The Complainant is Oracle International Corporation, United States of America (“United States” or “US”), represented by FairWinds Partners, LLC, United States.
The Respondent is 李金梁 (Li Jin Liang), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 11, the Complainant filed an amended Complaint in English in response to the Center’s request for clarification. On March 13 and 15, 2020, the Registrar transmitted by email to the Center its verification responses 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 March 25, 2020 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 in English on March 25, 2020. On March 25, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on March 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2020. The Center appointed Jonathan Agmon as the sole panelist in this matter on April 29, 2020. 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 founded in 1977 and headquartered in the United States. It is one of the world’s largest developers and marketers of enterprise software products and services and computer hardware systems. A cloud-based computing environment known as the Oracle Cloud is one of the products among its range of products. This incorporates a comprehensive suite of enterprise applications including its SaaS applications (Software as a Service), its DaaS (Data as a Service) offerings which can be used by customers’ sales and marketing teams to produce better business outcomes, and its IaaS (Infrastructure as a Service) applications which enable customers to run their application workloads in the Oracle Cloud. There are also many other computing and database related products and services sold around the world under the ORACLE and ORACLE CLOUD trademarks. 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 owns numerous trademark registrations for the ORACLE and ORACLE CLOUD marks (collectively, the “ORACLE” marks) worldwide, including but not limited to the following: - ORACLE (US Trademark Registration No. 1200239), registered on July 6, 1982; The disputed domain names The Complainant’s contentions include the following: The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered ORACLE marks as the disputed domain names wholly incorporate the ORACLE marks with deliberate misspelling of “oraclecloud” and generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names. The Complainant further argues that the disputed domain names were registered and are being used in bad faith as they redirect Internet users to commercial websites through various sponsored click-through links. For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11 of the Rules provides that: “(a) Unless 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.” The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding: (i) The disputed domain names consist of Latin letters, rather than Chinese characters; (ii) The disputed domain names incorporate a deliberate misspelling of the English term “Oracle Clound”, and resolve to the websites in English; (iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and (iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding. Upon considering the above, the Panel determines that English be the language of the proceeding. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names Further, it is well established that the addition of a gTLD “.com” does not avoid confusing similarity between the Complainant’s trademark and the disputed domain names. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.) Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns trademark registrations long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s ORACLE marks (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3). Furthermore, the Complainant provided evidence showing that the Respondent has been using the disputed domain name to host the parked pages comprising PPC links, which offer competing services to those offered by the Complainant. Such use has been consistently held not to represent a bona fide offering of goods and services (see WIPO Overview 3.0, section 2.9). Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its ORACLE marks. According to the evidence filed by the Complainant, the Complainant has owned registration for the ORACLE marks since the year 1982. In view of the evidence filed by the Complainant, and the global widespread use of the ORACLE marks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names. Therefore, it is unlikely that the Respondent did not know of the Complainant’s marks prior to registration of the disputed domain names (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). Furthermore, the disputed domain names incorporate the Complainant’s trademarks in its entirety with a deliberate misspelling of ORACLE CLOUD mark and the addition of a gTLD “.com” which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. Given the distinctive nature of the Complainant’s ORACLE CLOUD mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s use of the disputed domain names to redirect unsuspecting Internet users to commercial websites through various sponsored PPC links offering competing services and comprising words associated with the field of practice of the Complainant, constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain names to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s ORACLE CLOUD mark. Given the particular circumstances of this case and the distinctive nature of the ORACLE marks, and therefore on the balance, and based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain names and the Complainant’s marks, the Respondent’s use of the disputed domain names, and the fact that is no plausible good faith use the Respondent can put the disputed domain names to, the fact that no Response was submitted by the Respondent, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith. 7. Decision 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 Jonathan Agmon
- ORACLE (US Trademark Registration No. 1555182), registered on September 5, 1989;
- ORACLE (US Trademark Registration No. 2107556), registered on October 21, 1997;
- ORACLE CLOUD (US Trademark Registration No. 5195735), registered on May 2, 2017; and
- ORACLE (European Union Trademark Registration No. 2843019) registered on June 16, 2004.
Sole Panelist
Date: May 12, 2020
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