The Complainant is Salesforce.com, Inc., United States of America (“United States or USA”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Angelo Bertoli, Italy. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 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 November 30, 2020. The Center verified that the Complaint together with the amended 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 December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021. The Center appointed Dawn Osborne as the sole panelist in this matter on January 13, 2021. 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 the owner of the mark SALESFORCE registered, inter alia, in the USA for customer relationship management services under no 76575119 since July 5, 2005. Its logo features the SALESFORCE mark in white on a blue cloud (“the Blue Cloud logo”). The Domain Name registered in 2020 has been used for phishing purposes where Italian customers of the Complainant have been invited to update account details on a web page using the Complainant’s Blue Cloud logo. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainant is the owner of the trademark SALESFORCE registered, inter alia, in the USA for customer relationship management services under no 76575119 since July 5, 2005. Its logo features the SALESFORCE mark in the Blue Cloud logo. The Domain Name registered in 2020 is confusingly similar to the Complainant’s trademark adding only two hyphens, the Italian word “Italia” and the Generic top-level domain (“gTLD”) “.com” none of which prevent said confusing similarity. The Respondent does not have any rights or legitimate interests in the Domain Name since it is not commonly known by it and is not authorised by the Complainant. The Domain Name has been used in connection with a phishing scam where the Complainant’s customers in Italy were contacted and invited to update the details of their account with the Complainant at a web page where the Complainant’s Blue Cloud logo was used. This cannot be a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith for fraudulent purposes, disrupting the Complainant’s business and confusing Internet users for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name consists of the Complainant’s SALESFORCE mark (registered, inter alia, in the USA for customer management services under no 76575119 since July 5, 2005), two hyphens, the Italian word ‘Italia’ and the gTLD “.com”. Previous panels have found confusing similarity when a respondent merely adds a geographically descriptive word to a Complainant’s mark. The Panel agrees that the addition of the geographically descriptive Italian word “Italia” to the Complainant’s mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s registered trademark. Nor does the addition of two hyphens which are mere punctuation. The gTLD “.com” is a functional element of a Domain Name and is disregarded for the purpose of an analysis of confusing similarity between a domain name and a complainant’s trademark. Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. The Domain Name has been used in a fraudulent phishing attempt using the SALESFORCE name and the Complainant’s Blue Cloud logo. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. As such, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registered and Used in Bad Faith Paragraph 4 of the UDRP contains a list of non-exclusive criteria which indicate registration and use in bad faith by a Respondent including: (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.’ Impersonating a complainant by use of a complainant’s trademark in a fraudulent phishing attempt is disruptive and evinces bad faith registration and use in opposition or competing with the Complainant’s interests. The use of the Complainant’s Blue Cloud logo on the Respondent’s web site shows that the Respondent was targeting the Complainant and had actual knowledge of the Complainant, its rights, business and services. Internet customers were attracted intentionally to the Respondent’s web site by use of the Domain Name for commercial gain in an attempt to confuse and deceive as to the origin of the Respondent’s web site and services on it. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras 4(b)(iii) and (iv). 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 Dawn Osborne
Sole Panelist
Date: January 22, 2021
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