The Complainant is salesforce.com, inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Rezults Manager, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The Registrar transmitted by email to the Center its verification response on May 22, 2020, disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 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 an amended Complaint on May 26, 2020. The Center verified that the Complaint together with the amended Complaint (collectively, the “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was June 23, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed D. Brian King as the sole panelist in this matter on July 1, 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 A. The Parties The Complainant is salesforce.com, inc., founded in 1999 and headquartered in San Francisco, United States. According to the Complaint, the Complainant is the world’s leading commercial platform for customer relationship management (“CRM”); it provides CRM and other cloud-based software-as-a-service products to over 150,000 companies worldwide. The Complainant is said to have had USD 13.28 billion in revenue and 35,000 employees in 2019. Moreover, it was ranked the 46th most valuable brand by BrandZ and the 70th best brand by Interbrand in that same year (Annex 4 to the Complaint). The Respondent has not provided the Panel with any information on its history or activities. B. The Mark The Complainant has traded under the SALESFORCE and SALESFORCE.COM marks since 1999. Starting in 2003, the Complainant registered those marks in the United States and other jurisdictions. These registrations include but are not limited to the following (Annex 5 to the Complaint): Trademark Jurisdiction Registration Date Registration Number SALESFORCE.COM United States February 4, 2003 2,684,824 SALESFORCE.COM International Registration, designating several jurisdictions March 5, 2004 0831947 SALESFORCE United States July 5, 2005 2,964,712 SALESFORCE International Registration, designating several jurisdictions March 14, 2006 0910077 SALESFORCE United States September 5, 2006 3,138,749 SALESFORCE United States September 12, 2006 3,141,697 SALESFORCE United States October 31, 2006 3,164,978 SALESFORCE.COM United States April 10, 2012 4,126,474 The Complainant also owns numerous domain names that incorporate its marks, including The Domain Name was registered on May 5, 2020. It does not resolve to a website, but the evidence shows that it was used to send emails from the extension “@salesforcoe.com” (Annex 10 to the Complaint). These emails instruct their recipients to make payment on purported invoices to designated bank accounts (Id.). 5. Parties’ Contentions A. Complainant The Complainant submits that the Domain Name is confusingly similar to its registered trademarks. The Complainant argues that the Domain Name simply inserts the letter “o” into its SALESFORCE and SALESFORCE.COM marks, and appends the “.com” generic Top-Level Domain (“gTLD”) to the former. These additions, in the view of the Complainant, do not distinguish the Domain Name from the Complainant’s registered marks. The Complainant next submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to use its marks in any way, nor is the Respondent commonly known by a name corresponding to the Domain Name. On the contrary, according to the Complainant, the Respondent is using the Domain Name to transmit emails, appearing to come from the Complainant, seeking payment of non-existent invoices. This is said to constitute fraud, and such behavior cannot constitute a bona fide offering of goods or services. Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. Specifically, the Complainant asserts that the Respondent’s conduct meets paragraph 4(b)(iv) of the Policy, i.e., that the Respondent has used the Domain Name to attempt to achieve illicit financial gain by creating confusion with the Complainant’s business and marks. The Respondent plainly knew of the Complainant’s rights in the SALESFORCE and SALESFORCE.COM marks when registering and using the Domain Name, the Complainant says, given the international reputation of its brand and the Respondent’s use of the Domain Name to impersonate a representative of the Complainant. The Complainant adds that fraudulent activity of this kind is, in any event, manifest proof of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above. Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar The Domain Name wholly incorporates the Complainant’s SALESFORCE.COM and SALESFORCE marks, with the addition of the letter “o” to both and the “.com” gTLD to the latter. This insertion of the letter “o” into the Complainant’s marks creates a word with no natural meaning. The Domain Name could be formed by a typographical error when typing the Complainant’s actual marks. Previous UDRP panels have held that the addition of letters in this manner does not prevent a finding of confusing similarity with a complainant’s mark (see, e.g., Sidestep, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2007-0550; Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170). Consistent with these prior holdings, the Panel finds that the addition of the letter “o” does not eliminate the confusing similarity between the Domain Name and the Complainant’s SALESFORCE and SALESFORCE.COM marks. The same conclusion holds with respect to the addition of the gTLD “.com” to the SALESFORCE mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s marks. B. Rights or Legitimate Interests Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d v.WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading,WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the Respondent to prove that it does have rights or legitimate interests in respect of the disputed domain name. The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that it has no connection to the Respondent and has not given the Respondent permission to use its registered trademarks in any way. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name. In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) of the Policy is present here. The Complainant has demonstrated that its marks are well-known globally, and therefore the Respondent must have had at least constructive knowledge of the Complainant’s rights in the marks when registering the Domain Name. Indeed, there is strong evidence of actual knowledge on the Respondent’s part. The Domain Name appears to be a mere intentional misspelling of the Complainant’s marks, with no other natural meaning. The Complainant has likewise demonstrated to the Panel’s satisfaction that the Domain Name is being used to send emails seeking illicit payment of false invoices (Annex 10 to the Complaint). This scheme relies on credulity derived from Internet users mistaking the Domain Name for the Complainant’s marks. The necessary conclusion is that the Respondent has attempted to profit commercially by attracting Internet users through the creation of a likelihood of confusion with the Complainant’s SALESFORCE and SALESFORCE.COM marks. These circumstances satisfy paragraph 4(b)(iv) of the Policy and sufficiently establish bad faith registration and use on the Respondent’s part. Accordingly, the Panel finds that the Complaint succeeds with respect to the third element under paragraph 4(a) of the Policy as well. 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 Domain Name, D. Brian King
Sole Panelist
Date: July 15, 2020
Full & Egal Universal Law Academy