ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Salesforce Inc. v. Brittany Cannon Case No. D2023-3883 1. The Parties The Complainant is Salesforce Inc., United States of America (the "United States"), represented by DLA Piper US LLP, United States. The Respondent is Brittany Cannon, United States. 2. The Domain Names and Registrar The disputed domain names , and are registered with HOSTINGER operations, UAB (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2023. On September 18, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, and November 6, 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 details. The Complainant filed an amended Complaint on October 5, 2023. 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 October 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2023. The Center appointed Ezgi Baklacı Gülkokar as the sole panelist in this matter on November 14, 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. page 2 4. Factual Background The Complainant, Salesforce Inc., was incorporated in Delaware, United States. The Complainant has a brand named "Slack" which provides an online communication and collaboration platform for businesses, as well as related products and services. Slack was launched in April 2013 and this platform allows teams within businesses and organizations to communicate remotely, share files with one another, and collaborate on projects within teams. In 2021, Slack Technologies was acquired by Salesforce. Currently, there are over two hundred thousand paid customers of the Slack platform and 77 of the Fortune 100 companies utilize the Slack platform. There are daily active users of the Slack platform located in over 150 countries. The Complainant is the owner of the "SLACK" and formative trademark registrations before the United States Patent and Trademark Office ("USPTO"). The relevant SLACK trademarks are USPTO Registration Nos. 4610670, SLACK Trademark, registered on September 23, 2014 in International Class 42; . 4877559, SLACK Trademark, registered on December 29, 2015 in International Class 9; 6140458 registered on September 01, 2020; 6976904, SLACK CERTIFIED Trademark, registered on February 14, 2023 in International Classes 41, and 42; 6473407, SLACK CONNECT Trademark, registered on August 31, 2021 in International Classes 9, 38, 42; 6605337, SLACK FRONTIERS Trademark, registered on January 4, 2022 in International Classes 35, 41, and 42, and 5216356, SLACKBOT Trademark registered on June 06, 2017, in International Class 42, as evidenced with the Annex 3 of the Complaint. The Complainant holds and uses the domain name that includes "SLACK" trademark which allows Internet users also to learn more about the goods and services that Salesforce offers under the SLACK mark. As of the initial filing of the Complaint, the registrant of record information for the disputed domain name was shielded by a privacy shield, however, after the filing of the Complaint the Registrar revealed the identity of the domain registrant (the disputed domain name was initially included in a different proceeding but was separated out). The registrant has been identified as Brittany Cannon. The Respondent is reportedly based in the United States. The disputed domain name was registered on January 11, 2023 and the disputed domain name was registered on January 15, 2023 as evidenced with the Annex 1. The disputed domain names are currently being passively held since the domain names revert to inactive websites. 5. Parties' Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows: Identical or confusingly similar The Complainant argues that the disputed domain names are confusingly similar to SLACK trademark, the sole difference being the addition of the terms "app", "tech" and "tools" which are dictionary and commonly associated with SLACK and fails to distinguish the disputed domain names from the Complainant's trademark. The Complainant also claims that SLACK name and mark have been in use in connection with a software platform since at least as early as April 2013, which predates the registration date of the disputed domain names by nearly ten years. By the time the disputed domain names were registered on January 11, and 15, 2023, the Slack platform was in use by businesses around the world for nearly a decade. page 3 The Complainant also indicates that it has developed a strong reputation in the United States and around the world for its SLACK and SLACK-formative marks. Rights or legitimate interests The Complainant argues that the Respondent has no rights and legitimate interests in the disputed domain names, has no affiliation with the Complainant and the Complainant has not given the Respondent permission to register and/or use the Complainant's trademarks in any manner. In addition, the Complainant argues that the Respondent is not known by the disputed domain names and the Complainant submits that the Respondent is not authorized to use the Complainant's trademark, nor the Respondent is the licensee of the mark. The disputed domain name was registered and used in bad faith. The Complainant argues that SLACK is a well-known trademark throughout the world and that the Respondent should be presumed to have known or should have known the SLACK mark. This in turn should lead to an inference of bad faith and the Complainant cites in support of its allegations various previous UDRP decisions. It has been further argued by the Complainant that the fact that the disputed domain names resolve to inactive websites does not prevent a finding of bad faith due to passive holding doctrine. The Complainant also argues that the Respondent has knowingly registered the disputed domain name in order to create an impression of an association with the Complainant. The Complainant further argues that the Respondent's choice of registering the disputed domain names, which are confusingly similar to the trademark SLACK and the Complainant's official domain name , are examples of typosquatting which itself should be considered as a sign of bad faith. In summary, the Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it has well-established rights in SLACK trademarks. "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. page 4 The disputed domain names and consist of typo versions of the registered trademark SLACK, with the additional elements "app" and "tools". In particular, the Panel notes that there is a misspelling or a transposition of the letters "l" and "i" in the terms "slaik" and "sllack". This change does not prevent a finding of confusing similarity between the disputed domain names and the trademark. See WIPO Overview 3.0, section 1.9. Therefore, the Panel accepts that this is an obvious case of typo-squatting. "The applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview 3.0, section 1.11. Here, the TLD ".tech" may be disregarded. In the light of the above, the Panel is of the view that the disputed domain names are confusingly similar to the Complainant's trademarks and the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While the overall burden of proof in UDRP proceedings is on the Complainant, previous UDRP panels have recognized that proving a Respondent that it lacks rights or legitimate interests in a domain name may result in the often-impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1) (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel notes that there is no evidence showing that the Respondent holds any rights for the term "slack". The Panel also notes that there is no evidence showing that the Respondent is authorized or licensed to use the Complainant's trademark SLACK. The case file also does not contain any evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. Further, the Panel notes that there is no evidence of the Respondent's use of, or preparation to use the disputed domain names; and there is also no evidence that the Respondent is making a legitimate noncommercial or fair use under the disputed domain names. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that a complainant must demonstrate that the disputed domain name has been 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 trademark (WIPO Overview 3.0, section 3.1). The Panel finds that at the time the disputed domain names were registered the Respondent more likely than not was aware of the trademark SLACK as Complainant's trademark registrations predate the registration date of the disputed domain names. According to the evidence submitted by the Complainant, the Panel finds that the Respondent knew or should have known about the Complainant's rights (and such information could readily have been reached by a quick online search; see Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). page 5 In addition, previous UDRP panels have held that the mere registration of a domain name that is confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4). The SLACK trademarks are widely known in the United States and that suggests that the disputed domain names have been selected with an intent to create an impression of an association with the Complainant (see General Motors LLC v. desgate., WIPO Case No. D2012-0451). The Panel agrees that the Respondent not only knows the Complainant's marks but intends to benefit from their reputation as well. The Panel notes that the disputed domain names do not resolve to active websites as of the date of this Decision and further finds that passive holding of the disputed domain names can be found to constitute bad faith use under the Policy (see section 3.3 of the WIPO Overview 3.0). Further, the Panel finds that the Respondent when registering the disputed domain names, has targeted the Complainant's well-known trademark. This is corroborated by the Respondent's act of typosquatting. Paragraph 4(b) of the Policy provides a non-exhaustive list of bad faith circumstances. Earlier panels have found typosquatting itself evidence of bad faith (National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011). In light of all these circumstances, the Panel concludes that the Complainant has succeeded in proving the requirement of paragraph 4(a)(iii) that the disputed domain names have been registered and used in bad faith by the Respondent. 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 disputed domain names, , and , be transferred to the Complainant. /Ezgi Baklacı Gülkokar/ Ezgi Baklacı Gülkokar Sole Panelist Date: November 28, 2023
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