WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
salesforce.com, inc. v. Kaori Tsuji
Case No. D2019-2647
1. The Parties
The Complainant is salesforce.com, inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Kaori Tsuji, Japan.
2. The Domain Name and Registrar
The disputed domain name <salesforcc.com> (“the Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, 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 Center verified that the 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 November 15, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was December 5, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 6, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on December 11, 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, provides customer relationship management (CRM) and a variety of other cloud-based software to over 150,000 companies worldwide. It has its global headquarters in San Francisco with regional headquarters in Morges (Switzerland), Hyderabad (India), and Tokyo (Japan) and has other offices located elsewhere. The Complainant had revenue of USD 13.28 billion in the 2019 fiscal year, has 35,000 employees and the SALESFORCE brand was ranked the 75th best global brand by Interbrand in 2018.
The Complainant owns a number of trademark registrations around the world for SALESFORCE and SALESFORCE.COM (the SALESFORCE Marks) including SALESFORCE (United States Reg. No. 2,964,712) used in commerce since September 27, 1999 and registered on July 5, 2005, and SALESFORCE.COM (United States Reg. No. 2,684,824) used in commerce since September 27, 1999, and registered on February 4, 2003.
The Complainant also owns numerous domain names that include the SALESFORCE Marks including <salesforce.com> (registered on December 1, 1998); <salesforce.org> (registered on April 30, 2004); <salesforce.mobi> (registered on June 12, 2006); and <salesforce.cloud> (registered on January 27, 2016). The <salesforce.com> domain name has been used in the Complainant’s business since its inception in 1999, directing Internet users to the Complainant’s website at “www.salesforce.com” which makes substantial use of the SALESFORCE Marks.
The Domain Name <salesforcc.com> was registered by the Respondent on August 8, 2019.
5. Parties’ Contentions
The following is a summary of the Complainant’s main contentions.
The Complainant has promoted the SALESFORCE Marks globally and they have widespread recognition in the United States, Japan, and worldwide. SALESFORCE goods and services are well-publicized in the media and the goodwill generated by the Complainant’s marks and business practices has earned it praise from organizations and news outlets worldwide.
The Domain Name was registered some considerable time after the SALESFORCE Marks were first used by the Complainant.
The Domain Name is being used by the Respondent to impersonate a member of the Complainant’s billing team to send emails using an “@salesforcc.com” extension to the Complainant’s customers asking for payment of fake and fraudulent invoices.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The only difference between the Complainant’s SALESFORCE mark and the Domain Name is that the latter ends with the letter “c” instead of the letter “e”, and the addition of the “.com” generic Top-Level Domain (“gTLD”) extension.
The addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether a domain name is confusingly similar to a mark. The Domain Name is confusingly similar to the SALESFORCE.COM mark for the same reason. The Domain Name contains the SALESFORCE and SALESFORCE.COM marks in their entirety (or an obvious typographical variation thereof), which is sufficient to show that the Domain Name is identical or confusingly similar to the SALESFORCE Marks.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not associated or affiliated with the Complainant and has never been authorized by the Complainant to use the SALESFORCE Marks. The Domain Name was registered well after the Complainant had registered and/or used the SALESFORCE Marks and established extensive goodwill.
The Respondent has willfully adopted the SALESFORCE Marks within the Domain Name in an attempt to unfairly capitalize on the valuable goodwill of the Complainant.
The Domain Name does not reflect the Respondent’s common name or organization name
The Domain Name is used in connection with a fraudulent scheme intended to deceive the Complainant’s customers into sharing their sensitive financial information or paying money to the Respondent to satisfy false and fraudulent invoices. The Respondent’s use of the 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 domain name was registered and is being used in bad faith
The Respondent has registered and used the Domain Name in bad faith according to paragraph 4(b)(ii) of the Policy in that he has engaged in a bad faith pattern of targeting various well-known trademarks to register domain names containing typographical variations thereof, such as <airbus.com> and <burlingtorstores.com>, probably to conduct similar fraudulent activity to that described above in relation to other trademark owners’ customers. This pattern of targeting multiple domain names is clear evidence of bad faith registration and use.
The Respondent has also registered and used the Domain Name in bad faith according to paragraph 4(b)(iv) of the Policy in that the Domain Name is being used to perpetrate a fraudulent email scheme intended to induce the Complainant’s customers to pay fake invoices to the Respondent for financial gain.
The Respondent has registered and used the Domain Name for per se illegitimate activity, namely fraud, which is manifestly considered evidence of bad faith.
Furthermore, the Complainant’s rights in the SALESFORCE Marks are so well established, and its SALESFORCE brand has achieved such a level of recognition and fame, that the Respondent has no colorable argument that he was unaware of the brand. The Domain Name is only valuable because of its association with the SALESFORCE brand.
The Respondent was on notice of the Complainant’s SALESFORCE Marks prior to registering the Domain Name given the well-known nature of the Complainant’s marks.
The Respondent willfully registered the Domain Name to unfairly capitalize on the valuable goodwill the Complainant has built in its SALESFORCE Marks with the intention of confusing consumers and engaging in illegitimate activity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant is the owner of the SALESFORCE Marks and thus clearly has rights in them.
When considering the question of confusing similarity (or identicality), the Panel may, for comparison purposes, ignore the gTLD extension, but is not required to do so if it is relevant.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) is designed to assist awareness of panel views on certain questions that commonly arise in proceedings under the UDRP. Paragraph 1.11.3 provides that “Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name <trade.mark> would be confusingly similar for UDRP standing purposes)”. (See also Tesco Stores Limited v. M.F, WIPO Case No. DCO2013-0017, <tes.co>).
Ignoring the TLD “.com” in the case of the SALESFORCE mark but not in the case of the SALESFORCE.COM mark, the Domain Name comprises only the SALESFORCE Marks except that the Domain Name ends with the letter “c” instead of the letter “e”.
Given that the SALESFORCE Marks and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The SALESFORCE Marks are clearly recognizable within the Domain Name. The substitution of the letter “c” for the letter “e” does little to diminish the visual impression created by the Domain Name, i.e. that it is identical to, or very closely similar such that it could be mistaken for being identical to the Complainant’s SALESFORCE Marks. To create such a visual impression was no doubt the very purpose in the Respondent choosing the Domain Name that it did. Given the substitution of letters (“e” to “c”), the Domain Name and marks cannot be said to be identical, but the Domain Name is certainly confusingly similar to the Complainant’s SALESFORCE Marks.
The Panel finds that the Domain Name is confusingly similar to the SALESFORCE Marks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. The answer to that question must be a resounding “No”. It is difficult to conceive of any argument that could be advanced in the circumstances that would assist the Respondent. This is a clear case of typosquatting.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name is confusingly similar to the SALESFORCE Marks and may well be mistaken as being identical. The Respondent has no legitimate rights or interests in the Domain Name. In fact, its only or prime interest in the Domain Name would appear to be illegitimate, given its impersonation of the Complainant for its own nefarious purposes as described earlier. No Response to the Complaint has been filed, no doubt because there is no response to the Complaint the Respondent could give which might cast doubt on the contention that registration and use of the Domain Name has been in bad faith. In these circumstances, there is no need to consider other grounds for a finding of bad faith registration and use.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <salesforcc.com> be transferred to the Complainant.
Date: December 23, 2019