The Complainant is salesforce.com, inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <herkoapp.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 15, 2020, 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 January 16, 2020.
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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020.
The Center appointed Ian Blackshaw as the sole panelist in this matter on February 18, 2020. 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.
The Complainant is salesforce.com, inc. (“Salesforce” or “Complainant”), a corporation with its global headquarters in San Francisco, California, United States.
The Complainant, founded in 1999, is the world’s leading customer relationship management (CRM) platform and provides CRM and a variety of other cloud-based software as a service product to over 150,000 companies worldwide.
In addition to its San Francisco global headquarters, the Complaint has regional headquarters in Hyderabad, India, Tokyo, Japan, and Morges, Switzerland. Other major Salesforce offices are located in Chicago, Dublin, London, New York City, Sydney, and Toronto.
The Complainant has its services translated into over a dozen different languages.
As of the fiscal year 2019, the Complainant had USD 13.28 billion in revenue and 35,000 employees.
The well-known SALESFORCE brand was ranked the 75th best global brand by Interbrand in 2018, with an estimated value of over USD 6.4 million, and ranked as the 46th most valuable global brand by BrandZ in 2019. Evidence of this has been produced to the Panel.
The Complaint is based upon the Complainant’s trademark/service mark HEROKU, which was first used in the United States since at least as early as 2007, and has been registered in the United States since 2012. The Complainant owns registrations in jurisdictions around the world for the HEROKU mark, which include, but are not limited to, the following:
a. HEROKU (United States Reg. No. 4195781) in Class 42, used in commerce since October 2007 and registered on August 21, 2012;
b. HEROKU (International Reg. No. 1107528) in Class 42, registered on January 11, 2012;
c HEROKU (Australia Reg. No. 1478936) in Class 42, registered on July 9, 2012;
d. HEROKU (Israel Reg. No. 244916) in Class 42, registered on June 30, 2013;
e. HEROKU (Canada Reg. No. TMA853211) in Class 42 registered on June 12, 2013; and
f. HEROKU (Mexico Reg. No. 1293764) in Class 42, registered on June 27, 2012.
Copies and/or proof of the Complainant’s registrations for its HEROKU mark (collectively, the “HEROKU Mark”) have been provided to the Panel.
The Complainant also owns numerous domain names that include the HEROKU Mark (the “HEROKU Domains”), which include, but are not limited to, the following:
a. heroku.com (registered on June 14, 2007);
b. herokuapp.com (registered on September 18, 2010);
c. heroku-app.com (registered on January 17, 2015); and
d. heroku.app (registered on April 4, 2018).
The HEROKU Mark is used in connection with the Complainant’s cloud application platform that allows customers to build, deliver, monitor, and scale apps. Evidence, again, has been produced to the Panel.
The <heroku.com> domain name has been used in the Complainant’s business since as early as 2007 and has been continuously used and associated with the Complainant’s business since that time. This domain name directs Internet users to the Complainant’s website for its HEROKU product, which makes substantial use of the HEROKU Mark. Similarly, the <herokuapp.com> and <heroku-app.com> domain names redirect to this same website located at <heroku.com>.
Furthermore, the <herokuapp.com> domain is used extensively by the Complainant to provide sub-domains to its customers from which its customers host their applications built on the HEROKU platform.
The Complainant has promoted the HEROKU Mark globally, and the HEROKU goods and services are well publicized in the media. The HEROKU Mark has widespread recognition in the United States and worldwide. The goodwill generated by the Complainant’s marks and business practices has earned them praise from organizations and news outlets worldwide for being one of the most admired and innovative companies in the world.
The disputed domain name was registered by the Respondent on January 28, 2019, well after the HEROKU Mark was first used by the Complainant.
The disputed domain name redirects to various revolving content, including advertisements for various software downloads and purported security verification checks, all of which is monetized through various web traffic monetization platforms, such as <forwrdnow.com>, <7lyonline.com>, <givemeapplink.com>, and <givemethisoffer.com>.
The disputed domain name is also being advertised for sale through the Afternic domain name marketplace at a listed price of USD 999.
In each of the above cases, evidence has been produced to the Panel.
The Complainant makes the following assertions:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is identical or confusingly similar at the second level to the HEROKU Mark in which the Complainant has well-established rights as outlined above. See, e.g., Advance Magazine Publishers, Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The only difference between the Complainant’s HEROKU mark and the <herkoapp.com> disputed domain name is that the latter omits the letter “u” and reverses the position of the letters “o” and “k”, and includes the descriptive term “app” and the “.com” genetic Top-Level Domain (“gTLD”) extension.
The addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s HEROKU mark. See, e.g., Blue Sky Software Corp. v. Digital Sierra, Inc. and Abdullah Khan, WIPO Case No. D2000-0165.
Thus, the disputed domain name contains an obvious typographical variation of the HEROKU Mark as the predominant element of the disputed domain name, which is sufficient to show that the disputed domain name is identical or confusingly similar to the HEROKU Mark.
The addition of the descriptive term “app” merely exacerbates confusing similarity in this case, given that the HEROKU Mark is used in connection with an app-building platform and that the Complainant uses the virtually identical domain <herokuapp.com> for its customers’ apps.
