Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Oracle Corporation, Redwood City, CA, USA ("Complainant") represented by Karen Scarr. The Respondent is Internet Nexus Inc., Naperville, IL, USA ("Respondent").

The domain name at issue is myoracle.com registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 29, 2000; the Forum received a hard copy of the Complaint on January 3, 2001.

On January 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name myoracle.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@myoracle.com by e-mail.

A timely response was received and determined to be complete on January 23, 2001.

On January 30, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the Respondent’s registration of the domain name myoracle.com is confusingly similar to its trademarks and service marks in the mark ORACLE; that the Respondent is trading on the goodwill of the Complainant’s mark and has no rights or legitimate interests in the domain name; and that the Respondent registered and is using the domain name in bad faith.

B. Respondent

The Respondent contends that the domain was registered with the intent to launch a service or product surrounding the term "Predictive" or "Foretell" as described in the English Language Dictionary and that this product is distinct from that of the Complainant. The Respondent’s intention is to launch a service or product in the market research industry enabling consumer behavior prediction and reporting based on market research and survey data online. The Respondent also contends that the Complainant does not have any rights to the mark MYORACLE.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(3) the domain name has been registered and is being used in bad faith.

The Respondent’s domain name simply adds the prefix "my" to the Complainant’s trademark ORACLE. The use of "my[trademark].com" or "my.[trademark].com" domain names is an increasingly common one on the Web, frequently used by businesses to designate Web sites or pages that allow users to customize the sites’ content. The Complainant is in the process of launching MY.ORACLE.COM, a portal site that will allow users to create a customized interface to the Complainant’s business application programs and other business information. Other examples of such sites include MYCNN.COM, MY.YAHOO.COM, MY.NETSCAPE.COM, MY.FINDLAW.COM, MYWEBMD.COM, MY.FOOL.COM, and MY.IVILLAGE.COM. In addition, one of the Complainant’s major competitors, SAP AG, offers a customizable

e-business software product called MYSAP.COM, which has been the subject of a major television and print advertising campaign and is promoted on SAP’s Web site at http://www.mysap.com.

Given the prevalence of "my[trademark].com" domain names on the Web, the Respondent’s use of the Complainant’s famous mark ORACLE in myoracle.com would strongly indicate a connection with the Complainant. Indeed, the likelihood of such a result is enhanced by the fact that, like the Complainant’s own ORACLE.COM, the Web site linked to myoracle.com offers software products for sale to the public.

The Respondent’s domain name myoracle.com is thus confusingly similar to the Complainant’s mark ORACLE and to Complainant’s Web sites ORACLE.COM and MY.ORACLE.COM. See ESPN, Inc. v. MySportsCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (mysportscenter.com was confusingly similar to trademark SportsCenter); State Farm Mut. Automo. Ins. Co. v. J.&B., Inc., FA 94804 (Nat. Arb. Forum June 13, 2000) (mystatefarm.com was confusingly similar to trademark State Farm); NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (myniit.com was confusingly similar to trademark NIIT). As such, myoracle.com also dilutes the Complainant’s ORACLE mark, which is a famous mark.

The Respondent is not commonly known by the domain name at issue, nor has the Respondent used the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use without intent for commercial gain. See Hartford Fire Ins. Co. v. Webdeal.com, Inc. FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the Respondent has no rights or legitimate interests in domain names because it is not commonly known by the Complainant’s marks and the Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The Respondent has used the domain name myoracle.com to auto-refer to the Respondent’s own commercial Web sites, BYTESTREET.COM and SOFTWAREHOUSE.COM (hereinafter referred to collectively as "SOFTWAREHOUSE.COM"). SOFTWAREHOUSE.COM is a commercial Web site where the Respondent offers for sale other companies’ software products that compete with the Complainant’s products.

The Respondent is clearly using the domain name myoracle.com to attract, for commercial gain, Internet users to its Web site by creating a likelihood of confusion regarding whether the Complainant is the source, sponsor, affiliate or endorser of its Web site. National Football League Properties, Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000) The Respondent is trading on the goodwill in the Complainant’s ORACLE mark and has used the domain name myoracle.com to divert users trying to reach the Complainant’s Web site to Respondent’s SOFTWAREHOUSE.COM Web site, where the Respondent sells competing software products manufactured by companies other than the Complainant. While this initial confusion may have been dispelled upon reaching the Respondent’s Web site, the Respondent has nonetheless gained valuable Web site traffic from the use of the myoracle.com domain name. Id.

The Respondent has recently claimed an intent to use the myoracle.com domain name for a Web site involving prediction of consumer behavior. However, the facts show that this is a mere pretext created only after the Complainant contacted Respondent regarding the unauthorized use of myoracle.com. Moreover, the Respondent has not taken any steps towards establishing such a site. In addition, the Respondent has not offered any reasonable explanation for the choice of myoracle.com as the name for a proposed consumer behavior site. See Madonna v. Parisi D2000-0847 (WIPO Oct 12, 2000) (discounting the Respondent’s contention that it used MADONNA.COM in its ordinary dictionary meaning, i.e., the Virgin Mary, for an adult entertainment site). The only plausible explanation for the Respondent’s choice of myoracle.com is to attract users to the Respondent’s own Web site by trading on the fame of the Complainant’s mark. Id. Accordingly, the Respondent has no legitimate rights to use the mark ORACLE or the domain name myoracle.com.

As discussed above, the Respondent is using the confusingly similar domain name myoracle.com in order to divert Internet users seeking the Complainant’s site to the Respondent’s site. By doing so, the Respondent is trading on the Complainant’s goodwill in the ORACLE mark and creating a strong likelihood of confusion about the source, sponsorship, affiliation, or endorsement of the Respondent’s Web site. Thus, the Respondent has already succeeded in its apparent purpose of using the ORACLE mark to attract users to its site for commercial gain. Yahoo! Inc. et al. v. Data Art Corp., et al., D2000-0587 (WIPO Aug. 10, 2000) National Football League Properties, Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000). The Respondent’s conduct constitutes bad faith under ICANN Policy ¶ 4(b)(iv).

The finding of the Respondent’s bad faith is even further reinforced by the evidence of other "my[trademark].com" domain names registered by the Respondent, many of which include well-known trademarks of third parties. The Respondent has acted in bad faith by engaging in a pattern of registering domain names comprised of famous marks to which the Respondent has no legitimate rights. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where the Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and web sites).

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name myoracle.com.