Salesforce.com, Inc. v. hutcheson direct
Claim Number: FA1208001460314
Complainant is Salesforce.com, Inc. (“Complainant”), represented by Alica Del Valle of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is hutcheson direct (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com>, registered with Godaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2012; the National Arbitration Forum received payment on August 28, 2012.
On August 30, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2012 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@800salesforce.com, postmaster@800-salesforce.com, postmaster@1-800-salesforce.com, and postmaster@1800salesforce.com. Also on August 31, 2012, 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.
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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, without the benefit of a formal response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in emails of 8/31/12 and 9/26/12 to the Forum, Respondent agreed to transfer the disputed domain names to Complainant.
Complainant, Salesforce.com, Inc., began using the SALESFORCE.COM mark in 1999 in connection with software and related services in the fields of customer relationship management, sales automation and contact management, enterprise social networks and collaboration tools, social media monitoring and engagement, and cloud application customization and development. Complainant owns multiple trademark registrations for the SALESFORCE.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,964,712 registered July 5, 2005). Respondent, hutcheson direct, registered the disputed domain names on October 11, 2012 and March 6, 2012.
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.
In view of Respondent's failure to submit a formal 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.”).
Complainant has multiple trademark registrations for the SALESFORCE.COM mark with the USPTO (e.g., Reg. No. 2,964,712 registered July 5, 2005). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“[a]s the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Complainant has established rights in the SALESFORCE.COM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names are confusingly similar to Complainant’s SALESFORCE.COM mark. The disputed domain names combine Complainant’s mark with numbers and/or hyphens. Such additions do not adequately distinguish the disputed domain names from Complainant’s mark. See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also 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"). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SALESFORCE.COM mark according 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).
Complainant claims that Respondent cannot establish rights in the disputed domain names under Policy ¶ 4(c)(ii) because Respondent is not known by the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names. Complainant asserts that it did not license or otherwise permit Respondent to use Complainant’s SALESFORCE.COM mark. Respondent did not respond to this case or present any affirmative evidence that it is known by the disputed domain names. Moreover, the WHOIS information identifies “hutcheson direct” as the registrant of the disputed domain names. The Panel finds that Respondent is not commonly known by the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names for the purpose of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (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).
In regards to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), Complainant contends that Respondent uses the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names to resolve to parked websites. Complainant claims that the <800salesforce.com>, <800-salesforce.com>, and <1-800-salesforce.com> domain names contain competing hyperlinks. The websites resolving from these three disputed domain names feature hyperlinks regarding “Sales Force Automation Services,” “Salesforce Migration,” and “CRM,” which all relate to Complainant’s business. The <1800salesforce.com> domain name resolves to the registrar’s official website where the registrar’s unrelated services are offered. The provision of competing hyperlinks and the hosting of an unrelated website do not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel finds that Respondent does not have rights and legitimate interests in the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant argues that Respondent first demonstrates its bad faith registration and use under Policy ¶ 4(b)(i). Complainant claims that Respondent contacted Complainant and offered to sell the disputed domain names to Complainant. However, Respondent only mentions the <800salesforce.com> domain name in the message. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel held that “[r]espondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Thus, the Panel finds that Respondent’s offer to sell the <800salesforce.com> domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant does not make a specific reference to any of the other paragraphs of Policy ¶ 4(b). Complainant only argues that Respondent’s parking of the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names is evidence of bad faith registration and use. The Panel infers that Respondent commercially benefits from the hosting of competing hyperlinks and the registrar’s website offering unrelated services, either through click-through fees or free hosting services. The inclusion of Complainant’s SALESFORCE.COM mark in the disputed domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names. The Panel finds that Respondent registered and uses the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Complainant argues that Respondent registered the disputed domain names in bad faith because Respondent had constructive and actual knowledge of Complainant’s rights in the SALESFORCE.COM mark. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <800salesforce.com>, <800-salesforce.com>, <1-800-salesforce.com>, and <1800salesforce.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 10, 2012
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