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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oracle International Corporation v. Contractors Network Limited
Case No. D2008-1493
1. The Parties
The Complainant is Oracle International Corporation, of the United States of America, represented by Nabarro, LLP, United Kingdom of Great Britain and Northern Ireland (вАЬThe United KingdomвАЭ).
The Respondent is Contractors Network Limited, of the United Kingdom, represented by Wedlake Bell, of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <oraclecontractors.com> (the вАЬDomain NameвАЭ) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on October 1, 2008. On October 3, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On October 3, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ or вАЬUDRPвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
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 October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. Pursuant to Rules, paragraph 5(d), the Center extended the time for the Respondent to file a Response, to November 4, 2008. The Response was filed with the Center on November 4, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on November 20, 2008. 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 wholly-owned subsidiary of Oracle Corporation (вАЬOracleвАЭ), one of the worldвАЩs largest software companies. According to the Complaint, Oracle develops, manufactures, markets, distributes and services database and middleware software and applications software. The Complainant is the owner of certain intellectual property rights used by the Oracle Group in its business, including certain registered trademarks which are used by Oracle under license from the Complainant.
OracleвАЩs customers range from large organizations to small businesses, and Oracle sells its software and services directly to end consumers as well as through intermediaries. Many of OracleвАЩs products require specialized expertise for their installation, configuration, operation and maintenance, and much of that expertise is provided by third party contractors. Oracle supports a network of such third party service providers known as вАЬpartner affiliatesвАЭ. Qualified third parties can be accredited as official Oracle partners.
Oracle operates its principal website at вАЬwww.oracle.comвАЭ, and that website is used to offer online sales of OracleвАЩs products, and to provide product information and updates. Oracle also organizes an annual conference called the Oracle Open World exhibition, where thousands of Oracle professionals present and learn the latest in Oracle-related news, products, techniques and trends. The attendees at the Oracle Open World exhibition are said to include вАЬcontractors being individuals who offer services related to Oracle products on a contract basisвАЭ.
The ComplainantвАЩs Trademarks
The Complainant is the proprietor of the mark ORACLE, registered in the United Kingdom in international classes 16, 35, 36, 41, and 42. The application for registration in classes 16, 35, 36, and 41 was filed on March 2, 1994, and that application proceeded to registration on December 15, 1995. The class 35 registration covers вАЬtechnical assistance to businesses in the field of computers, computer software, database development and design, information processing and management вА¶ management consulting and business management assistance services relating to computers, computer software and computer systemsвАЭ.
The application for registration in international class 42 was filed on October 1, 1986, and proceeded to registration on August 3, 1990. The specification covers вАЬcomputer design services; feasibility study services relating to computers and to computer software; computer software consultancy services; information services relating to computersвАЭ.
The Complainant also holds a Community Trademark Registration for the word mark ORACLE. The Community Trademark Application was filed in September 2002, and registered in June 2004. The Complainant has also produced a list of applications for, and/or registrations of, the mark ORACLE in numerous other jurisdictions, but has not provided proof of the registrations in these other jurisdictions.
The Complainant says that Oracle has been active in the United Kingdom since at least as early as 1986, and that a significant proportion of OracleвАЩs overall revenues is derived from the United Kingdom. (The Respondent disputes that contention, saying that the Complainant has not provided any evidence that Oracle conducts business in Europe, or indeed that the Complainant is a subsidiary of, or otherwise connected with Oracle. The Respondent also says that there is no evidence of the Complainant having used the mark ORACLE on or in relation to the goods and services for which that mark has been registered.)
The Domain Name
The Domain Name was registered on December 12, 2000. Evidently the Respondent was not the first registrant, because the Complainant has produced an extract from the United Kingdom Companies Office register showing that the Respondent was only incorporated in September 2001. The Domain Name resolves to a website at вАЬwww.oraclecontractors.comвАЭ (the вАЬRespondentвАЩs websiteвАЭ), and the Complainant has produced extracts from the RespondentвАЩs website printed on August 28, 2008. The Panel has reviewed these extracts, and has himself visited the RespondentвАЩs website (on November 27, 2008).
The RespondentвАЩs Website вАУ Content
The RespondentвАЩs website is prominently headed вАЬGlobal Oracle Contractors NetworkвАЭ. On the left hand side of each web page, there appears in a rectangle the expression вАЬORACLE contractors.comвАЭ, with вАЬORACLEвАЭ in much larger font than the expression вАЬcontractors.comвАЭ, which is printed in lower case lettering. The RespondentвАЩs website appears to be focused solely on Oracle products. It does not appear to contain any third party advertising.
The вАЬAboutвАЭ page of the RespondentвАЩs website refers to the RespondentвАЩs operation as a вАЬGlobal Oracle Contractors NetworkвАЭ, with a 100% focus on OracleвАЩs E-Business SuiteвАЭ. The business was described in the following terms:
вАЬ- We are operated by Oracle Applications Contractors with 11 offices worldwide.
- We offer Contractor Resourcing with access to over 10,000 pre-qualified Oracle Applications Contractors through our local offices.
- We have an innovative and cost-effective model for Implementations & Upgrades вАУ our вАЬHybrid TeamвАЭ solution.
- We are able to offer access to Global Resolution Groups for ad hoc work from as little as 15 minute increments.
- We provide the only global Oracle specific job search engine with a view of 10,000 + Oracle specific roles.
- We interact with over 15,000 client personnel involved with the Oracle E-Business Suite.
- We promote a community spirit through an Apps Blog, with 50+ Regional Authors that produce 20 articles a month.
- We are a Publishing House for White Papers authored by Oracle Contractors and distribute these free, to clients and Contractors alike.
- We offer access for training and demonstration of the latest release there and online Vision environment at no cost.
- We offer Oracle contractors special membership to a network of Oracle User Groups, under our umbrella, at a discounted rate.
- We exhibit & present at all Regional Oracle Conferences, worldwide as well as local Special Interest вА¶вАЭ
The вАЬAboutвАЭ web page said that the RespondentвАЩs network had been established in 1999, and that many of the RespondentвАЩs directors had been involved in some of the first Oracle ERP implementations in the early-to-mid 1990вАЩs. The web page described the Respondent as operating in five specific service areas, which included вАЬE-Business Suite Applications, Database & Application Development, and Enterprise Performance Management & Business IntelligenceвАЭ.
