WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salesforce.com, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. DCO2019-0011
1. The Parties
The Complainant is Salesforce.com, Inc. of San Francisco, California, United States of America (“United States” or “US”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp., of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <salesforce.co> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 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 March 22, 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 March 22, 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 March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on April 17, 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 is a United States corporation with its global headquarters in California. It was founded in 1999 and provides customer relationship management services and a variety of other cloud-based software as a service platform to over 150,000 companies worldwide. The SALESFORCE brand was ranked the 75th best global brand by Interbrand in 2018, with an estimated value over USD 6.4 million.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word SALESFORCE in various jurisdictions throughout the world, including the following:
- the European Union Trademark for the word SALESFORCE with registration number 008433021, registered on March 29, 2012,
- the International Trademark for the word SALESFORCE, having registration number 0910077, registered on March 14, 2006,
- the US Trademark for the word SALESORCE with registration number 3,138,749 registered as of September 5, 2006.
The Complainant is the owner of numerous domain names consisting of the term SALESFORCE, for instance, <salesforce.com>, <salesforce.org>, <salesforce.mobi>, and <salesforce.cloud>.
The disputed domain name was registered on September 28, 2011, and currently redirects to a website purportedly used to convert documents from “.doc” to “.pdf” or from “.pdf” to “.doc”.
5. Parties’ Contentions
The Complainant argues that the disputed domain name contains the Complainant’s SALESFORCE mark in its entirety at the second-level of the disputed domain name. The only difference between the Complainant’s SALESFORCE trademark and the disputed domain name is the addition of the “.co” country code Top-Level Domain (“ccTLD”) extension.
With regard to rights or legitimate interests, the Complainant contends that the Respondent is not a licensee of the Complainant nor is it authorized to use the SALESFORCE trademarks. The disputed domain name does not reflect the Respondent’s common name or organization name. Moreover, the Complainant contends that, at the date of the Complaint, the disputed domain name resolved to various revolving content, including a website with a “Bad Gateway” 502 error message and websites attempting to distribute malware, including the “liveupgrade.theupgradeawesome-websitecontent.icu”, “get.securybrowse.com”, and “schedulerdata.com” websites and has previously resolved to parked pages containing pay-per-click advertising links associated with the Complainant and its good and services. The disputed domain name has also been used in efforts to perpetrate phishing and fraud against the Complainant and its customers through use of the “[...]@emea.salesforce.co” email address. More specifically, on May 17, 2018, the Complainant was alerted to a security incident involving an email sent from “[...]@emea.salesforce.co” requesting that a Salesforce customer pay a fraudulent invoice claiming to be from the Complainant. Accordingly, the Complainant concludes that the disputed domain name is not used in connection with any bona fide sale of goods or services and the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Furthermore, the Complainant argues that its SALESFORCE brand has achieved a level of recognition and fame such that the Respondent has no colorable argument that he is unaware of this brand. The Complainant contends that use of the Complainant’s well-known trademark to attract Internet users to the Respondent’s website in order to collect fees based on web traffic and click-through links is clear evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the SALESFORCE trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights.
Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.
Here the disputed domain name incorporates in its entirety the Complainant’s SALESFORCE trademarks.
It is well accepted by UDRP panels that a ccTLD, such as “.co”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark SALESFORCE and claims that the Respondent has no legitimate reason to acquire the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “salesforce”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970. Moreover, the Panel notes that previous UDRP panels have found that domain names identical to a complainant’s trademark (as it is the case here) carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark SALESFORCE in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its SALESFORCE trademark is widely used in commerce well before the registration of the disputed domain name. The website associated with the disputed domain name contained links related to the services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark SALESFORCE. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.
The fact that the disputed domain name is identical to the Complainant’s trademarks indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by, or affiliated with the Complainant’s services. As held in a similar case, “[t]he disputed domain name differs from the Complainant’s trademark only in the selection of the Top-Level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion” (Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186).
As regards the use of the disputed domain name, given that the Respondent has registered a disputed domain name that is identical to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135.
In addition, according to the unrebutted allegations by the Complainant, it was alerted to a security incident involving an email sent from “[...]@emea.salesforce.co” requesting that a Salesforce customer pay a fraudulent invoice claiming to be from the Complainant. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0 and for similar findings bioMérieux v. Joseph Gullett, Digicel, WIPO Case No. D2017-2268).
Further, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the disputed domain name was used also to redirect Internet traffic to a website displaying pay-per-click advertisements for salesforce related services. Given the identity between the SALESFORCE trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of SALESFORCE services. See Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC, WIPO Case No. D2013-0181.
In addition, it results from the record that the disputed domain name was put to sale at a partner site for an amount of USD 500, which is in excess of registration costs. Having in view the circumstances of this case, the Panel considers that the disputed domain name was registered and is being used in bad faith by the Respondent as per paragraph 4(b)(i) of the Policy, for the purpose of “transferring the domain names […], for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name”. See for similar findings Aktiebolaget Electrolux v. Li Bing Yu, WIPO Case No. D2012-1106.
The following factors were also considered by the Panel as further indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the apparent change of the content of the website to which the disputed domain name resolves after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith), and V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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.co> be transferred to the Complainant.
Date: May 1, 2019