salesforce.com, inc. v. Bluehost.com / Bluehost Inc
Claim Number: FA1111001416664
Complainant is salesforce.com, inc. (“Complainant”), represented by Alica Del Valle of salesforce.com, inc., California, USA. Respondent is Bluehost.com / Bluehost Inc (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <app-exchange.com>, registered with FastDomain Inc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 22, 2011.
On November 23, 2011, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <app-exchange.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 November 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@app-exchange.com. Also on November 28, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on December 14, 2011.
On December 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns a U.S. Federal Trademark Registration and numerous International Trademark Registrations for APPEXCHANGE in connection with its online marketplaces for buying and selling on-demand applications, application service provider (ASP) services, and related business products and services , including the following:
APPEXCHANGE United States (Registration No. 3,363,318, filed August 31, 2005, and registered January 1, 2008) in International Classes 35, 42
APPEXCHANGE Australia (Registration No. 907,970, filed February 6, 2006, and registered on July 26, 2007) in International Classes 35, 42
APPEXCHANGE Brazil (Registration No. 828,278,148, filed February 23, 2006, and registered on March 25, 2008) in International Class 35
APPEXCHANGE Brazil (Registration No. 828,278,210, filed February 23, 2006, and registered on May 27, 2008), in International Class 42
APPEXCHANGE Canada (Registration No. 757,752, filed February 8, 2006, and registered on January 25, 2010), in International Classes 35, 42
APPEXCHANGE Chile (Registration No. 764,916, filed February 9, 2006, and registered on August 16, 2006) in International Class 35
APPEXCHANGE Chile (Registration No. 764,917, filed February 9, 2006, and registered on August 16, 2006) in International Class 42
APPEXCHANGE China (PRC) (Registration No. 907,970, filed February 6, 2006, and registered on February 6, 2006) in International Classes 35, 42
APPEXCHANGE European Union (Registration No. 907,970, filed February 6, 2006, and registered on December 13, 2007) in International classes 35, 42
APPEXCHANGE Israel (Registration No. 202,998, filed August 13, 2007, and registered on March 8, 2009) in International Class 35
APPEXCHANGE Israel (Registration No. 202,997, filed August 13, 2007, and registered on March 8, 2009) in International Class 42
APPEXCHANGE Japan (Registration No. 907,970, filed June 6, 2006, and registered on October 10, 2008) in International Classes 35, 42
APPEXCHANGE Mexico (Registration No. 947,673, filed November 21, 2005 and registered on August 16, 2006) in International Class 35
APPEXCHANGE Mexico (Registration No. 945,857, filed November 21, 2005 and registered on July 28, 2006) in International Class 42
APPEXCHANGE Singapore (Registration No. 907,970, filed on February 6, 2006 and registered on February 22, 2008) in International Classes 35, 42
APPEXCHANGE South Korea (Registration No. 907,970, filed on February 6, 2006 and registered no June 3, 2008) in International Classes 35, 42
APPEXCHANGE Switzerland (Registration No. 907,970, filed on February 6, 2006, and registered on June 28, 2008) in International Classes 35, 42
APPEXCHANGE WIPO (Registration No. 907,970, filed on February 6, 2006 and registered on February 6, 2006) in International Classes 35, 42.
Complainant created the <appexchange.com> domain name on or about September 6, 2005 and launched its <appexchange.com> website in 2006. Since its launch in 1999, Complainant’s websites have received considerable traffic. Currently, Complainant frequently exceeds 500 million transactions per day through its websites.
Complainant has continually expanded the scope of its innovative offerings, including by (1) creating a proprietary development platform, (2) launching a proprietary online marketplace for on demand applications, development tools, and related services, known as APPEXCHANGE, (3) creating a social networking-based collaboration application and developer platform, and (4) acquiring a number of companies, including Jigsaw, Heroku, DimDim, Manymoon and Radian6, whose innovative offerings complemented and/or augmented its own. In line with its innovative business model and continued growth, Complainant has dedicated a great deal of time, energy and money to strategically acquiring domain names and developing websites that correspond to and/or complement its offerings.
Complainant’s market presence has expanded into key markets throughout the world, including Latin America, France, Germany, Italy, Spain, UK, Netherlands, Sweden, Japan, Australia, Taiwan, Korea, Japan, and China. Complainant has registrations on file in the U.S. and nearly 40 other countries for the APPEXCHANGE mark with first use in commerce dating to January of 2006.
In addition to extensive media coverage, Complainant has received a number of industry awards and accolades, including being named to FORBES Magazine’s “100 Most Trustworthy Companies” list (2010), ranked number 4 in 2010 and number 3 (behind Google) in 2009 on FORTUNE Magazine’s “100 Fastest-Growing Companies” list; and awarded myriad industry awards, such as consecutive CODIE Awards for Best CRM (for its SALESFORCE CRM Suite) and Best On-Demand Platform (for its proprietary platform) (2002-2010) and InfoWorld Technology of the Year awards for its SALESFORCE CRM Suite (2004-2007). Most recently, FORBES Magazine named Complainant the most innovative company in the world, ahead of Amazon.com, Google, and Apple.