On the вАЬPhilosophyвАЭ page on the RespondentвАЩs website, the Respondent noted that вАЬthe most experienced and knowledgeable Oracle applications consultants exist in the Contractor spaceвАЭ. The notes on the вАЬPhilosophyвАЭ web page went on to express the view that little had been done thus far to pro-actively showcase the skills of the contractor group to the wider Oracle Applications community, and that the RespondentвАЩs website would, among other things, promote вАЬour fellow Contractors to a far wider audience than previously possibleвАЭ.
A вАЬStart officeвАЭ web page on the RespondentвАЩs website invited вАЬlike minded Oracle ContractorsвАЭ with entrepreneurial spirit, the ability to network and promote the global business and services, to contact their nearest regional office.
In addition to providing pages intended for the community of вАЬOracle ContractorsвАЭ, the RespondentвАЩs website also offered services to end-users of Oracle software products, including access to the RespondentвАЩs вАЬformal network of Oracle E-Business Suite Contractors that offers experience and skills вА¶ across the Oracle Product DomainвАЭ. The service was said to be aimed at clients that required вАЬad hoc work remotely in 15 minute increments, and/or ad hoc days on site вАУ 24 x 7 x 365 as well as the skills and experience this Network can offer вА¶.вАЭ
There were technical papers, described as вАЬWhite PapersвАЭ posted on the RespondentвАЩs website, and a section for blog entries. There was also a вАЬResourcingвАЭ section, where a client could log in to inform the network of its particular need for an Oracle contractor, or obtain more information relating to the services offered.
The Disclaimer on the RespondentвАЩs Website
The Complainant noted in its Complaint that the Respondent had posted a small disclaimer in light grey font at the bottom of the RespondentвАЩs website, immediately following a copyright claim. The wording of the disclaimer was:
вАЬOracleContractors.com is not affiliated to Oracle Corporation. To visit OracleвАЩs website go to www.oracle.comвАЬ.
That disclaimer was still on the RespondentвАЩs website when the Panel checked the RespondentвАЩs website on November 27, 2008. In addition, however, the Respondent had added immediately below the prominent heading вАЬGlobal Oracle Contractors NetworkвАЭ at the top of each page of the RespondentвАЩs website, the following words:
вАЬThis website is not affiliated to Oracle CorporationвАЭ.
Metatags/Keywords associated with the RespondentвАЩs Website
The Complainant asserts that a Whois extract for the Domain Name indicates that the Respondent has been using as metatags and keywords the expressions вАЬOracle ContractorsвАЭ, вАЬSAP ContractorsвАЭ, and вАЬICE GroupвАЭ. The Complainant explains that SAP is one of its competitors in the enterprise software market, and that ICE Group appears to be a related consulting business which also specializes in Oracle products. The Respondent owns the domain name <sapcontractors.com> (the вАЬSAP domain nameвАЭ), and the SAP domain name points to a website that is in a format which is virtually identical to the RespondentвАЩs website, with the word вАЬOracleвАЭ replaced with вАЬSAPвАЭ. The SAP domain name was registered by the Respondent on August 17, 2005.
The Complainant has also produced evidence showing that the Respondent owns the domain name <ice-group.com>, and that the Respondent operates a website at this domain name. The Complainant has produced extracts from the website at вАЬwww.ice-group.comвАЭ (the вАЬICE Group websiteвАЭ), which appear to show that вАЬICE GroupвАЭ is a collection of businesses consulting in relation to OracleвАЩs products. The contact details for вАЬAmericaвАЭ, вАЬEMEAвАЭ, and вАЬAsia PacificвАЭ offices provided at the ICE Group website, are the same as those provided respectively for those regions on the RespondentвАЩs Website.
(The Respondent says that it never authorized the use of these metatags on the RespondentвАЩs website, and only became aware of them when it received the Complaint in this proceeding. The Respondent says that it has checked earlier versions of its website (on the website at вАЬwww.archive.orgвАЭ) and noted that between October 2001 and August 2005 the metatags referred to by the Complainant were not present. They were present between September 2005 and October 2006, but have not been present on the RespondentвАЩs website after October 2006. The Respondent says that it did not know of their presence, and вАЬcan only assume that the independent website design firm incorrectly included these meta-keywords in a misguided attempt to be helpfulвАЭ. The Respondent also says that the ComplainantвАЩs reference to Ice Group Limited is incorrect. It says that ICE Group is an unconnected business operated by a company called I.C.E. Solutions Limited, and that, again, the metatag was erroneously entered on the RespondentвАЩs website by the independent website designer. The Respondent says that ICE Solutions Limited is run independently of the Respondent, and that there are no links or references to it on the RespondentвАЩs website.)
The Emergence of the Dispute and the Pre-Commencement Correspondence
The Complainant says in its Complaint that the Respondent has participated in Oracle-related trade shows and events using вАЬoraclecontractors.comвАЭ branding, including attendance at conferences operated by the United Kingdom Oracle User Group, a third party service that disseminates information about Oracle products, and regularly holds conferences and seminars.
The Complainant says that it first became aware of the RespondentвАЩs activities in December 2007, after it saw one of the RespondentвАЩs displays at a United Kingdom Oracle User Group event.
The ComplainantвАЩs representatives sent a cease and desist letter to the Respondent on December 11, 2007. In this letter, the RespondentвАЩs representative referred to the ComplainantвАЩs trademark registrations for the mark ORACLE, and sought the usual undertakings relating to the cessation of use of the ORACLE mark and the cancellation (or transfer to the Complainant at no cost) of the registration of the Domain Name. The letter acknowledged the widespread use of Oracle products, and the fact that that widespread use occasioned a number of opportunities for third party service providers to offer specialist services relating to Oracle products. The ComplainantвАЩs representative noted in the letter: вАЬYour business appears to be one suchвАЭ. The letter advised that, while Oracle accepted that a business may provide consulting or advice regarding its products, the business could not (when so doing) use вАЬOracleвАЭ in its name. Such a use was said to suggest that the business had a particular connection, association, or affiliation with Oracle.
