The Complainant is Salesforce.com, Inc., United States of America (“United States” or “U.S.”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Whois Privacy, Private by Design, LLC, United States, / HMONROVIA TOMMY, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2021, 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 December 15, 2021.
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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2022.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 28, 2022. 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 BackgroundThe Complainant is one of the world’s leading customer relationship management (“CRM”) platform and provides CRM and related services to over 150,000 companies worldwide. The Complainant has annual revenues exceeding USD 23 billion and has more than 56,000 employees.
The Complainant owns registrations for the marks SALESFORCE and SALESFORCE.COM (collectively, the “Mark”) in the United States for various product categories including, but not limited to, U.S. Registration No. 2,684,824 for SALESFORCE.COM dated February 4, 2003, and U.S. Registration No. 2,964,712 for SALESFORCE dated July 5, 2005. The Complainant also owns registrations in jurisdictions around the world for the Mark.
The Complainant owns and operates the domain name
The disputed domain name was registered on October 25, 2021, and does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed entirely of the Complainant’s Mark preceded by the letters “emea” which is commonly understood as an abbreviation for Europe, Middle East, and Africa.
The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant asserts that the disputed domain name was registered and used in bad faith as part of a scheme to trick Complainant’s customers into erroneously making false payments to the Respondent while believing payment was being made to the Complainant. The Complainant assets that the disputed domain name is being used by the Respondent to impersonate a member of the Complainant’s finance team to send emails using an “[…]@emea-salesforce.com” address to the Complainant’s customers asking for payment of fake and fraudulent invoices.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and,
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark preceded by the letters “emea” which are commonly understood as an abbreviation for Europe, Middle East, and Africa. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the letters “emea” used as a prefix and separated from the Mark by a hyphen. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers,WIPO Case No. D2017-0013; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609; Advance Magazine Publishers, Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657; and Advance Magazine Publishers Inc. v. Contact Privacy Inc. / Julia Barnes,WIPO Case No. D2015-0617.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, is disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the Mark or register a domain name containing the Mark. The Respondent is not affiliated with the Complainant and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name which prominently incorporates the Mark in its entirety, in addition to a term related to the Complainant’s area of business, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The utilization of the disputed domain name as part of a scheme to impersonate an employee of the Respondent obviously does not establish rights or legitimate interests in the disputed domain name.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith1. Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
2. The Panel finds the disputed domain name was registered and is being used in bad faith.
It appears on the unrebutted evidence presented by the Complainant that the Respondent is using the disputed domain name as part of a scheme to defraud Complainant’s customers by posing as an employee of the Complainant and seeking to divert payments from customers of the Complainant to the Respondent. Annex 10 to the Complaint demonstrates that the disputed domain name has been utilized in connection with emails forwarding a fictitious invoice to one of the Complainant’s customers seeking payment to a person posing as an employee of the Complainant. The use of a disputed domain name to deceptively impersonate a complainant is paradigmatic bad faith registration and use. Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy, LCC / Name Redacted,WIPO Case No. D2021-0820; and Medtronic, Inc. v. Registration Private, Domains by Proxy, LCC / Name Redacted,WIPO Case No. D2021-2353.
The current passive holding of the disputed domain name does not absolve the Respondent of bad faith registration and use, and, in fact, under the circumstances of this case, supports a finding of bad faith registration and use. See WIPO Overview 3.0, section 3.3; see also, Medtronic, Inv. v. Roohi B Rasheed, Roohi B Rasheed,WIPO Case No. D2020-1161.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
William F. Hamilton
Sole Panelist
Date: February 11, 2022