national arbitration forum

 

DECISION

 

Salesforce.com, Inc. v. Mandi Sun / Sun Man di / sunmandi

Claim Number: FA1105001389992

 

PARTIES

Complainant is Salesforce.com, Inc. (“Complainant”), represented by Alica Del Valle of Owen, Wickersham & Erickson, P.C., California, USA.  Respondent is Mandi Sun / Sun Man di / sunmandi (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <salesforcesolution.com> and <g3force.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on May 20, 2011.  The Complainant was submitted in both the Chinese and English languages.

 

On May 23, 2011, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <salesforcesolution.com> and <g3force.com> domain names are registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the names.  HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 1, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@salesforcesolution.com, and postmaster@g3force.com.  Also on June 1, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

The Respondent has submitted correspondence which does not meet the requirements of a Response.  Accordingly it cannot be considered as such.   Notwithstanding the spirit of fairness sans equity the essence of the correspondence will be taken into account in the determination of this matter.

 

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable. Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <salesforcesolution.com> domain name is confusingly similar to Complainant’s SALESFORCE.COM mark.

Respondent’s <g3force.com> domain name is confusingly similar to Complainant’s FORCE.COM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <salesforcesolution.com> and <g3force.com> domain names.

 

3.    Respondent registered and used the <salesforcesolution.com> and <g3force.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Salesforce.com, Inc., was founded in 1999 as a customer relationship management business based upon the delivery of enterprise applications through a website rather than through software systems.  Complainant owns several trademark registrations for its SALESFORCE.COM mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,684,824 issued February 4, 2003), and with the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 3486871 issued July 28, 2004).  Complainant also owns trademark registrations for its FORCE.COM mark with the USPTO (Reg. No. 3,592,166 filed July 30, 2007; issued March 17, 2009) and SIPO (Reg. No. 955779 issued January 25, 2008).

 

Respondent, Mandi Sun / Sun Man di / sunmandi, registered the <salesforcesolution.com> and <g3force.com> domain names on March 10, 2008 and April 30, 2010 respectively.  Respondent’s domain names resolve to websites that appear to be those of Complainant’s, while purporting to offer the same or similar services as Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has presented sufficient evidence indicating that it has rights in the SALESFORCE.COM (e.g., USPTO Reg. No. 2,684,824 issued February 4, 2003) and (e.g., SIPO Reg. No. 3486871 issued July 28, 2004), and FORCE.COM (USPTO Reg. No. 3,592,166 filed July 30, 2007; issued March 17, 2009) and (SIPO Reg. No. 955779 issued January 25, 2008) marks under Policy ¶ 4(a)(i) through its trademark registrations of those marks with the USPTO and SIPO.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

Next, the Panel must examine whether the domain names at issue are confusingly similar to Complainant’s marks.  In doing so the Panel notes that the <salesforcesolution.com> domain name contains Complainant’s mark entirely while adding the generic term “solution.”  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).  See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel further notes that the <g3force.com> domain name is comprised of a prefix containing the letter “g” and the number “3” while fully encompassing Complainant’s FORCE.COM domain name.  The Panel also finds that Respondent’s <g3force.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See supra Sutton Group Fin. Servs. Ltd. v. Rodger; see also supra Am. Online, Inc. v. iDomainNames.com; see also supra Trip Network Inc. v. Alviera.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <salesforcesolution.com> and <g3force.com> domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant alleges that Respondent has not been authorized to use the SALESFORCE.COM and FORCE.COM marks, nor does Respondent have any rights in the marks.  Complainant points to the WHOIS information to argue that Respondent is not commonly known by the disputed domain name.  The Panel notes that the WHOIS information identifies “Mandi Sun / Sun Man di / sunmandi” as the registrant of the domain names.  The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant argues that Respondent is using the domain names to target Complainant’s customers by marketing consulting, implementation, customization, training, and integration services related to Complainant’s own services.  Complainant contends that Respondent’s websites contain elements and logos from Complainant’s website to add to the confusion of Internet users.  Complainant further asserts that Respondent offers and advertises “‘permanent’ free licenses for Complainant’s FORCE.COM developer platform in exchange for attending one of Respondent’s training seminars.”  The Panel finds that Respondent’s use of the disputed domain names to attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

 

Complainant has argued that Respondent is using the domain names to pass itself off as Complainant by using Complainant’s marks and logos on the resolving websites as well as purportedly offering the same or similar services.  The Panel notes that such use inherently disrupts Complainant’s business as it delays or impedes Complainant’s legitimate customers and potential customers from finding Complainant’s services and products.  Therefore, the Panel finds that Respondent’s use of the disputed domain names to pass itself off as Complainant in commerce is evidence that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Further, Complainant argues that Respondent receives commercial compensation from its use of the domain names at issue, and that as such Respondent has registered and used the domain name in bad faith.  Complainant alleges and provides UDRP case precedent to show that passing off has been deemed bad faith under Policy ¶ 4(b)(iv) in the past, and argues that this should be the case now.  The Panel agrees and finds that Respondent’s use of the domain names to pass itself off as Complainant is evidence that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <salesforcesolution.com> and <g3force.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  June 27, 2011

 

 

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