There followed some communications between the ComplainantвАЩs representative and the Respondent (including some without prejudice communications which have not been provided to the Panel), but the parties were unable to reach any resolution of the ComplainantвАЩs claims. This administrative proceeding followed when the Complainant did not receive any reply (which it regarded as acceptable) to a final warning letter sent by its representatives on August 5, 2008.
The RespondentвАЩs Description of its Services
For its part, the Respondent characterizes the services which it provides through the RespondentвАЩs website and through other communication channels, as the provision of вАЬrecruitment servicesвАЭ. It asserts that it is not itself a contractor, and does not supply Oracle consultancy services.
The Respondent says that it commenced trading in September 2001, and that it has always used the Domain Name in connection with its business. It says that it is not competing with Oracle or its partner affiliates. It explains the purpose of its website as being to provide a platform for individual Oracle contractors to showcase their individual skills in Oracle products to their peers and potential clients. The Respondent says that, in 2005, it decided that it could provide the same recruitment services for the SAP market. It purchased the SAP website, and uses the SAP website in connection with recruitment services for SAP contractors. The Respondent says that both websites deal in recruitment, but they serve different markets and are not linked to each other.
Additional Evidence Produced by the Respondent
The Respondent says that there are many independent contractors who have expertise with OracleвАЩs products, while others are expert with SAP products. The contractors refer to themselves and are known as вАЬOracle contractorsвАЭ, or вАЬSAP contractorsвАЭ, as those terms describe their technical expertise and their independent status. The Respondent produced Google searches showing only four hits on a search run on the expression вАЬOracle independent contractorsвАЭ, compared with 5,920 hits on a search run on вАЬOracle contractorвАЭ, and 15,400 hits on вАЬOracle contractorsвАЭ. The Respondent also produced extracts from various online job recruitment sites, which contained click-on links such as: вАЬOracle Contractor Needed!вАЭ, or вАЬOracle ContractorвАЭ. An article from a website at вАЬwww.technojobs.co.ukвАЭ headed вАЬOracle Contractor JobsвАЭ, referred to вАЬOracle contractorsвАЭ and вАЬOracle contractor jobsвАЭ. Generally speaking, it appears from the material the Respondent has produced that the expression вАЬOracle contractorвАЭ has been used to describe a range of professional workers, including Oracle systems analysts, Oracle systems architects, Oracle systems developers, and Oracle program directors.
There appear to be numerous Oracle blog sites, and the Respondent produced copies of some (e.g. the website at вАЬwww.oracleappsblog.comвАЭ, headed вАЬA day in the life of an Oracle Applications ConsultantвАЭ). Another was the website at вАЬwww.oracle-base.comвАЭ. The Respondent says that almost all are unofficial blogs.
The Respondent says that Oracle provides its own bloggersвАЩ forum at вАЬwww.blogs.oracle.comвАЭ, and that on that site (which is connected to OracleвАЩs principal website at вАЬwww.oracle.comвАЭ) there is a link to the RespondentвАЩs own blog on the ComplainantвАЩs website. The Respondent says that that link was added by a senior director in OracleвАЩs Applications Technology Integration Group, Mr. Steven Chan, and that Mr. Chan contacted the Respondent in January 2007 congratulating it on the RespondentвАЩs website and referring to the link from the Oracle bloggersвАЩ forum site.
The Respondent produced a copy of the email from Mr. Chan. It was sent from an email address at the Oracle principal website, and dated January 30, 2007. In the email, Mr. Chan noted that he had only recently discovered the RespondentвАЩs website. He said that he was impressed with the range and quality of the RespondentвАЩs coverage so far, and passed on his congratulations to the RespondentвАЩs editorial team.
The Respondent says that it had been in contact with Oracle regarding the supply of Oracle contractors, from as early as 2004. The Respondent has produced certain emails written between January 31, 2006 and May 23, 2006, which appear to show that the Respondent was indeed in direct communication with Oracle during that period. One email, from January 2006, included the sentence: вАЬMy name is Jason Howlett and I am the MD from Contractors Network вАУ www.oraclecontractors.comвАЭ. Subsequently, there was email correspondence between Andrea Toscani of the Respondent and OracleвАЩs service manager in Italy. Much of this correspondence is in Italian, and since the Respondent has not provided a translation as might be expected or indeed prudent, the most the Panel can conclude from it is that, at least in October of 2008 when these emails were written, Oracle appears to have been in regular email contact with the Respondent, using an email address at the Domain Name, on what might be supposed to be ordinary operational matters (and with no apparent discussion by Oracle regarding the Domain Name).
The Respondent has produced a list of company names registered in the United Kingdom, which commence with the word вАЬOracleвАЭ. The list runs to approximately 5 to 6 single-space typed pages. The Respondent asserts that numerous companies on the list have no connection with the Complainant. At annex 18 to the Response, the Respondent also produced extracts from the database maintained by the United Kingdom Intellectual Property Office, showing numerous ORACLE trade or service marks, covering a wide variety of goods and services, none of which appear to be related to the Complainant or Oracle. In similar vein, the Respondent has produced a list of a substantial number of domain names containing the word вАЬoracleвАЭ. These include <oracleexpertise.com>, <oracledatabasetips.com>, and <oracledbasupport.co.uk>. The Respondent asserts that none of those domain names are owned or operated by the Complainant Oracle. The Respondent asserts that an Internet search on the word вАЬoracleвАЭ produces 101 million hits.
The Respondent produced (annex 22 to the Response) a declaration signed by a forensic linguist, Mr. John Olsson. Mr. Olsson was retained by the Respondent to assess the level of linguistic similarity between the Domain Name and OracleвАЩs principal domain name, <oracle.com>. Mr. Olsson says that he has been involved вАЬin the analysis of language for legal purposesвАЭ, for 15 years. Mr. OlssonвАЩs declaration/report runs to 34 pages (including annexures and appendices). For present purposes, it is sufficient to note that, in Mr. OlssonвАЩs opinion, the use of the element вАЬoracleвАЭ in the Domain Name has little relevance to Oracle the corporation, because it simply describes what the Respondent does: namely, supply contractors with Oracle expertise to end-user companies and consultancies.