The registrations listed above together with Complainant’s five years of continuous use of the APPEXCHANGE mark in commerce prior to the creation of Respondent’s <app-exchange.com> domain name, extensive advertising, promotion and media coverage thereof, and its ownership and use of the <appexchange.com> domain and the <appexchange.com> and <salesforce.com> websites through which Complainant operates a large segment of its business, prove that Complainant had developed extensive goodwill in its APPEXCHANGE mark long before Respondent’s registration of the <app-exchange.com> domain name. Accordingly, these facts establish Complainant’s common law rights in the APPEXCHANGE mark.
Respondent’s <app-exchange.com> domain name is confusingly similar to Complainant’s APPEXCHANGE mark.
Respondent’s behavior does not give rise to rights or legitimate interests pursuant Policy ¶ 4(a)(ii). Indeed, Respondent is depriving Complainant of its rightful ownership and control of its own name.
Respondent’s registration and use of the <app-exchange.com> domain name is in bad faith.
B. Respondent
Respondent claims it has a legitimate bona fide business started seven (7) months prior to this claim. app-exchange.com is a domain name that is owned by App Port LLP, a partnership company registered in the Republic of Singapore. It was conceived to serve as a platform for mobile application developers in Southeast Asia for the Windows Phone 7 market place. App Port LLP has a direct contract with Microsoft Inc., dated 20 April 2011, as part of its Global Publishing Program.
app-exchange
does not profit from Complainant's <appexchange.com> nor does it mislead
developers in any way.
While App Port is a company, it is more frequently known as app-exchange.com to Microsoft Inc and its
developers. We have stated clearly the intent of the use of the website and its
terms and conditions can be found listed on the website here: <app-exchange.com/distribution-agreement/>. It specifically targets
mobile developers for the Windows Phone Market Place. We act as an agent to
submit their apps to the market place unlike Complainant's intention - a
marketplace for cloud computing applications and services for its own
customers.
In addition, Complainant's <appexchange.com> is mainly a business to business community focus while <app-exchange.com> is mainly business to consumer focus. Developers that intended to use Complainant's <appexchange.com> but accidentally land on Respondent’s app-exchange site will clearly know the difference in services and offering, our site therefore, does not misleadingly divert developers or consumers. Neither does it tarnish Complainant's reputation or trademark. Respondent believes that it is DISTINCT and in different fields and Respondent's users are extremely unlikely to be confused as to whether app-exchange.com is associated with appexchange.com in any way.
Respondent further states that creating <app-exchange.com> was for a legitimate business and not for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs. It does not engage in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner. Respondent did not register the domain name to primarily disrupt Complainant’s business neither did it set up the domain to attract their users to Respondent’s website for commercial gain by creating a likelihood of confusion with the trademark owner's domain.
In addition, being based in Southeast Asia, Respondent claims that it is not familiar with Complainant’s existence and its offerings and any similarities created between app-exchange.com and appexchange.com is unintended.
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."
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.
Complainant, salesforce.com, inc., asserts that it began operating in 1999 and provides enterprise applications through its websites at the <appexexchange.com> and <salesforce.com> domain names. Complainant asserts that it launched its cloud-computing marketplace in 2006. Complainant provides a copy of its trademark registration certificate with the United States Patent and Trademark Office (“USPTO”) for its APPEXCHANGE mark (Reg. No. 3,363,318 registered January 1, 2008) in addition to a list of several other registrations of trademarks all over the world including China, Singapore, South Korea and Japan.
Based on this information, the Panel concludes that Complainant owns rights in the APPEXCHANGE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s <app-exchange.com> domain name is confusingly similar to Complainant’s APPEXEXCHANGE mark because the disputed domain only adds a hyphen and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
The Panel finds that these additions fail to adequately distinguish the disputed domain name and concludes that Respondent’s <app-exchange.com> domain name is confusingly similar to the APPEXCHANGE mark pursuant to Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); 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 notes that Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <app-exchange.com> domain name. Further, that Respondent is not connected or affiliated with Complainant nor is Respondent licensed or authorized to use Complainant’s APPEXCHANGE mark. The WHOIS information lists “Bluehost.com / Bluehost Inc” as the registrant of the disputed domain name.
Respondent asserts that it is known to Microsoft Inc, its business partner, by the <app-exchange.com> domain name, even though Respondent’s company name is “App Port.” The PDF accompanying Respondent’s Response shows that App Port is Microsoft’s business partner and is known to Microsoft as App Port. The PDF document also shows that Respondent’s market includes 13 countries in East Asia, including Singapore and does show that App Port uses a web site which contains Complainant’s mark to provide its service. Indeed, Microsoft seems to be a significant client for the Respondent.
