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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

salesforce.com, inc. v. WhoisGuard Protected, WhoisGuard, Inc. / James jamie, MCR

Case No. D2020-1861

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 WhoisGuard Protected, WhoisGuard, Inc., Panama / James jamie, MCR, United States.

2. The Domain Name and Registrar

The disputed domain name <salesforce-au.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2020, 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 July 21, 2020 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 21, 2020.

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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 14, 2020. 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 is a United States corporation which was founded in 1999 and provides customer relationship management services and a variety of other cloud-based software-as-a-service products to over 150,000 companies worldwide.

The Complainant owns registrations in various jurisdictions, including the United States trademark SALESFORCE (Reg. No. 2964712, registered on July 5, 2005), the international trademark SALESFORCE (Reg. No. 910077, registered on March 14, 2006) and the United States trademark SALESFORCE.COM (Reg. No. 2684824, registered on February 4, 2003).

The Complainant further holds the domain name <salesforce.com> under which the official website of the Complainant is available. The Complainant holds several other domain names incorporating the SALESFORCE trademark. The Complainant advertises and sells its services through its <salesforce.com> domain name.

The disputed domain name was registered on June 3, 2020 and resolved to a website where services relating to customer relationship management were offered. From email addresses incorporating the disputed domain name, the Respondent impersonated personnel and billing points of contact of the Complainant, and used these email addresses to send emails to a particular customer of the Complainant requesting payment of purported outstanding invoices, and induced such payments by that customer to the Respondent. In the meantime, the website has been deactivated.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the SALESFORCE and SALESFORCE.COM trademarks.

The SALESFORCE and SALESFORCE.COM trademarks are wholly reproduced in the disputed domain name <salesforce-au.com>.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). Hence, the confusing similarity between the Complainant’s SALESFORCE and SALESFORCE.COM trademarks and the disputed domain name is not dispelled by the addition of the term “au”, which stands for the two-letter country code for Australia.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.

The Respondent used the disputed domain name to host a website that offered the same or similar services as the Complainant. The website has been deactivated in the meantime. Moreover, the Complainant has credibly demonstrated that the Respondent used the disputed domain name as well as email addresses using the “@salesforce-au.com” extension to conduct a phishing and fraud scheme. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name.

The evidence submitted by the Complainant supports a finding that the Respondent was engaged in an attempt to pass itself off as the Complainant to induce the Complainant’s customers into paying the Respondent’s fake invoices for the latter’s own benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466).

Accordingly, the Complainant has also fulfilled 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 <salesforce-au.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: September 28, 2020

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