Finally under this heading, the Respondent produced copies of a Yahoo! UK-Ireland search on the expression вАЬoracle contractorвАЭ. The name вАЬOracle ContractorsвАЭ, with a click-on link to the RespondentвАЩs website, was the first result. The Yahoo! results printout contained the sentence: вАЬContractors Network Ltd., OracleContractors.com is not affiliated to Oracle Corporation ...вАЭ. Similarly, a Google search on вАЬoracle contractorвАЭ, showing a reference to the Respondent as the first result, contained in the printout a disclaimer stating that вАЬContractors Network Limited, OracleContractors.comвАЭ is not affiliated to Oracle.
5. PartiesвАЩ Contentions
The Complainant contends as follows:
1. The Domain Name is confusingly similar to the ORACLE mark in which the Complainant has rights. The leading word вАЬoracleвАЭ is the core identifying element of the Domain Name, and the word вАЬcontractorsвАЭ is no more than a well-known descriptor in the computer software industry to describe an individual offering services on a вАЬcontractвАЭ basis to install or repair software. When a domain name incorporates a complainantвАЩs trademark in its entirety, the domain name is confusingly similar to that mark regardless of the addition of any other words (citing Volvo Trademark Holding AB v. Peter Lambe,
WIPO Case No. D2001-1292). Where (as in this case) what is added is a descriptive term which describes services that the complainant also provides, the likelihood of confusion is increased (citing Dell Inc v. Intercardnetwork/Jonathan Jairo Aguirre Huertas,
WIPO Case No. D2004-0788). And confusing similarity is regularly found in relation to disputed domain names where a descriptive term has simply been appended to a famous mark. The вАЬ.comвАЭ suffix is to be ignored in the comparison between a complainantвАЩs mark and the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) The Respondent is not a licensee of the Complainant, or in any other way connected with the Complainant. The Complainant has not permitted the Respondent to use any domain name incorporating its ORACLE trademark.
(ii) The Respondent was obviously aware of the ComplainantвАЩs ORACLE mark at the time it registered the Domain Name, as it offers services in relation to OracleвАЩs products.
(iii) The RespondentвАЩs only purpose in registering the Domain Name, was to attract Internet users to the RespondentвАЩs website by trading on the fame of the ComplainantвАЩs ORACLE mark. In those circumstances, the Respondent cannot claim that it has been using the Domain Name in connection with a bona fide offering of goods or services.
(iv) In seeking to capitalize on the ComplainantвАЩs ORACLE mark and take unfair advantage of its rights, the Respondent has acted in bad faith, and cannot contend that its actions have been in connection with a bona fide offering of services (citing Barnes & Noble College Bookstores Inc v. Leasure Interactive,
WIPO Case No. D2001-1216).
(v) The RespondentвАЩs services offered through the RespondentвАЩs website compete with those of Oracle and the members of OracleвАЩs authorized partner network. Offering services in a competing field of endeavor cannot constitute bona fide commercial or fair use sufficient to legitimize any interest in the Domain Name.
(vi) The RespondentвАЩs use of the ORACLE mark in the Domain Name will confuse potential customers into thinking that the Complainant is the source of, or is associated with or has sponsored, the RespondentвАЩs website. While the Respondent may say that it is offering services in relation to OracleвАЩs goods, it is not entitled to appropriate the ComplainantвАЩs trademark in a domain name, business name or any other identifier (citing Volvo Trademark Holding AB v. Peter Lambe, supra). Even members of OracleвАЩs official partner network are specifically prohibited from making such uses of the ORACLE mark.
(vii) The disclaimer posted on the RespondentвАЩs website, in very light grey font at the bottom of the page, cannot cure the initial and illegitimate diversion of Internet traffic.
(viii) The Respondent was not commonly known by the Domain Name prior to the date of registration of the Domain Name.
(ix) This is not a case where a legitimate reseller is dealing in goods previously trademarked and sold with a complainantвАЩs consent. Rather, the Respondent is using the ComplainantвАЩs trademark to offer directly competing services and to pull Internet users to the RespondentвАЩs website and away from OracleвАЩs services and partner network.
3. The Domain Name was registered and is being used in bad faith, having regard to the following factors:
(i) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the RespondentвАЩs website, by creating a likelihood of confusion with the ComplainantвАЩs marks as to the source, sponsorship, affiliation, or endorsement of the RespondentвАЩs website or of products or services on the RespondentвАЩs website. The Respondent has selected a domain name which is well suited to trade on the fame of the ComplainantвАЩs ORACLE mark and cause confusion among Internet users, and the Respondent was clearly aware of the ORACLE mark when it registered the Domain Name.
(ii) The RespondentвАЩs ongoing use of the Domain Name is also likely to disrupt the ComplainantвАЩs businesses by damaging the reputation and distinctiveness of its ORACLE mark. The disclaimer on the RespondentвАЩs website cannot cure the RespondentвАЩs bad faith registration.
(iii) The Domain Name was registered primarily for the purpose of disrupting the business of a competitor. Oracle has offered identical services to those promoted by the Respondent at the RespondentвАЩs website, for many years. Oracle also supports a network of partner businesses and organizations who offer services in relation to its products. The Respondent has chosen the Domain Name, and set up the RespondentвАЩs website, in a fashion calculated to mimic OracleвАЩs own support of its partners as well as draw business from both Oracle and its partners. The Domain Name was therefore registered in bad faith primarily for the purpose of disrupting the business or businesses of a competitor or competitors.
(iv) The Domain Name was registered to prevent the Complainant from reflecting the ORACLE mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct. The Complainant refers in that regard to the RespondentвАЩs registration of the SAP domain name. The Respondent appears to be engaged in a pattern of registering вАЬ.comвАЭ domain names incorporating world-famous software brands and the descriptive word вАЬcontractorsвАЭ, with a view to taking unfair advantage of the reputation in those brands and to create commercial benefit for itself.
The Panel will not set out all of the RespondentвАЩs contentions, which were lengthy and repetitive. It is enough to set out the essence of the RespondentвАЩs contentions, which were as follows:
1. The term вАЬOracle contractorsвАЭ is a customary usage in the bona fide and established practices of the trade.
2. The Respondent has always used the Domain Name in connection with its business, which is вАЬlabor recruitmentвАЭ. The Domain Name is simply descriptive of the services that the Respondent provides, namely the provision to end-user businesses of individual contractors who are skilled in working with Oracle products.
