WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salesforce.com, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted
Case No. D2019-1059
1. The Parties
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 Registration Private, Domains By Proxy, LLC, United States / Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <salesforceusa.org> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2019, 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 May 13, 2019 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 May 13, 2019.
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 May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on June 14, 2019. 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, founded in 1999, is a United States company with its global headquarters in San Francisco, California. The Complainant is known for its customer relationship management (CRM) platform, and offers a variety of cloud-based services to some 150,000 companies worldwide under the Complainant’s SALESFORCE, SALESFORCE.COM and SALESFORCE.ORG marks (hereinafter the “SALESFORCE marks”). The Complainant has used one or more of the SALESFORCE marks in commerce since as early as 1999, and holds the following registrations issued by the United States Patent and Trademark Office:
SALESFORCE, U.S. Reg. No. 2,964,712, applied for February 10, 2004 and registered in Class 35 July 5, 2005 (Principal Register – Section 2(F));
SALESFORCE, U.S. Reg. No. 2,964,712, applied for February 10, 2004 and registered in Class 35 July 5, 2005 (Principal Register – Section 2(F));
SALESFORCE, U.S. Reg. No. 3,138,749, applied for September 14, 2005 and registered in Class 9 September 5, 2006 (Principal Register);
SALESFORCE, U.S. Reg. No. 3,141,697 applied for September 1, 2005 and registered in Class 35 September 12, 2006;
SALESFORCE, U.S. Reg. No. 3,164,978, applied for September 14, 2005 and registered in Class 42 October 31, 2006 (Principal Register);
SALESFORCE.COM, U.S. Reg. No. 2,684,824, applied for October 29, 1999 and registered in Class 42 February 4, 2003 (Supplemental Register);
SALESFORCE.COM, U.S. Reg. No. 4,126,474, applied for December 30, 2010 and registered in Class 45 April 10, 2012 (Principal Register);
SALESFORCE.ORG, U.S. Reg. No. 4,979,922, applied for August 19, 2015 and registered in Class 42 June 14, 2016 (Principal Register);
SALESFORCE.ORG, U.S. Reg. No. 4,979,921, applied for August 19, 2015 and registered in Class 36 June 14, 2016 (Principal Register); and
SALESFORCE.ORG, U.S. Reg. No. 4,979,920, applied for August 19, 2015 and registered in Class 35 June 14, 2016 (Principal Register).
The Complainant also has registered numerous domain names reflecting the SALESFORCE mark. The Complainant maintains websites at “www.salesforce.com” and “www.salesforce.org”, the latter website being dedicated to the Complainant’s non-profit, philanthropic and charitable support services.
The Respondent registered the disputed domain name on March 27, 2019. The disputed domain name does not resolve to an active website; however, the Complainant has brought forth evidence that the disputed domain name has been used by the Respondent in perpetration of a fraudulent phishing scam entailing the use of the disputed domain name with email addresses impersonating certain Complainant’s personnel. The record reflects that the Respondent on March 27, 2019, sought to defraud a customer of the Complainant, sending a fraudulent email impersonating the Complainant and directing payment of purportedly outstanding invoices using bank details provided by the Respondent.
The Respondent also provided false contact information when registering the disputed domain name, also using a privacy service. Subsequently, in response to the Center’s request for registrar verification, the Registrar disclosed that the name used by the Respondent when registering the disputed domain name was “Name Redacted.” As it turns out, the Respondent opportunistically chose the name of one of the Complainant’s employees. The email contacts provided to the Registrar by the Respondent all provide the extension “@theralphlaurens.com.”
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <salesforceusa.org.> is confusingly similar to the Complainant’s SALESFORCE marks. The Complainant remarks that the disputed domain name incorporates the Complainant’s SALESFORCE mark in its entirety, and explains that the inclusion of the geographically descriptive term “USA” in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s SALESFORCE mark. The Complainant adds that although the generic Top-Level Domain (“gTLD”) “.org” ordinarily is disregarded when considering identity or confusing similarity, in this instances the disputed domain name is even more confusingly similar to the Complainant’s SALESFORCE.ORG mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been commonly known by the disputed domain name, is not authorized or licensed by the Complainant to use the SALESFORCE mark, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant observes that the disputed domain name does not resolve to an active website, and asserts that the disputed domain name is being used for phishing and in furtherance of a fraudulent scheme targeting the Complainant and its customers. The Complainant specifically notes that the Respondent upon registering the disputed domain name created the email addresses “[...]@salesforceusa.org” and
“[...]@salesforceusa.org” in order to impersonate certain Complainant’s personnel. The Complainant explains that the Respondent, impersonating the Complainant, sent emails to a specific Complainant’s customer requesting payment of outstanding invoices, seeking to induce payments using new bank details that, unknown to the customer, were controlled by the Respondent. According to the Complainant, UDRP panels have categorically held that the use of a domain name for illegal activity, including phishing or other types of fraud, can never confer rights or legitimate interests on a respondent.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant maintains that the Respondent has posed as personnel of the Complainant, seeking to fraudulently induce the Complainant’s customers to pay money to the Respondent under false pretenses. The Complainant further notes that the Respondent has gone out of its way to impersonate the Complainant, including naming an individual employee of the Complainant as the Respondent. The Complainant contends that the Respondent, by registering a domain name that is confusingly similar to the Complainant’s well-known SALESFORCE mark and using the disputed domain name to perpetrate a phishing and fraud campaign targeting the Complainant’s customers, is disrupting the Complainant’s business within the contemplation of paragraph 4(b)(iii) of the Policy. According to the Complainant, this likely would frustrate customers, tarnish the customers’ impression of the Complainant, and harm the goodwill associated with the Complainant’s brand.
The Complainant further argues that the Respondent also has registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Complainant reiterates that the disputed domain name is being used to perpetrate an illegal phishing and fraud scheme targeting the Complainant and its customers. According to the Complainant, the sole purpose of the scheme is to obtain financial information and money from unsuspecting customers of the Complainant, for the Respondent’s commercial gain. The Complainant adds, given that the use of a domain name for per se for such illegitimate activity can never confer rights or legitimate interests on a respondent, that such behavior is manifestly considered evidence of bad faith. The Complainant further submits that the respondent’s use of a proxy service is further evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <salesforceusa.org> is confusingly similar to the Complainant’s SALESFORCE mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s SALESFORCE mark is clearly recognizable in the disputed domain name.3 The addition of the letters “usa” following “salesforce” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Given that the Respondent has used the disputed domain name to impersonate the Complainant, the Respondent’s registration and use of the disputed domain name clearly reflects targeting of the Complainant.4 Top-Level Domains (“TLDs”), in this case “.org”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s SALESFORCE marks. The record reflects that the Respondent nonetheless has registered and used the disputed domain, which is confusingly similar to the Complainant’s mark, in furtherance of the perpetration of a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent 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 or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is clear beyond cavil that the Respondent was aware of the Complainant and the Complainant’s SALESFORCE marks when registering the disputed domain name. Absent any explanation by the Respondent, the Panel concludes from the record that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, in furtherance of a fraudulent phishing scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent clearly was aware of the Complainant and had the Complainant’s SALESFORCE mark in mind when registering the disputed domain name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances, the Respondent’s registration and use of the disputed domain name (including targeting) smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name <salesforceusa.org> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 24, 2019
1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name and contact details of Respondent as listed in the WhoIs for the disputed domain name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), section 1.7 .
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.