salesforce.com, inc. v. Domain Admin / Internet Venture Holdings, Inc. (ivh.com)
Claim Number: FA1111001416951
Complainant is salesforce.com, inc. (“Complainant”), represented by Alica Del Valle of salesforce.com, inc., California, USA. Respondent is Domain Admin / Internet Venture Holdings, Inc. (ivh.com) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forces.com>, registered with Moniker Online Services, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Hon. Neil Anthony Brown QC, Hon. James A. Carmody (Ret.), and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2011; the National Arbitration Forum received payment on November 23, 2011.
On November 23, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <forces.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@forces.com. Also on November 23, 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.
Complainant’s Additional Submission and payment was received timely on December 19, 2011, but Complainant’s Additional Submission annexes were received after the deadline for submissions on December 20, 2011. Therefore, the Forum does not consider this submission to be compliant with Forum Supplemental Rule 7, nevertheless the Panel will consider them. Respondent submitted a timely Additional Submission on December 27, 2011.
On December 28, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Neil Anthony Brown QC, Hon. James A. Carmody (Ret.), and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant (Including Complainant’s Additional Submission)
Complainant, salesforce.com, began its business in 1999. It describes its business activities to include such things as providing a “proprietary online marketplace for on-demand applications, development tools, and related services” and “creating a social networking-based collaboration application and developer platform.” Complainant holds trademark registrations in a number of countries for its SFORCE, FORCE and FORCE.COM marks. Complainant contends that through its various business activities, it has received significant public recognition and awareness throughout its industry, including many awards.
Complainant states that the <forces.com> domain name was acquired by Respondent in June 2008. Complainant states that well before the time Respondent acquired the domain name, Complainant’s “FORCE and FORCE.COM brands were already well-known throughout the world as part of the salesforce.com unique business model.”
Complainant states that the <forces.com> domain name is confusingly similar to its FORCE and FORCE.COM marks because the only difference is the addition of the letter “s.” Complainant states that the domain name is confusingly similar to its SFORCE mark because it simply adds the “s” to the word “force.” Thus, Complainant states that Respondent is guilty of typosquatting—the deliberate misspelling of the mark of another.
Complainant contends that Respondent does not have rights or legitimate interests in the domain name because it resolves to a website that lists the domain name for sale. Complainant disputes Respondent’s contention regarding its intended use of the <forces.com> domain name.
Finally, Complainant contends that Respondent registered and uses the domain name in bad faith because it had actual or constructive knowledge of Complainant’s rights before the domain name was registered. Moreover, Complainant contends that Respondent is a “professional domain name seller,” has exhibited a pattern of infringement on the trademark rights of others, and has offered to sell the domain name to Complainant. All of these factors, according to Complainant, establish bad faith.
B. Respondent (Including Respondent’s Additional Submission)
Respondent’s sole owner, Edward O’Keefe, acquired the domain name in April 2007. It was acquired by Respondent in June 2008. Accordingly, Respondent states that through its predecessor, Mr. O’Keefe, it acquired the domain name before Complainant began using the FORCE.COM domain name and before Complainant registered the FORCE.COM trademark.
Respondent contends that Complainant’s marks are neither famous nor distinctive. Furthermore, Respondent contends that the domain name at issue in this case is a common dictionary word.
Respondent states that it purchased the domain name because “it would be a valuable domain name for providing an interactive message board and forum website of interest to members of the armed forces.” Although Respondent states it began making preparations to use the domain name for this purpose, it encountered administrative difficulties in doing so.
Respondent denies that it knew or should have known of Complainant in April 2007 because Complainant did not own the <force.com> domain name in April 2007.
Respondent acknowledges that it has attempted to sell the domain name through a public auction which Respondent describes as a “legitimate means of recovering the fair market value of the domain name.”
The domain name <forces.com> is not identical or confusingly similar to any mark in which Complainant has rights.
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.
The Panel finds it unnecessary to determine whether Complainant has rights in any of the claimed marks—SFORCE, FORCE.COM or FORCE—because the Panel finds that the <forces.com> domain name is neither identical nor confusingly similar to any of the marks. The word “forces” is not identical to any of the marks. The only real issue before the Panel is whether the word “forces” is confusingly similar to one or more of the marks.
In considering whether a domain name is confusingly similar to a mark in which a complainant has rights, the question becomes whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.” Advance Magazine Publishers v. MSA, Inc. & Moniker Privacy Servs., D2007-1743 (WIPO Feb. 28, 2008). Another panel expressed the issue this way:
The concept of ‘confusingly similar’ lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar. The same thinking has been carried over into Decisions under the Policy because the words ‘identical or confusingly similar’ appear in Paragraph 4(a)(i) thereof.
Spark Networks USA, LLC v. Dennis Tesic, FA1411839 ( Nat. Arb. Forum Nov. 23, 2011). Moreover, “when determining whether . . . similarity may give rise to situations of confusion or false association, it is necessary to consider not only the degree of similarity of the terms in the strict sense but also the degree of distinctiveness of the mark given that, obviously, the greater the distinctiveness or originality of the registered mark, the greater the risk of confusion.” Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc., D2004-0688 (Nat. Arb. Forum Oct. 11, 2004).
Complainant is correct that in some cases the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. An example of this is found in Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). In that case, the respondent substituted a “k” for the letter “c” in the mark thus changing “ECOLAB” to “Ekolab.” The panel in Ecolab USA Inc. observed that the domain name was confusingly similar to the complainant’s mark because it was phonetically similar.
In Spark Networks USA, LLC the respondent added the letter “r” to the complainant’s mark, CHRISTIANMINGLE, creating the domain name, <christianmingler.com>. The Panel correctly found the domain name to be confusingly similar to the mark, holding that the “two words are, therefore, almost phonetically similar, as well as being visually similar, and they are especially similar conceptually.”
These cases are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.
An example of a decision where the changing of one letter in mark did not result in confusing similarity is Ecrush, Inc. v. Cox, Davis & Simpson, LLC, D2004-0552 (WIPO Sept. 11, 2004). There, the panel found no confusing similarity between the complainant’s mark, ESPIN THE BOTTLE, and the domain name <ispinthebottle.com>. Although the domain name changed the mark by only one letter, the panel found that the “one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase; on the contrary, the Disputed Domain Name and Respondent’s other domain names are everyday phrases incorporating the name of the parlor game.”
For all of the above reasons the Panel finds that Respondent’s <forces.com> domain name is not identical or confusingly similar to any of Complainant’s claimed marks within the meaning of Policy ¶ 4(a)(i).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <forces.com> domain name REMAIN WITH Respondent.
Hon. Neil Anthony Brown QC, Hon. James A. Carmody (Ret.),
and the Hon. Bruce E. Meyerson (Ret.), Panelists
Dated: January 5, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page