3. The metatags referred to by the Complainant were not associated with the RespondentвАЩs website by the Respondent, and they have not been present since November 2006.
4. Oracle has been aware of the RespondentвАЩs existence and of the RespondentвАЩs website at the Domain Name, since 2004. Oracle never complained about the RespondentвАЩs website, and indeed congratulated the RespondentвАЩs editorial team on the quality of the RespondentвАЩs website.
5. None of the ComplainantвАЩs rights under the registered United Kingdom and Community Trademarks cover recruitment services. Oracle does not supply recruitment services, and accordingly does not have any rights in them.
6. Through use, вАЬoracleвАЭ has come to be a common term used to describe a wider operating environment implemented by end-users, so that вАЬoracleвАЭ is no longer an indicator of origin of the products themselves but is a reference to an amalgam of products (some Oracle, some not) implemented by the end-user companies. вАЬOracleвАЭ has therefore become generic, and no longer acts as a trademark.
7. The Domain Name is not confusingly similar to the ComplainantвАЩs ORACLE mark. The visual, aural and conceptual similarities between the Domain Name and the ComplainantвАЩs trademark are not sufficient to meet the вАЬconfusingly similarвАЭ test. In fact, the word вАЬcontractorsвАЭ is the dominant feature of the Domain Name, as it is the longer word and contains more syllables. The word вАЬoracleвАЭ has little phonetic prominence, whereas вАЬcontractorsвАЭ is an instantly recognizable word with strong phonetic prominence. Furthermore, there are numerous companies in the United Kingdom which have the word вАЬOracleвАЭ as part of their company names, or as part of domain names used by them. Members of the public would not therefore be confused into believing that the RespondentвАЩs use of the Domain Name was a reference to Oracle.
8. The word вАЬoracleвАЭ in the Domain Name, used with the word вАЬcontractorsвАЭ, is a descriptive use of вАЬoracleвАЭ, not a trademark use. The addition of the word вАЬcontractorsвАЭ makes a crucial difference to the way the Domain Name is read, and it distinguishes it from the ComplainantвАЩs mark and shows that the Domain Name is not affiliated with the trademark owner. The addition of descriptive words regularly serves to differentiate a disputed domain name from a complainantвАЩs mark (see Privilege Insurance Company Limited v. Warren Snook,
WIPO Case No. D2002-0870).
9. The Respondent is making normal and fair use of the term вАЬOracle ContractorsвАЭ.
10. The Respondent made legitimate use of the Domain Name for 7 years before it was notified of the Complaint. In that time, Oracle has been using the RespondentвАЩs services, and has had a link to the RespondentвАЩs website.
11. The Respondent uses the Domain Name only in respect of recruitment services for Oracle contractors. The reference to an Oracle contractor, is a reference to an individual who supplies services only in respect of Oracle products. It would be difficult, if not impossible, to describe the RespondentвАЩs services without making reference to Oracle (citing DaimlerChrysler AG v. Donald Drummonds,
WIPO Case No. D2001-0160).
12. The RespondentвАЩs website has always accurately disclosed the RespondentвАЩs relationship with Oracle. In addition, the Respondent has recently given greater prominence to the disclaimer on the RespondentвАЩs website, by including it at both top and bottom of each page (with the hyperlink to OracleвАЩs website remaining). The Respondent intends to retain the disclaimers in the new positions. The use of the disclaimers is evidence of the RespondentвАЩs good faith.
13. Internet users are not misled into assuming that the RespondentвАЩs website is operated by Oracle or by a partner affiliate of Oracle.
14. The Respondent has not tried to corner the market in domain names containing the mark ORACLE. The Respondent has only registered one domain name containing the word вАЬOracleвАЭ.
15. The Respondent purchased the Domain Name for its own use, and it has never offered the Domain Name for sale to Oracle or its competitors. The Respondent was aware of Oracle when it purchased the Domain Name, but as it is operating in recruitment services, and as the use of the word вАЬoracleвАЭ in the Domain Name describes those services, there is no conflict with the use of вАЬoracleвАЭ in the Domain Name.
16. The Respondent has not engaged in any pattern of abusive registration. The registration of the SAP domain name in addition to the Domain Name is not sufficient to show a pattern (citing Telstra Corporation v. Ozurls,
WIPO Case No. D2001-0046). Furthermore, the SAP domain name is also descriptive of the services offered through the website at the SAP domain name.
17. The RespondentвАЩs ongoing use of the Domain Name will not disrupt the ComplainantвАЩs business. вАЬOracleвАЭ is a common noun used worldwide in thousands of names of companies, clubs, products, etc; and is in every day usage. There are over 2,300 domain names which start with the word вАЬoracleвАЭ, and a further 4,000 domain names have вАЬoracleвАЭ in their URLs. The Complainant owns an insignificant percentage of those URLs.
18. The Respondent has operated for 7 years using the Domain Name, and there has been no evidence of confusion.
6. Discussion and Findings
A. Preliminary Issue вАУ the Length of the Response
The Respondent produced numerous exhibits, including a statement running to20 pages, together with an additional 14 pages of appendices, from a forensic linguist. The forensic linguist described his instruction as being вАЬto assess the level of linguistic similarity between the web domain name www.oraclecontractors.com and the web domain name www.oracle.com вА¶вА¶.and to report on this question for a forthcoming World Intellectual Property Organization (WIPO) [administrative proceeding].вАЭ
The Panel can imagine circumstances where evidence from a forensic linguist might be helpful вАУ for example, if some issue were to arise over the meaning of a particular English expression (or made-up word) in some particular field or culture e.g. an expression used in rap music, or in the вАЬstreet languageвАЭ of gangs. But such cases are likely to be rare, and this case is certainly not one of them. Experienced panels, assisted by submissions from competent counsel, are well able to decide the meanings of ordinary English expressions and the extent to which they may or may not be confusingly similar to a complainantвАЩs trademark. Furthermore, where the expression which is at issue is a technical one in some field of science or industry, the most helpful evidence is likely to be from an expert in that particular field. As far as the Panel can see in this case, Mr. Olsson has no expertise in the computer industry. Much of Mr. OlssonвАЩs statement appears to have the character of submissions, rather than evidence on matters of fact, or on issues calling for an expression of expert opinion.
