WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
salesforce.com, inc. v. Harley Ross
Case No. D2019-2649
1. The Parties
Complainant is salesforce.com, inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
Respondent is Harley Ross, United States.
2. The Domain Name and Registrar
The disputed domain name <apacsalesforce.com> 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 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 10, 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
Complainant is the owner of registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) for the word trademarks and service marks (hereinafter “trademarks”) SALESFORCE.COM and SALESFORCE, including: registration number 2684824, registration dated February 4, 2003, in international class (“IC”) 42, covering, inter alia, online non-downloadable software for storing and managing data in the field of marketing, promotion, sales and customer management information (SALESFORCE.COM); registration number 2964712, registration dated July 5, 2005, in ICs 35 and 42 (SALESFORCE), and; registration number 3138749, registration dated September 5, 2006, in IC 9 (SALESFORCE). Complainant has provided evidence of additional registrations at the USPTO, as well as evidence of international registration under the Madrid System at WIPO (registration number 910077, registration dated March 14, 2006, for SALESFORCE).
Complainant is a leading provider of customer relationship management (CRM) cloud-based services with customers and offices throughout the world. Complainant in fiscal year 2019 had USD 13.28 billion in revenue and 35,000 employees. Complainant maintains various commercial websites, including its principal website at <salesforce.com>. The Panel takes administrative notice that Complainant’s SALESFORCE and SALESFORCE.COM are well-known trademarks at least in the United States.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on June 25, 2019.
Respondent has not used the disputed domain name in connection with an active website. Respondent has used the disputed domain name in connection with at least one email address:
“firstname.lastname@example.org”. That email address has been used by Respondent to transmit messages to customers of Complainant identifying the sender as the “salesforce.com Billing Department”. Those emails seek financial information from Complainant’s customers and seek to reroute customer payments to Respondent. Such email messages do not originate with Complainant or any authorized representative of Complainant, and appear to be part of a scheme to defraud Complainant and its customers.
Respondent has registered several other domain names incorporating the trademarks of third parties that include minor typographical modifications, including <stanleyrnartin.com> and <rosenbeuaramerica.com>.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademarks SALESFORCE.COM and SALESFORCE, and that the disputed domain name is confusingly similar to those trademarks.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because:
(1) Respondent is not associated or affiliated with Complainant;
(2) Respondent has not been authorized by Complainant to use its trademarks in any manner, including in the disputed domain name;
(3) the disputed domain name was registered long after Complainant acquired rights in its trademarks;
(4) the disputed domain name does not reflect Respondent’s common name or organization name;
(5) the disputed domain name has been used in connection with a scheme to defraud;
(6) 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 noncommercial or fair use;
(7) UDRP panels have consistently held that using a domain name for a scheme to defraud does not establish rights or legitimate interests, and;
(8) as Complainant has established a prima facie case of lack of rights or legitimate interests, the burden shifts to Respondent to provide evidence refuting that case.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because:
(1) Respondent has engaged in a bad faith pattern of targeting various well-known trademarks to register domain names containing typographical variations of them;
(2) Respondent has used the disputed domain name to perpetrate a scheme to defraud;
(3) Respondent’s use of the disputed domain name for illegitimate activity is manifestly evidence of bad faith;
(4) Complainant’s trademarks are sufficiently well-known that Respondent could not have been unaware of them, and by registering the disputed domain name intended to capitalize on Complainant’s goodwill, and;
(5) Respondent was on notice of Complainant’s well-known trademarks when it registered the disputed domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent. No emails could be transmitted to the email address provided by Respondent, which also appeared to be false and/or incomplete. The Registrar confirmed email receipt of the Complaint transmitted by the Center. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademarks SALESFORCE.COM and SALESFORCE including by registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the SALESFORCE.COM and SALESFORCE trademarks.
The disputed domain name directly incorporates Complainant’s trademarks and adds the suffix “apac”. The term “apac” is commonly used as a short form reference for “Asia-Pacific”. Addition of that term to Complainant’s trademarks in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademarks and the disputed domain name. Whether or not Respondent used “apac” as a short form reference for “Asia-Pacific”, Complainant’s well-known trademarks are readily identifiable within the disputed domain name and support a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademarks within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademarks SALESFORCE.COM and SALESFORCE and that the disputed domain name is confusingly similar to those trademarks.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has provided substantial evidence that Respondent has used the disputed domain name for purposes of misrepresentation of identity and a scheme to defraud Complainant and its customers. Such evidence is unrebutted.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy.
C. Registered and Used in Bad Faith
Complainant has provided substantial evidence that Respondent registered and is using the disputed domain name for purposes of misrepresentation of identity and a scheme to defraud Complainant and its customers. Such evidence is unrebutted.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications intending to defraud Complainant’s customers, thereby also diverting financial resources from and defrauding Complainant. Respondent was manifestly aware of Complainant’s rights in its trademarks when it undertook this action.
The Panel need not address additional grounds for a finding of bad-faith registration and use of the disputed domain name.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
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, <apacsalesforce.com>, be transferred to Complainant.
Frederick M. Abbott
Date: December 23, 2019