ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Salesforce, Inc. v. Protection Domain Case No. D2024-2494 1. The Parties The Complainant is Salesforce, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States. The Respondent is Protection Domain, Panama. 2. The Domain Name and Registrar The disputed domain name is registered with Above.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2024. On June 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2024, 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 (above privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2024, 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 July 1, 2024. 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 July 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2024.
page 2 The Center appointed Christian Schalk as the sole panelist in this matter on July 31, 2024. 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. The language of the proceeding is English. 4. Factual Background Founded in 1999 and having its global headquarters in San Francisco, United States, the Complainant is a leading customer relationship management platform and provides such platform and a variety of other cloud-based software as service products to over 150,000 companies worldwide. In 2022, the Complainant changed its name from salesforce.com, inc. into Salesforce, Inc. The Complainant has a commercial presence also in other countries in North America, Europe and in Australia from where it offers its services in a number of languages. The Complainant’s worldwide more than 70,000 employees generated more than USD 30 billion in revenue in 2023. According to the brand agency Interbrand’s list of the best global brands, the Complainant was ranked 38th in 2023. Also in 2023, Brand Finance ranked the Complainant in the Top 15 Most Valuable Internet & Software Brands. The Complainant owns among others the following trademarks: - United States Trademark Registration No. 2,964,712 for SALESFORCE, in Classes 35, and 42; used in commerce since September 27, 1999 and registered on July 5, 2005; - International Registration No. 910077 for SALESFORCE, in Classes 9, 35, and 42, registered on March 14, 2006; - Canadian Trademark registration No. TMA714881 for SALESFORCE, in Classes 9, 35, and 42, registered on May 22, 2008; - European Union Trademark No. 008433021 for SALESFORCE, in Class 9, registered on March 29, 2012; - International Registration No. 1381216 for SALESFORCE, in Class 36, registered on October 31, 2017; And - United States Trademark Registration No. 2684824 for SALESFORCE.COM, in class 42, registered on February 4, 2003. The Complainant also owns numerous domain names which include the SALESFORCE mark, for instance: - , registered on December 2, 1998; - , registered on April 30, 2004; - , registered on June 12, 2006; and - , registered on January 27, 2016. The disputed domain name was registered by the Respondent on February 29, 2012. According to the material brought before the Panel, the disputed domain name was used as part of an email address from which messages were sent from a person pretending to be a “Credit and Collection Analyst” of the Complainant, supposedly working in the Complainant’s Toronto office. An employee of a Complainant’s customer was contacted by a person using the disputed domain name as part of his email address ([...]@saleforrce.com) in autumn 2022. The customer was informed that several invoices were overdue and that the Complainant would discontinue its services within a few days in case that the invoices were not settled immediately. Also bank details for payment were provided which then changed during the email exchange accompanied with the information that the customer would receive further details on how to send the supposed amount due to this new bank account. The customer replied that these invoices could not be located in its internal systems and asked for more time for internal checks and escalation procedures according its internal
page 3 guidelines. During the following weeks, the entity pretending to be the Complainant sent several reminders, also threatening the discontinuation of services within a few days in case of non-payment. The client then became suspicious and contacted the Complainant, at which point this attempt of fraud came to light. According to the material brought before the Panel, the website to which the disputed domain name resolved before the Complaint was filed apparently triggers blocking software which prevents the website from loading. As of July 7, 2024, the disputed domain name resolved to an empty page. 5. Parties Contentions A. Complainant The Complainant alleges that the disputed domain name is identical or confusingly similar at the second level to the SALESFORCE and SALESFORCE.COM trademarks (hereinafter referred to as “SALESFORCE marks”) in which the Complainant has rights. The Complainant explains that the only differences between the Complainant’s SALESFORCE trademark and the disputed domain name are that the latter adds, the letter “r” and the “.com” generic Top-Level Domain (“gTLD”) extension while the latter being irrelevant in determining the similarity between the disputed domain name and the Complainant’s SALESFORCE marks. However, the disputed domain name contains the Complainant’s SALESFORCE marks in their entireties or an obvious and confusingly similar typographical variation thereof, which in the Complainant’s view is sufficient to show that the disputed domain name is identical or confusingly similar to its trademarks. The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is neither associated nor affiliated with the Complainant who also never authorized the Respondent to use the SALESFORCE marks in any manner, much less as part of the disputed domain name. Furthermore, the disputed domain name does not reflect the Respondent’s common name or organization. The Complainant continues that the Respondent registered the disputed domain name after the Complainant registered and started using its SALESFORCE marks and willfully adopted the Complainant’s trademarks within the disputed domain name in an attempt to unfairly capitalize on the valuable goodwill which the Complainant has built in its SALESFORCE marks. The Complainant argues that the disputed domain name has been used intentionally by the Respondent to distribute emails impersonating the Complainant to request payment of fictitious overdue invoices, as part of a fraudulent scheme to deceive email recipients into paying money to the Respondent. Therefore, the Complainant concludes, the Respondent’s use of the disputed domain name does not constitute a bona fide sale of goods or services or commercial use, nor a legitimate non-commercial or fair use. The Complainant also alleges that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent was aware of the Complainant when he registered the disputed domain name, especially, when he sent fraudulent messages from the email account associated with the disputed domain name, alleging non-payment of fake invoices to induce phishing targets to pay the Respondent. The Complainant explains that another indication of the Respondent’s prior knowledge of the Complainant is that the Respondent used also the Complainant’s office address in Toronto within such email messages. The Complainant states that this behavior could disrupt the Complainant’s business since the phasing and fraud campaign has not only caused confusion but would likely frustrate Internet users seeking the Complainant, tarnish their impression of the Complainant, and harm the goodwill associated with the Complainant’s brand. The Complainant continues that the Respondent registered the disputed domain name also in order to take advantage of the confusion by the disputed domain name and its similarity to the Complainant’s SALESFORCE makes in order to obtain money from Internet users for the Respondent’s commercial gain.