In the end, the Panel has been able to decide this case readily enough without recourse to Mr. OlssonвАЩs lengthy statement. However, the Panel thinks it appropriate to emphasize that, except in cases involving particularly unusual words or usages, it will usually be neither necessary nor helpful for parties to provide lengthy and detailed evidence from forensic linguists. That has been especially so in this case, where the Complainant had already acknowledged (in its Complaint) that вАЬthe term вАШcontractorsвАЩ is a well-known descriptor in the computer software industry to describe an individual offering services on a вАШcontractвАЩ basis to install or repair softwareвАЭ (Complaint, paragraph 6.1.4).
B. What the Complainant must prove - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
вАЬвА¶ 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.вАЭ
C. Identical or Confusingly Similar
The Respondent devoted some pages of its Response to an attempt to persuade the Panel that the Complainant does not have any relevant rights in the mark ORACLE (e.g. the submission that вАЬoracleвАЭ has become generic, and no longer acts as a trademark). The Respondent also pressed the argument that Oracle does not supply recruitment services (the RespondentвАЩs claimed line of business), and accordingly does not have any rights in them.
At the same time, the Respondent advised in its Response that, for the first 5 years of its operation, the Respondent used a disclaimer commencing with the words: вАЬOracle is a registered Trademark of Oracle Corporation вА¶.вАЭ The Response says that the Respondent intends to retain this disclaimer, and place it in a more prominent position.
The obvious contradiction between the wording of the disclaimer and the position the Respondent now takes on the ComplainantвАЩs rights in the ORACLE mark, is illustrative of the вАЬscattergunвАЭ approach adopted by the Respondent in its Response (i.e. every conceivable argument seemingly taken, regardless of its apparent merits).
The Complainant has quite clearly proved that it has registered rights in the mark ORACLE, in respect of certain computer-related products, both in the United Kingdom and in the European Union. Whether or not Oracle or the Complainant has rights in the mark ORACLE in respect of recruitment services, is neither here nor there in this part of the proceeding. This is not a trademark infringement action. All that is in issue under this part of the Policy, is whether or not the Complainant has rights in some trademark or service mark which is identical or confusingly similar to the Domain Name. If the Complainant proves that it does have such rights, the focus turns to the Respondent вАУ does the Respondent have a legitimate interest or right in the Domain Name? (Policy, paragraph 4(a)(ii) If the Respondent had no right or legitimate interest, the next question is: вАЬdid the Respondent register the Domain Name in bad faith, and has the Respondent used the Domain Name in bad faith?вАЭ (Policy, Paragraph 4(a)(iii)).
Once the Complainant has proved, as it has, that it is the proprietor of the registered mark ORACLE, the only remaining question under paragraph 4(a)(i) of the Policy is whether that mark is identical or confusingly similar to the Domain Name.
The Complainant emphasizes that the Domain Name incorporates the ORACLE mark in its entirety, and that many panel decisions under the Policy have regarded that factor as at least compelling evidence of confusing similarity, if not as being dispositive of the question. This Panel agrees that the incorporation of a complainantвАЩs trademark in a disputed domain name is often an important factor, but does not believe that it must inevitably lead to a finding of confusing similarity. For example, a hypothetical domain name <ribmat.com> would incorporate, in its entirety, the mark IBM, but it would appear to be difficult to say that such a domain name was confusingly similar to the IBM mark. (For the sake of clarity, the Panel adds that he has no idea whether or not such a domain name exists, and expresses no concluded view on the hypothetical confusing similarity issue that it would raise. The example is used simply to illustrate the PanelвАЩs proposition that it goes too far to say that incorporating a complainantвАЩs trademark in full in a disputed domain name will always lead to a finding of confusing similarity.) In the end, the panel has to decide the issue of confusing similarity on the facts of each case.
In this case, the Respondent has demonstrated that there are numerous users of the expression вАЬOracleвАЭ, both in domain names and in the names of companies and businesses. The Complainant itself refers to the United Kingdom Oracle UsersвАЩ Group, which it refers to as a вАЬthird party serviceвАЭ. There appear to be a vast number of other business users of the word вАЬOracleвАЭ who have no connection with the Complainant or Oracle.
The addition of the word вАЬcontractorsвАЭ does, in the PanelвАЩs view, somewhat lessen the significance of the fact that the ComplainantвАЩs mark has been incorporated in full in the Domain Name. That is because, on the evidence produced, the combined expression вАЬOracle ContractorsвАЭ refers to an identifiable group of people which may be distinct from Oracle itself. Such group would not necessarily have any contractual or licensing relationship with Oracle or with the Complainant. As the Complainant put it in the Complaint, the term вАЬcontractorsвАЭ is a well-known descriptor in the computer software industry to describe an individual offering services on a вАЬcontract basis to install or repair softwareвАЭ. The expression вАЬOracle ContractorsвАЭ would sensibly be understood by most people in the computer industry, as referring to (possibly independent) contractors (as just defined) who specialize in Oracle software.
On the other hand, OracleвАЩs partner affiliates could no doubt equally be described as вАЬOracle ContractorsвАЭ. The issue is not without difficulty, and the Panel is mindful of the comment frequently made in Panel decisions under the Policy that the onus of proof under paragraph 4(a)(i) of the Policy is not a particularly high one. On balance, the Panel would probably find that the Domain Name is confusingly similar to the ComplainantвАЩs ORACLE mark. In the event, however, that particular finding is not necessary, because in the PanelвАЩs view the Complainant has failed to make out its case under paragraph 4(a)(ii) вАУ that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
The consensus view of WIPO panels is summarized at paragraph 2.1 of the CenterвАЩs online document вАЬWIPO Overview of WIPO Panel Views on Selected UDRP QuestionsвАЭ, as follows:
вАЬA Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.вАЭ
In this case, the RespondentвАЩs principal contention is that it has used the Domain Name, prior to receiving any notice of the present dispute, in connection with a bona fide offering of services, namely the provision of вАЬrecruitment servicesвАЭ for customers looking for contractors with expertise working with Oracle software. The Respondent says that it has been using the Domain Name in its recruitment services business for approximately 7 years, and that, for at least part of that period, Oracle has been well aware of the Respondent and its use of the Domain Name and has acquiesced in that use. The production of the email correspondence from Mr. Steven Chan of the Complainant appears to bear out the latter contention.
