ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Salesforce Inc. v. Igor Astashenko Case No. D2023-3462 1. The Parties The Complainant is Salesforce Inc., United States of America ("United States"), represented by DLA Piper US LLP, United States. The Respondent is Igor Astashenko, Russian Federation. 2. The Domain Name and Registrar(s) The disputed domain name (the "Domain Name") is registered with Registrar of Domain Names REG.RU LLC (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 15, 20230F1. On August 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details1F2. Considering that the Complainant related to the Domain Name and other disputed domain names, on August 30, 2023, the Center sent the Notice of Change (Multiple Underlying Registrants) to the Complainant. The Center requested the Complainant to: (i) amend the Complaint adding the Registrar-disclosed registrants as formal respondents and provide relevant arguments or evidence demonstrating that all named respondents are, in fact, the same entity and/or that all domain names are under common control; and/or (ii) file a separate complaint for any domain names for which it is not possible to demonstrate that all named respondents are in fact the same entity and/or that all domain names are under common control and indicate which domain name(s) will no longer be included in the current 1 The original Complaint filed on August 15, 2023 concerned the Domain Name and the disputed domain names , , and . 2 On August 15, 2023, the Center transmitted by email to the relevant registrars the requests for registrar verification in connection with the Domain Name, as well as the disputed domain names , , and . On August 16 and August 17, 2023, the concerned registrars transmitted by emails to the Center their verification responses disclosing registrants and contact information for all the disputed domain names which differed from the named Respondent and contact information in the Complaint with respect to some of the disputed domain names. page 2 Complaint. On September 16, 2023, the Complainant filed the first amended Complaint which concerned the Domain Name and one other disputed domain name. On October 5, 2023, the Complainant filed the second amended Complaint concerning exclusively the Domain Name. The Registrar indicated that the language of the Registration Agreement for the Domain Name is Russian. On August 30, 2023, the Center sent an email communication to the Parties inviting the Complainant to submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to comment on the language of the proceeding. On September 1, 2023, the Complainant reconfirmed its request that English be the language of the proceedings. The Respondent did not provide any comments regarding the language of the proceedings. The Center verified that the Complaint together with the second 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 in both English and Russian, and the proceedings commenced on October 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2023. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 9, 2023. 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 cloud-based software company. In 2021, the Complainant acquired Slack Technologies, Inc ("Slack"). It is a company launched in April 2013 operating a software collaboration and communication platform for businesses and organizations, as well as related products and services. As of the filing of the Complaint, there have been over 200,000.00 paid customers of the Slack's platform. The Complainant is the owner of several SLACK trademark registrations, including the International Trademark Registration for SLACK (word) No. 1257432A, registered on May 29, 2015. The Complainant's subsidiary Slack is also the owner of several SLACK trademark registrations, including: - the United States Trademark Registration for SLACK (word) No. 4,877,559, registered on December 29, 2015; and - the International Trademark Registration for SLACK (word) No. 1257432A, registered on May 29, 2015. Moreover, Slack is the owner of the domain name . The Domain Name was registered on January 12, 2023. As of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has not resolved to any active website. page 3 5. Parties' Contentions A. Complainant The Complainant requests the transfer of the Domain Name. According to the Complainant, each of three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. First, the Complainant submits that the Domain Name is confusingly similar to the SLACK trademark in which the Complainant has rights. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name. Third, the Complainant submits that the Domain Name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Matters - Language of the Proceeding The language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334). The Complainant has submitted a request that the language of the proceeding be English. First, the Complainant submits that the Domain Name consists of a typo of the SLACK trademark. Given the nature of the typo-squatting, this suggest that the Respondent is able to understand English. Moreover, the Complainant notes that the terms "slack" does not carry any specific meaning in the Russian language. Third, the Complainant alleges that substantial additional expense and delay would likely be incurred if the Complaint has to be submitted in Russian. The Panel agrees that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment on let alone object to the Complainant's arguments concerning the language of the proceeding. Thus, taking these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English. 6.2. Substantive Matters - Three Elements Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: page 4 (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 the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the "balance of probabilities" or "preponderance of the evidence". See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). A. Identical or Confusingly Similar Under the first element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights. The Complainant holds valid SLACK trademark registrations. Moreover, the Complainant's wholly owned subsidiary Slack is also the holder of the SLACK trademark registrations. According to previous UDRP decisions, a parent company may be considered to have rights in the trademark (see Grupo Televisa S.A de C.V Estrategia Televisa S.A de C.V Videoserpel Ltd. v. Party Night, WIPO Case No. D2003-0796). The Domain Name consists of a common, obvious, or intentional misspelling of the SLACK trademark. The letter "l" in the SLACK trademark has been replaced by the similar-appearing character "i". Thus, the Domain Name contains sufficiently recognizable aspects of the SLACK trademark. UDRP panels have consistently held that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See section 1.9, WIPO Overview 3.0. The generic Top-Level Domain ("gTLD") ".net" in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1, WIPO Overview 3.0. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant's SLACK trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that it has used or made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or (ii) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or (iii) that it 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 trademark. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence on record that the Complainant's SLACK trademark registrations predate the Respondent's registration of the Domain Name. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use the SLACK trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name. page 5 Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Name. On the contrary, at the time of submitting the Complaint and as of the date of this Decision, the Domain Name has resolved to inactive websites. In fact, it does not result from the case evidence that the Domain Name has been used in any active way to date. The Complainant alleges that it has been made aware that, upon information and belief, the Domain Name was being used in Google Ads so that customers mistakenly click on the Domain Name when searching for the term "Slack" on the Google search engine. The Complainant believes that the Respondent is using or plans to use the Domain Name to engage in phishing attempts against the Complainant's customers. The Panel finds that the fact that the Respondent employed a misspelling of the SLACK trademark in the Domain Name signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant. See section 1.9, WIPO Overview 3.0. Given the above, the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under the third element, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark. See section 3.1, WIPO Overview 3.0. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-ofpocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. As indicated above, the Complainant's rights in the SLACK trademark predate the registration of the Domain Name. The Panel finds that the Respondent was or should have been aware of the Complainant's trademark at the time of registration, as it has been proven to the Panel's satisfaction that the Complainant's SLACK trademark is well known and unique to the Complainant. Thus, the Respondent could not possibly ignore the reputation of products and services under this trademark. In sum, the Respondent registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant's SLACK trademark. Moreover, as of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has not resolved to any active website. Considering the overall circumstances of this case, the Panel finds that the Respondent's passive holding of the Domain Name does not prevent a finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, would not prevent a finding of bad faith under the Policy. See section 3.3 of the WIPO Overview 3.0. page 6 Here, given the well-known nature of the Complainant's trademark, the Respondent's failure to participate in the proceeding, and the implausible good faith use to which the Domain Name may be intrinsically put, the Panel agrees with the above. Furthermore, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Finally, the Respondent's use of privacy services that concealed registrant information is a further evidence of bad faith. For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy. 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, , be transferred to the Complainant. /Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist Date: November 23, 2023
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