users (see, paragraph 4.B.3 and 4 above) are Oracle publications in which the Complainant's Group companies own the copyright.
5.A.2.2 In the circumstances, it is quite clear the Complainant says that the Respondent was aware of the ORACLE trademark when registering the disputed domain name and that he chose the disputed domain name solely in order to attract Internet users to his website by trading on the fame of the Complainant's ORACLE trademark. Accordingly, the Respondent cannot bring himself within either paragraphs 4(c)(i) or (iii) of the Policy, since his use of the disputed domain name is neither bona fide nor a fair use.
5.A.2.3 In this respect, the Complainant cites two decisions under the Policy as authority for the proposition that good faith is central to determining whether use is bona fide. They are San Francisco Museum of Modern Art v. Joshua S. Drapiewski,WIPO Case No. D2000-1751 where the complainant's trademark was SFMOMA and the disputed domain name was used for a website promoting the artistic value of street graffiti and Barnes & Noble College Bookstores, Inc. v. Leasure Interactive,WIPO Case No. D2001-1216 where the complainant's trademark was BARNES & NOBLE and the disputed domain name was used for a website selling and displaying hard core sexual content and merchandise.
5.A.2.4 Furthermore, it is not the Complainant says a bona fide use of the disputed domain name to signal falsely to Internet users that the Respondent's website is associated with or sponsored by Oracle. The Complainant illustrates this by reference to two decisions under the Policy. First, Dell Inc. v. Intercardnetwork/Jonathan Jairo Aguirre Huertas,WIPO Case No. D2004-0788 where the disputed domain names and linked to a website used to advertise and promote the respondent's laptop computer repair business. Second, Hoffmann-La Roche Inc. v. US Online Pharmacies,WIPO Case No. D2006-0348 where the disputed domain name was used to link to a website where the respondent offered the complainant's TAMILFU antiviral product without license or authorisation from Hoffmann-La Roche.
5.A.2.5 As to paragraph 4(c)(ii) of the Policy, the Complainant says there is no evidence that the Respondent is commonly known by the disputed domain name.
5.A.2.6 As to paragraph 4(c)(iii) of the Policy, the Complainant refers again to the Hoffmann-La Roche TAMIFLU decision where it was held that offering the complainant's TAMIFLU antiviral product without license or authority from Hoffmann-La Roche and with the intent of thereby making commercial gain could not constitute a fair use of the disputed domain name. 5.A.3 Registered and Used in Bad Faith
5.A.3.1 The Complainant's case is that the circumstances in this case come within paragraph 4(b)(iv) of the Policy. First, the Respondent has selected a domain name incorporating as its dominant element the very well-known ORACLE trademark. Accordingly, it is plain – the Complainant says – that the Respondent deliberately set out to cause confusion, such that registration of the disputed domain name was clearly made in bad faith. The Complainant quotes passages from the decision in the Hoffmann-La Roche TAMIFLU case where the panel found the domain name to have been registered in bad faith.
5.A.3.2 Another illustration of the Respondent's bad faith in registering the disputed domain mane is the Complainant says using the website to which it resolves to offer downloads of Oracle's products in infringement of Oracle's copyright in those products. Additionally, the Complainant cites the decision in TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216 as an instance where intentional infringement of a complainant's copyright was held to be bad faith. In that case, the complainant's trademark was YACHT TRADER, and the complainant operated websites through, inter alia, its domain name . The disputed domain names were and , the former being used for a website using material from the complainant's YACHT TRADER magazine, also copying page for page and element for element much of the material on the complainant's website.
5.A.3.3 The Complainant also asserts that the circumstances in this case come within paragraph 4(b)(iii) of the Policy. The publications offered on the Respondent's website are only provided to Oracle University students and are offered at only a fraction of the cost of participating in an Oracle University course. The Complainant says this is calculated to draw business away from Oracle and its licensees and, accordingly, it is clear that the Respondent registered the disputed domain name primarily for the purpose of disrupting Oracle's business.
5.A.3.4 The Complainant also points to the Respondent's use of a privacy shield to hide his true identity by registering the disputed domain name as “” at an address in Orem, Utah, USA and hence providing incorrect contact information. In that respect, the Complainant cites two decisions under the Policy, namely World Wrestling Federation Entertainment, Inc. v. Matthew Bessette,WIPO Case No. D2000-0256 where the disputed domain names were and , which were not listed in the respondent's name and Dell Computer Corporation v. Clinical Evaluations,WIPO Case No. D2002-0423 where one of the disputed domain names was not listed under the respondent's name but in the name of “Clinical Evaluations”. In both cases, the panel held that registration of the disputed domain name was an indication of the respondents' bad faith. 5.B. Respondent
As stated, no Response has been submitted. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be relevant evidence of the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has rights in the very well-known ORACLE trademark.
6.6 The disputed domain name comprises that trademark and the descriptive suffix “books”. That, in itself, gives rise to confusing similarity with the ORACLE trademark. Further, confusing similarity stems from the fact that more than 60 book titles are published by Oracle's licensee under and by reference to the ORACLE trademark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 From the facts set out in paragraphs 4.B.2 to 4.B.4 above and from the Complainant's submissions summarized in paragraph 5.A.2 above, it is clear that none of the circumstances set out in paragraph 4(c) of the Policy apply in this case. Further, the Panel cannot conceive of any other circumstances which could provide the Respondent with rights or legitimate interests in respect of the disputed domain name. Accordingly, the Complaint also satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in bad Faith
6.9 Again, it is unnecessary to rehearse the facts set out in paragraphs 4.A and 4.B above or the Complainant's submissions in paragraph 5.A. Given the well-known status of the ORACLE mark and the use to which the disputed domain name has been put, it is clear that that domain name was both registered and also used in bad faith. The circumstances set out in paragraphs 4(b)(iii) and (iv) of the Policy are present on the facts and, accordingly, the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.
6.10 Although not necessary for that finding, the Panel does not accept that registration of a domain name using a privacy shield constitutes per se bad faith registration and/or use of a domain name. Depending upon the particular circumstances, masking the identity of the true registrant may be taken as an indication of bad faith, but that will, in this Panel's opinion, depend entirely upon the specific facts in issue. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: March 16, 2009
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