The Respondent refers to the Panel decision in DaimlerChrysler A.G. v. Donald Drummonds, supra, where the disputed domain name was <mercedesshop.com>. The respondent in that case maintained a website at the disputed domain name, on which there was a discussion forum for mechanics and owners of the complainantвАЩs products. The respondent also offered genuine Mercedes parts and accessories for sale, which parts and accessories were obtained through fully authorized channels of distribution. The respondent also sold re-built and used parts through the website at the disputed domain name. The respondent included an appropriate disclaimer on the home page of his website, disclaiming any affiliation with the complainant.
The majority of the Panel in the DaimlerChrysler A.G. case noted that the disputed domain name and the name of the respondentвАЩs website (вАЬMercedesShopвАЭ) was descriptive of the business conducted there. The majority went on to say:
вАЬIt would be difficult, if not impossible for [the Respondent] to avoid altogether the use of the word вАШMercedesвАЩ вА¶ which [is] the normal term which, to the public at large, signify [the ComplainantвАЩs] cars.вАЩ - Volkswagenwerk Akpiengesellschaft v. Church, 4111F.2d 350 (9th Crir 1969)вАЭ.
Later in their decision in DaimlerChrysler AG, the majority said:
вАЬUnder the present facts, if the Panel were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and after market accessories could ever register a Domain Name descriptive of that business. The Policy was designed to deal only with the limited problem of cybersquatting. It was not designed to establish for the holder of a strong trademark a bar to entry of online competitors.вАЭ
The minority decision in the DaimlerChrysler A.G. case suggested that the majorityвАЩs вАЬlegitimate competitionвАЭ point could be met by the competitor registering a more generic domain name such as вАЬ<germanauto.com>, then disclaiming any affiliation to a specific manufacturer on its website.вАЭ
Pausing there, the Panel notes that he finds the majority view in the DaimlerChrysler AG case, rather more compelling than the view expressed by the minority panelist.
The Complainant refers to two cases on this issue, namely Volvo Trademark Holding AB v. Peter Lambe, supra, and Dell Inc v. Intercard Network/Jonathan Jiro Aguirre Huertas, supra. These cases were respectively concerned with the domain names <volvoexhausts.com>, and (in the Dell Inc case) <dellinspironrepair.com> and <dellspecialist.com>. No response was filed in either case. In the Volvo Trademark Holding AB case, the respondent was using the website at the disputed domain name in connection with his business of manufacturing and selling exhausts that inter alia could be used for Volvo cars and vehicles (i.e. the exhausts could also be used on other vehicles). In the Dell Inc case, the panel found that the respondentвАЩs repair services were not limited to Dell computers, and that the respondent had chosen the disputed domain name with a view to trading on the fame of the complainantвАЩs marks. The complainantsвАЩ complaints were upheld in both cases.
Since those cases were decided, there have been numerous panel decisions on the issue of a resellerвАЩs right to use a trademark ownerвАЩs trademark in a domain name pointing to a website at which the reseller sells the trademark ownerвАЩs goods or services. The differing approaches of panels on this issue, were helpfully summarized in Volvo Trademark Holding AB v. Auto Shivuk,
WIPO Case No. D2005-0447, where the Panel said:
вАЬThe Panel observes that there are different views as regards the question of the conditions under which authorized or non-authorized resellers or distributors have a legitimate interest to use as domain name the manufacturerвАЩs trademark in identical form or with the addition of descriptive elements.
Three views can be distinguished in the previous WIPO UDRP decisions:
(1) At one end of the spectrum, it is argued that the authorization to market the products under the trade name does not as a matter of principle constitute an authorization to use the manufacturerвАЩs trademark as a domain name or as part of a domain name. If the use of the domain name is not expressly granted, the right to market the trademark holderвАЩs products under the complainantвАЩs trademark merely establishes a right to use the trademark for the marketing of the trademark holderвАЩs products but not a more extensive right to use the trademark as a domain name (See Nokia Corporation v. Nokia Ringtones & Logos Hotline,
WIPO Case No. D2001-1101 - <worldnokia.com>, finding that a licensed reseller could only have a right to a domain name which included the trademark NOKIA if the trademark owner has specifically granted that right. (See Volvo Trademark Holding AB v. Peter Lambe,
WIPO Case No. D2001-1292 - <volvoexhausts.com>, finding that the manufacturer of вАШunoriginalвАЩ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but that this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.).
(2) The contrary opinion was upheld in a dispute between Milwaukee Electric Tool Corporation and one of its resellers concerning the domain name <milwaukeetool.com> (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774). The panel pointed out that it did not suggest a general rule regarding relationships between trademark holders and authorized distributors, but in the specific case held that a reseller who was entitled by contract to use the complainantвАЩs trademark in his advertising and had lawfully marketed the trademark holderвАЩs products over many years had a legitimate interest in the domain name and in any event was not using it in bad faith. Similar reasoning was applied in the Daimler Chrysler A.G. v Donald Drummonds decision (
WIPO Case No. D2001-0160, with dissent,), in which the holder of the domain name <mercedesshop.com> was admittedly not acting as a reseller but marketed spare parts and accessories on the Internet using a disclaimer, and for the this reason was regarded by the panel as a legitimate user of the domain name. Similar views have also been upheld by UDRP panels. (See Draw-Tite Inc. v. Plattsburg Spring Inc.,
WIPO Case No. D2000-0017 - <drawtite.com>; Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187 - <webergrills.com>; <webergrill.com>).
(3) The majority view lying between these two was first put forward in the case of Oki Data Americas, Inc. v ASD, Inc., a conflict between a US manufacturer of computer accessories and an authorized reseller (Oki Data Americas, Inc v. ASD, Inc.,
WIPO Case No. D2001-0903 - <okidataparts.com>). In the panelвАЩs view, the use of a manufacturerвАЩs trademark as a domain name by an authorized dealer or reseller is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- The site must accurately disclose the registrantвАЩs relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack,
WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc.,
WIPO Case No. D2002-0095 - <experiancredit.com>) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case,
WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin,
WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>).