page 4 The Complainant states further that the disputed domain name is only valuable for the Respondent given the certain level of recognition of its SALESFORCE marks, and therefore, the Respondent willfully registered the disputed domain name to unfairly capitalize on the valuable goodwill the Complainant has built in its SALESFORCE marks, with the intention to confuse Internet users and committing per se illegitimate activity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel finds that the Complainant has established trademark rights in the SALESFORCE marks and that the entirety of the mark is reproduced within the disputed domain name. The elements SALESFORCE and “salesforrce” are confusingly similar. Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark (so-called “typo-squatting”), by adding, deleting, substituting or reversing the order of letters in a mark (WIPO Overview 3.0., section 1.9 and especially Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 and the cases cited therein). The addition of a second letter “r” in the term “salesforce” (“salesforrce” instead of “salesforce”) constitutes a rather minor alteration of this term and can only be regarded as a typical case of typo-squatting. Accordingly, the disputed domain name is confusingly similar to the SALESFORCE marks for the purposes of the Policy (see WIPO Overview 3.0, section 1.7). Furthermore, the “.com” gTLD suffix in the disputed domain name does not affect the determination that the disputed domain name is at least confusingly similar to the SALESFORCE marks in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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
page 5 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. However, the Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to rights to or legitimate interests in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests. The Respondent apparently used the disputed domain name to send emails to a customer of the Complainant where he pretended to be a “Credit and Collection Analyst” of the Complainant working in the Complainant’s Toronto office. Therein, the Respondent requested the Complainant’s customer for immediate payment of fictitious overdue invoices accompanied by threats of severe disadvantages for this customer, especially, the termination of agreed services if they were not paid immediately. Such obviously fraudulent behavior cannot constitute a bona fide sale of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name. Furthermore, directing the disputed domain name to a website which triggers blocking software to prevent the website from loading and subsequently to an empty page, does also not give the Respondent any rights or legitimate interests in the disputed domain name. Taking into consideration the overall circumstances of this case, especially, the Respondent’s dishonest behaviour described in the previous paragraph, directing the disputed domain name to a website as described above cannot qualify as a bone fide offering of goods and services (see for instance, cases where directing a disputed domain name to blank pages has the same effect, Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740 and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246). Therefore, the Complainant has fulfilled the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of the 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
page 6 (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. A simple search on a search engine such as Google or Bing reveals many references to the Complainant already on the first two pages of search results, which would have made the Respondent immediately aware of the Complainant. Moreover, the Respondent used the disputed domain name as an account name for emails sent to a customer of the Complainant where he pretended to be an employee of the Complainant who works at the Complainant’s office in Toronto. Therefore, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time of registration of the disputed domain name (see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent’s behaviour constitutes also use of the disputed domain name in bad faith. The Respondent used the disputed domain name to send emails impersonating the Complainant to a customer of the Complainant, requesting immediate payment of fictitious overdue invoices to the bank account mentioned in such emails. All this was accompanied by repeated threats of disadvantageous consequences for the customer, namely the termination of services. This constitutes fraudulent behavior, as the customer could have believed these emails were genuine messages from the Complainant and could force them to pay either initially justified invoices a second time or to settle fully unjustified fictitious ones. Even in organizations with highly professional and diligent employees, an accidentally delayed settlement of an invoice can occur for various reasons. The person(s) in charge of settling invoices can be away for holidays or for sick leave, or he or she may suffer from a high workload and may have overseen such invoices during daily routine. Furthermore, being reminded of unsettled invoices is often a rather uncomfortable situation for the persons in charge of the payment, especially if such confrontation is accompanied by the threat of severe negative consequence for a company, in this case the termination of services which could be crucial for the conduct of business of this company. This can place employees into a mentally very difficult situation since they could have reasons to fear that their “negligence” could have very disadvantageous consequences for their company. Such “reminders” are also unpleasant for employees when they are convinced that all invoices of the Complainant were settled in due time. They then need to spend a lot of time searching for a problem which does not exist. If they discover that there is no issue, it could cause a serious damage of the Complainant’s reputation, making it seem as though a company which cannot correctly detect any settlement of invoices. Ultimately, this may result in the termination of the business relationship with the Complainant and therewith disrupt the Complainant’s business. Therefore, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom (see also WIPO Overview 3.0, section 3.4 and there especially, Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213).
page 7 Furthermore, having regard to the material brought before the Panel, the disputed domain name is currently not in use. According to section 3.3 of the WIPO Overview 3.0, it is consensus view that also the lack of active use of the domain name does not as such prevent a finding of bad faith. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, for instance, (i) the degree of distinctiveness or reputation of the complainant’s mark and (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (see also WIPO Overview 3.0, section 3.3.). The Complainant’s SALESFORCE marks enjoy distinctiveness and belongs to the group of the top 50 world famous brands. The disputed domain name incorporates the trademark SALESFORCE in its entirety. The Complainant has a substantive commercial presence on the Internet as well as in social media. Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when attempting to send communications to the Respondent. The delivery of the Center’s Written Notice failed because the contact details including the Respondent’s alleged physical address were not accurate. Therefore, the Panel notes that the Respondent may have provided incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Accordingly, in light of the circumstances, the Panel finds that the Respondent has engaged in the bad faith registration and use of the disputed domain name. 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 name be transferred to the Complainant. /Christian Schalk/ Christian Schalk Sole Panelist Date: August 14, 2024
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