WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

salesforce.com, inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-1926

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 Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <amazonsalesforce.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, 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 June 24, 2021 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 June 25, 2021.

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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 29, 2021. 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 corporation headquartered in San Francisco, California, United States, founded in 1999 and provider of a customer relationship management (“CRM”) platform and a variety of other cloud-based software-as-a-service products to over 150,000 companies worldwide.

As of Fiscal Year 2020, the Complainant had USD 17.1 billion in revenue and over 49,000 employees, having the SALESFORCE trademark been ranked the 41st most valuable global brand by BrandZ in 2020, valued at around USD 30.5 billion, and 58th best global brand by Interbrand in 2020 with an estimated value over USD 10.7 billion (Annex 4 to the Complaint).

The Complainant is the owner of the domain name <salesforce.com>, registered on December 1, 1998 and in use since 1999 (Annexes 6 and 7 to the Complaint) and of the following, amongst others, trademark registrations (Annex 5 to the Complaint):

- United States Trademark Registration No. 2964712 for the word mark SALESFORCE, filed on February 10, 2004, registered on July 5, 2005 and successively renewed, in classes 35 and 42, claiming first use in commerce on September 27, 1999;

- United States Trademark Registration No. 3138749 for the word mark SALESFORCE, filed on September 14, 2005, registered on September 5, 2006 and successively renewed, in class 9, claiming first use in commerce since 2005; and

- International Trademark Registration No. 910077 for the word mark SALESFORCE, registered on March 14, 2006 in international classes 9, 35 and 42.

The disputed domain name <amazonsalesforce.com> was registered on February 11, 2021, and presently redirects Internet users to various websites including online shops. The disputed domain name has also been placed at Sedo domain name marketplace for a minimum offer of USD 899 (Annex 11 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be the world’s leading CRM platform, providing CRM and a variety of other cloud-based software-as-a-service products to over 150,000 companies worldwide, under the SALESFORCE trademark which it has used since 1999 and today has become one of the world’s most valuable brands.

Given that the disputed domain name also incorporates the “Amazon” expression, the Complainant has obtained written consent from an authorized representative of Amazon Technologies, Inc., owner of several trademark registrations for AMAZON, to present this proceeding and request the transfer of the disputed domain name to the Complainant (Annex 12 to the Complaint).

According to the Complainant, the disputed domain name also appears to be associated with email hosting, which email hosting is provided by Amazon, what indicates that the Respondent could be using the disputed domain name to impersonate the Complainant or Amazon.

Furthermore, the Complainant believes that the Respondent is also the registrant of other domain names which correspond to identical or confusingly similar variations of well-known third-party trademarks such as <amazonprimeamazon.com>, <americnexoress.com> and <barstoolshorts.com> (Annex 14 to the Complaint), as well as the named Respondent in past UDRP cases such as Nationwide Mutual Insurance Company v. Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2144; Discover Financial Services v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues, Privacy Limited, WIPO Case No. D2019-0666; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0333.

Under the Complainant’s view, the disputed domain name reproduces its trademark in its entirety, not preventing the addition of the third-party AMAZON trademark a finding of confusing similarity under the Policy.

Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Respondent is not associated or affiliated with the Complainant;

(ii) the Respondent has never been authorized by the Complainant to use the SALESFORCE trademark in any manner;

(iii) the Respondent registered the disputed domain name well after the Complainant registered and used the SALESFORCE trademark, having the Respondent wilfully adopted the Complainant’s trademark within the disputed domain name in an attempt to unfairly capitalize on the valuable goodwill the Complainant
has built in its SALESFORCE trademark;

(iv) the disputed domain name does not reflect the Respondent’s common name or tradename; and

(v) the disputed domain name has been used in connection with various revolving content, including advertisements for various potentially-malicious software downloads and purported security verification checks, and various other content monetized through various web traffic monetization platforms, and is being offered for sale, what does not characterize a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.

Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent has advertised the disputed domain name for sale to the general public; also preventing the Complainant and Amazon to reflect the global strategic partnership between them in the disputed domain name. Furthermore, the Complainant contends that the Respondent has engaged in a pattern of bad faith conduct registering domain names that infringe third parties’ well-known trademarks, as recognized by past UDRP panels; and has been using the disputed domain name to also profit from web traffic monetization fees; being a further indication of the Respondent’s bad faith its choice to retain a proxy service to conceal its identity.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the 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.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the registered SALESFORCE trademark.

The Panel finds that the disputed domain name reproduces the Complainant’s SALESFORCE trademark entirely. The addition of the trademark AMAZON does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.12.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that the Respondent is not associated or affiliated with the Complainant; nor has the Respondent ever been authorized by the Complainant to use the SALESFORCE trademark in any manner.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the absence of any rights or legitimate interests in the disputed domain name.

Furthermore, the use made of the disputed domain name in connection with various revolving content (some of which may be potentially malicious) and/or various web traffic monetization platforms cannot characterize a bona fide offering of goods or services under the Policy.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

The second element of the Policy has therefore been established.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name 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 disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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 the Respondent’s website or location.

The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;

(ii) the Respondent has used the disputed domain name in connection with various revolving content (some of which may be potentially malicious) and/or various web traffic monetization platforms;

(iii) the Respondent has placed the disputed domain name for sale for a minimum price of USD 899 which is an amount likely in excess of out-of-pocket costs incurred in the registration of the disputed domain name;

(iv) the Respondent has engaged in a pattern of bad faith conduct registering domain names that target third parties’ well-known trademarks, as recognized by past UDRP panels; and

(v) the choice to retain a privacy protection service so as to conceal its identity.

For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The third element of the Policy has therefore been established.

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 <amazonsalesforce.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: August 12, 2021