This Panel follows the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent.вАЭ
Nowadays, the consensus of panel decisions on this issue, is that it will normally be appropriate for panels addressing the вАЬresellerвАЭ issue, to apply the four-step proposed by the panel in Oki Data Americas, Inc v. ASD Inc,
WIPO Case No. D2001-0903. In the PanelвАЩs view, there is no reason why that test should not be applied in this case. Although the Respondent is not reselling OracleвАЩs products, it is providing services which are effectively вАЬaftermarket accessoriesвАЭ to OracleвАЩs products (to borrow the expression used by the majority of the panel in the DaimlerChrysler A.G. case), and it would be difficult for the Respondent to describe its services in a domain name without including the word вАЬOracleвАЭ. For the purposes of the application of the Policy, the Respondent is effectively in the same position as a reseller of Oracle products would be.
Applying the Oki Data Americas, Inc test in this case, the Panel notes the following:
1. The Respondent does appear to be offering the relevant services. It is providing, through the RespondentвАЩs website, вАЬOracle contractorsвАЭ to end-users who need the services of independent contractors to maintain or service their Oracle software.
2. The Respondent appears to be providing services through the RespondentвАЩs website which are only related to the provision of вАЬOracle contractorsвАЭ to the market. The RespondentвАЩs website does not contain reference to the products of OracleвАЩs competitors, nor indeed to any other products which are not related to the provision of вАЬOracle contractorвАЭ services (the Panel does not see the provision of a discussion forum at the RespondentвАЩs website, or the publication of the white papers, as pointing to any different conclusion. They are sufficiently connected to the primary service the Respondent is providing through the RespondentвАЩs website, namely the provision to the market of independent contractors who are skilled (and up-to-date) in the installation and maintenance of Oracle software).
The RespondentвАЩs use of the website at the SAP domain name, and the metatag references to вАЬSAP ContractorsвАЭ, вАЬICE GroupвАЭ, and вАЬOracle ContractorsвАЭ, did briefly give the Panel some cause for pause. The Respondent said in the Response that those metatags must have been selected by its website designer, as they were not authorized by the Respondent. The Respondent said they had not been used since November 2006. That explanation seems to the Panel to be credible. There would have been little point in sending prospective customers for SAP contracting services to the RespondentвАЩs website, which deals only with Oracle products. It seems rather more likely that that particular metatag was intended to be employed in association with the unrelated website at the SAP domain name. The вАЬICE GroupвАЭ metatag does not incorporate or suggest the ORACLE mark in any way, and the use of an вАЬOracle ContractorsвАЭ metatag neither adds to nor subtracts from the argument: it is the same as the Domain Name itself, and if the Domain Name has been used in connection with a bona fide offering of services before notice of the present dispute, that will not be affected by the use of an identical metatag.
3. In the PanelвАЩs view, the RespondentвАЩs website does accurately disclose the RespondentвАЩs relationship with the Complainant and/or Oracle. A disclaimer has been posted at the foot of each page of the RespondentвАЩs website (and is now posted more prominently at the top of each page). The Panel did have some concerns over the prominence of the disclaimer as it was originally positioned, at the foot of each page. But the adequacy or otherwise of a disclaimer must be judged according to each particular situation. In this case, as in the DailerChrysler A.G. case, supra (dealing with a disputed domain name consisting of the complainantвАЩs trademark with the word вАЬshopвАЭ), it seems unlikely that any Internet user looking for the ComplainantвАЩs website would type in the expression вАЬoraclecontractorsвАЭ. Also in this case, the services being offered through the RespondentвАЩs website are likely to be used by business or professional customers, who will either already appreciate the independent status of the contractors available through the RespondentвАЩs website, or will spend sufficient time before any commitment is made, learning about the offered services (including the fact that they are not associated with or endorsed by Oracle). A number of additional factors support the PanelвАЩs view on the sufficiency of the disclaimer in this case. First, the Panel has already observed that the issue of confusing similarity between the Domain Name and the ComplainantвАЩs ORACLE mark, is finely balanced. That fact, together with OracleвАЩs own acknowledgements of the RespondentвАЩs website (e.g. in Mr. ChanвАЩs email) and its failure to make any complaint over the period since December 2000, suggest that there has probably been very little, if any, confusion, and that the disclaimer on the RespondentвАЩs website, coupled with the disclaimers which appear on the Google and Yahoo! search results lists, have been doing their work.
4. There is no suggestion in this case that the Respondent has been trying to corner the market for domain names incorporating the expression вАЬoracleвАЭ (or the longer expression вАЬOracle ContractorsвАЭ).
In the PanelвАЩs view, therefore, the Respondent has, on the evidence produced, brought itself within the four-step Oki Data Americas Inc test for bona fide use.
In conclusion, the Panel notes that the ComplainantвАЩs prima facie proof in this case has not been particularly strong. The issue of confusing similarity under paragraph 4(a)(i) of the Policy is marginal. Secondly, the ComplainantвАЩs statement that it only found out about the RespondentвАЩs use of the Domain Name in December 2007, appears to be clearly wrong. On January 30, 2007, Mr. Steven Chan of Oracle sent an email to the Respondent stating that he had вАЬonly recently discovered your siteвАЭ, and complimenting the RespondentвАЩs editorial team on the quality of the RespondentвАЩs website coverage. Mr. Chan went on to say that he had вАЬadded [the RespondentвАЩs] site to my blogrollвАЭ, and he gave the link to the relevant page on the principal Oracle website at вАЬwww.oracle.comвАЭ. It appears to the Panel that Oracle has been prepared to at least tolerate the continuing existence of the RespondentвАЩs website, for rather longer than the Complainant has been prepared to acknowledge in its Complaint. While that might not constitute consent to the RespondentвАЩs registration and use of the Domain Name, when considered with the other matters traversed in this part of this decision, the Panel is not persuaded that the Complainant has discharged its overall burden of proving that the Respondent lacks any right or legitimate interest in respect of the Domain Name.
The Complaint must therefore fail, and there is no need for the Panel to consider the issue of bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
Dated: December 4, 2008