The Complainant is Oracle International Corporation of Redwood Shores, California, United States of America (“United States”), represented FairWinds Partners, LLC, United States.
The Respondent is Ahmad Farshchi of Esfahan, Islamic Republic of Iran (“Iran”). 2. The Domain Names and Registrar
The disputed domain names , and are registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On March 17, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On March 19, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on April 7, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 April 10, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2017. On May 1, 2017, the Center notified the Respondent’s default.
The Center received an informal third party communication on May 1, 2017.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 12, 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 a producer of software and the proprietor of the trademark ORACLE, registered in various countries and jurisdictions, including Iran, the European Union and the United States. For example, in the European Union the Complainant’s mark has been registered on June 16, 2004 under the number 2843019.
The disputed domain name was registered on September 16, 2016; the disputed domain name was registered on October 2, 2016; the disputed domain name was registered on June 22, 2016. The disputed domain names and resolve to websites offering the Respondent’s products. The disputed domain name used to resolve to a website displaying pay-per-click links and is currently inactive. 5. Parties’ Contentions A. Complainant
Each of the disputed domain names includes the Complainant’s trademark in its entirety with the addition of generic terms.
The Respondent has not been authorized to use the Complainant’s trademark. The disputed domain names are being used to offer the goods of the Respondent, which are not offered or approved by the Complainant. The disputed domain name resolved to a registrar parking page, which is not sufficient to support a claim of legitimate interests to the disputed domain name.
The Respondent uses the famous trademark ORACLE without the Complainant’s consent. The Respondent has not replied to the Complainant’s letter and its follow-ups. The Respondent is also obtaining commercial gain from use of the disputed domain names as they are used for promoting the Respondent’s own goods and services, and to charge a fee to a customer.
The disputed domain name is being passively held, which as such constitutes bad faith use of the domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Furthermore, the informal communication of May 1, 2017, from a third party did not contain any substantial arguments on behalf of the Respondent. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
It is well established in decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) that generic Top-Level Domain (“gTLD”) indicators (e.g.,”.com”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name.1
The Complainant has shown that is the proprietor of the registered trademark ORACLE, which can be considered a well-known trademark. The disputed domain names incorporate the Complainant’s trademark in its entirety combined with generic words. These generic words are moreover such words that are commonly used in the Complainant’s business area.
In accordance with paragraph 1.9 of the WIPO Overview 2.0, noting that each disputed domain name consists of the Complainant’s trademark along with descriptive words, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Complainant has also submitted that two of the disputed domain names are being used to offer the Respondent’s own goods and services in a manner which misrepresents the relationship between the Complainant and the Respondent. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that each disputed domain name has been registered or is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
As stated above, the Panel finds that the Complainant’s trademark ORACLE is a well-known trademark. Hence it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain names. This is also supported by the fact that the disputed domain names include generic words relevant to the Complainant’s business.
The disputed domain names and resolve to a website where the goods of the Complainant and the Respondent are offered. These goods have not been approved or authorized by the Complainant. Hence the Respondent is using these domain names to obtain commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The disputed domain name does currently not resolve to a website but used to resolve to registrar parking site displaying pay-per-click links. According to paragraph 3.2 of the WIPO Overview 2.0, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith and the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
In this case the Complainant’s trademark has been found to be well-known, the Respondent has not replied to the Complainant’s letters and has not submitted a response to this Complaint. In addition, the other two domain names registered by the Respondent have been found to be used in order to exploit the Complainant’s trademark commercially. On balance, this means that the fact that there is currently no active use of the domain name does not dispel a finding of bad faith for the purposes of the Policy.
Based on the above, the Panel finds that all the disputed domain names were registered and are being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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 , and be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: May 26, 2017
1 In light of the substantive and procedural similarities between the irDRP and the UDRP, the Panel has cited to the UDRP and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), where appropriate.
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