The Panel is struck by the fact that Respondent does not define the 13 countries in which it markets its services. However, suffice it to say that a review of the same PDF document reveals that the available languages include English, Japanese, Korean and simplified Chinese. This confirms that the Respondent’s market stretches beyond Southeast Asia and fully into East Asia
Complainant registered its mark with the USPTO in August 31, 2005. Complainant has also registered its trademark, and been active, in Singapore, China, Japan and South Korea, since 2006. Complainant, therefore, not only has an interest in the East Asia market but has registered its trademarks in East Asia at least 5 years before Respondent. Respondent with reasonable diligence should have been aware of the existence of Complainant’s trademarks, particularly in Singapore.
The Panel conducted a Google search using the <appexchange.com> and the <app-exchange.com> and has concluded that had Respondent conducted such a search, it would have become aware of Complainant’s interest in the trademark. If Respondent did not do this, then Respondent has been less than prudent and the Panel cannot reward such imprudence.
Complainant does not argue that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. However, Complainant contends that Respondent uses the <app-exchange.com> domain name to offer competing services. Complainant presents a screenshot of the resolving website that states “App Exchange helps mobile developers publish their apps into the Windows Phone Marketplace.” Complainant alleges that it offers the same services. Respondent’s is using the <app-exchange.com> domain to resolve to the <appexchange.com> website which features a mobile application publishing service that directly competes with Complainant’s APPEXCHANGE services.
The Respondent does offer at least one of the services that Complainant offers, and does so in the East Asia market. While Respondent’s market is at the moment limited to the Window’s phone market place and mainly provides a business to consumer service, and while Complainant’s is mainly a business to business community focus, there is nothing to prohibit Respondent at a later date from expanding services and market.
Complainant’s class 35 trademark registration in Singapore includes the following language: “the bringing together for the benefit of others, of a variety of computer software and on-demand applications (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a website in the Global Communications network.”
Complainant’s class 35 trademark registration in South Korea includes the following language: “on-line sales agencies for buying, selling and exchanging computer software and on-demand applications.”
Complainant’s other registrations in China, Japan and the WTO contain similar language.
The Panel has visited both websites and can very easily distinguish Complainant’s from Respondent’s. However, the Panel has the luxury of knowing of the existence of both web sites. This will not always be the case for an unsuspecting visitor. The Panel is of the view that anyone visiting the Respondent’s webpage by error will only become aware of the differences in services offered by the 2 sites once that person has been informed of the existence of the Complainant’s site. Absent an opportunity to compare, the visitor will not have the benefit of comparing Complainant’s service. There is nothing on Respondent’s site to indicate to the visitor that it is not Complainant.
The Panel finds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel also finds that Respondent is not commonly known by the <app-exchange.com> domain name under Policy ¶ 4(c)(ii) as it has not demonstrated that its customers, other than maybe Microsoft, associated the Respondent with the domain name.
Based on this evidence, the Panel finds that Respondent is not commonly known by the <app-exchange.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel further determines that Respondent is competing with Complainant at the moment in East Asia and therefore finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <app-exchange.com> domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Finally, Complainant accuses Respondent of engaging in typosquatting when it registered the <app-exchange.com> domain name. Complainant argues that the only difference between Complainant’s mark and the disputed domain name is the hyphen and the gTLD. Therefore, Complainant alleges that Respondent attempted to take advantage of a common error that Internet users may make when attempting to find Complainant online.
The Panel agrees. The Panel holds that Respondent is guilty of typosquatting, which evidences Respondent’s lack of rights and legitimate interests in the <app-exchange.com> domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Registration and Use in Bad Faith
Complainant argues that Respondent’s registration and use of the <app-exchange.com> domain name disrupts Complainant’s business and constitutes bad faith registration and use. Complainant claims that Respondent directly competes with Complainant by offering competing services on the resolving website. The evidence, corroborated by the Panel’s review of Complainant’s and Respondent’s web sites, show that the disputants compete in services related to marketing of applications in the East Asia market which is a lucrative market.
The Panel agrees with Complainant and determines that Respondent registered and uses the <app-exchange.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant asserts that Respondent registered and uses the disputed domain name for the purpose of commercially benefiting from Internet user confusion as to Complainant’s affiliation with the disputed domain name, constituting bad faith registration and use. Complainant argues that Respondent commercially gains by receiving fees for its services. Complainant claims that, by using Complainant’s mark in the disputed domain name, Respondent confuses Internet users into believing Complainant is affiliated with the domain name.
The Panel concludes that Respondent registered and uses the <app-exchange.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). It is inconceivable that Respondent did not know of Complainant’s interest in, and prior rights to, the trademark. It is relevant to restate that Complainant registered the trademark in 2005 at the USPTO and in 2006 in Singapore, China, Japan and South Korea; some 5 years before the Respondent registered the disputed domain name. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); 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 also finds that Respondent registered and uses the <app-exchange.com> domain name in bad faith under Policy ¶ 4(a)(iii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the APPEXCHANGE mark.
The Panel has alluded to this argument above. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) since it is inconceivable that Respondent was not aware of the Complainant’s interest in, and prior rights to, the trademark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <app-exchange.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: January 12, 2012
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