Thus, the disputed domain name is identical or confusingly similar to the Complainant’s HEROKU Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not associated or affiliated with the Complainant.
The Respondent has never been authorized by the Complainant to use the HEROKU Mark in any manner, much less as part of the disputed domain name.
The Respondent has no legitimate interests in the disputed domain name, given that the disputed domain name was registered well after the Complainant had registered and/or used the HEROKU Mark and had established extensive goodwill. On information and belief, the Respondent willfully adopted the Complainant’s trademark within the disputed domain name in an attempt to unfairly capitalize on the valuable goodwill the Complainant has built in its HEROKU Mark.
The disputed domain name does not reflect the Respondent’s common name or organization name.
As discussed above, the disputed domain name is used in connection with various revolving content being monetized through various web traffic monetization platforms and is being offered for sale at an inflated price of USD 999 through the Afternic domain name marketplace.
The Respondent’s use of the disputed domain name does not constitute a bona fide sale of goods or services or commercial use, nor a legitimate noncommercial or fair use. See, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302 (“The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ or from ‘legitimate noncommercial or fair use’ of the domain name.”).
The disputed domain name was registered and is being used in bad faith.
The Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(i) of the Policy. The disputed domain name is advertised and listed for sale to the general public, including through the Afternic domain name marketplace. Given that the disputed domain dame is confusingly similar to the Complainant’s HEROKU Mark, and the Respondent lacks any rights or legitimate interest in the disputed domain name, its general offering of the disputed domain name for sale constitutes evidence of bad faith under paragraph 4(b)(i).
The Respondent has also registered and used the disputed domain name in bad faith according to paragraph 4(b)(iv) of the Policy. The disputed domain name is being used to generate web traffic monetization fees for the Respondent in connection with various revolving content, as discussed above. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.
Furthermore, the Complainant’s rights in the HEROKU Mark are so well established, and its HEROKU brand has achieved a certain level of recognition and fame such that the Respondent has no colorable argument that he is unaware of this brand. The disputed domain name is only valuable because of its association with the HEROKU brand. On information and belief, the Respondent willfully registered the disputed domain name, including the HEROKU Mark, to unfairly capitalize on the valuable goodwill that the Complainant has built in its HEROKU Mark, with the intention of confusing consumers for the Respondent’s commercial gain.
The Respondent was on notice of the Complainant’s HEROKU Mark prior to registering the disputed domain name, given the well-known nature of the Complainant’s marks, further evidencing the Respondent’s bad faith intent in registering and using the disputed domain name. See, e.g., Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277 (“[T]he domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”).
In this context, the Respondent’s use of a proxy service to obscure any publicly identifying information in the WhoIs database is further evidence of the Respondent’s bad faith. SeeWIPO Overview 3.0, section 3.6; see also, e.g., Compagnie Générale des Etablissements Michelin v. Balticsea LLC, WIPO Case No. D2017-0308.
The only conclusion that can be drawn from the evidence is that the Respondent has registered and used the disputed domain name in bad faith within the meaning of Section 4(b) of the Policy.
For the reasons described above, the disputed domain name is identical or confusingly similar to the Complainant’s HEROKU Mark; the Respondent lacks rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and used in bad faith, in violation of paragraph (4)(a) of the Policy.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name essentially incorporates the Complainant’s HEROKU registered trademark, with a slight misspelling as mentioned above, and this makes the disputed domain name confusingly similar to the Complainant’s well-known HEROKU Mark. This conduct constitutes typosquatting in that it appears to have been included by the Respondent to cover cases where persons wishing to connect with the Complainant and its products and services inadvertly misspell the Complaint’s HEROKU Mark or domain names. See Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2015-0198; and Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette, WIPO Case No. D2018-1453. See also Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited, WIPO Case No. D2017-2395 and the previous UDRP cases cited therein.
The Panel also agrees with the Complainant’s assertion, for the reasons and based on the previous UDRP decisions mentioned above, that the addition of the term “app” as part of the disputed domain name is purely descriptive and does not add any distinguishing feature and thereby does not prevent a finding of confusing similarity between Complainant’s well-known and widely used HEROKU Mark and the disputed domain name.
Again, the Panel agrees that the addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s HEROKU Mark, this being for Internet registration purposes only. See Blue Sky Software Corp. v. Digital Sierra, Inc., WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely-used HEROKU Mark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and prior commercial use of the same.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of 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 before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known HEROKU Mark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely-used HEROKU Mark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known HEROKU Mark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s legal actions and prior commercial use, as evidenced above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely-used HEROKU Mark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
The incorporation of a typographical variation of the Complainant’s well-known and widely-used HEROKU Mark in the disputed domain name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products/services marketed under its well-known HEROKU Mark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its business activity, as well as its
well-known and widely-used HEROKU Mark and its prior commercial use.
Also, there is evidence on the record that would suggest that the Respondent registered the disputed domain name with a view to its sale, which, pursuant to Paragraph 4(b)(i) of the Policy, also constitutes prima facie evidence of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, including the use by the Respondent of a privacy protection service, and also based on the previous UDRP cases cited above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <herkoapp.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: March 3, 2020