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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salesforce.com, inc. v. Domain Admin, Privacy Registry Authority / Naveen Kumar

Case No. D2019-2882

1. The Parties

The Complainant is Salesforce.com, inc., United States of America (the “United States”), represented by Winterfeldt IP Group PLLC, United States.

The Respondent is Domain Admin, Privacy Registry Authority, India / Naveen Kumar, India.

2. The Domain Name and Registrar

The disputed domain name <dreamforce-2019.com> is registered with Dreamscape Networks International Pte Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2019, 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 December 2, 2019 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 December 2, 2019.

The Center verified that the Complaint together with the amended Complaint (together “the 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 December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 9, 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.

4. Factual Background

According to the Complainant it is a corporation with its global headquarters in San Francisco, California. It was founded in 1999 and is a world leading customer relationship management or CRM platform and provides CRM and a variety of other cloud-based software as a to over 150,000 companies worldwide. In addition the Complainant has regional headquarters in Switzerland, India, and Tokyo. It has major Salesforce offices in Toronto, Chicago, New York, London, Sydney, and Dublin.

Its services have been translated into over a dozen different languages. In 2019 the Complainant had revenue of USD 13.28 billion and 35,000 employees. The brand SALESFORCE was ranked the 75th best global brand by Interbrand in 2018 with an estimated value of over USD 6.4 million. In 2019 the brand was also ranked as the 46th most valuable global brand by BrandZ. This can be seen from Annex 4 to the Complaint.

The Complainant owns trade mark registrations throughout the world for the mark DREAMFORCE. The mark has been used by the Complainant in the United States since at least 2003 and registered in the United States since 2005. The Complainant relies, particularly, upon the following registrations in Class 41;

DREAMFORCE; United States registration 3,035,403 dated December 27, 2005.

DREAMFORCE; International Registration 855205 dated March 29, 2005.

DREAMFORCE; Peru Registration S00116438 dated July 5, 2019

DREAMFORCE; Indian application 4158697 filed in 2019 and used since November 30, 2009.

Copies of these registrations and applications are set out in Annex 5 to the Complaint.

The Complainant, as set out in Annex 6 to the Complaint, also owns numerous domain name incorporating DREAMFORCE including <dreamforce.com> (May 2,1998) and registered on August 31, 2015; <dreamforce2018.com>, <dreamforce2017.com>, and <dreamforce2016.com>.

The domain name <dreamforce.com> directs Internet users to the Complainant’s website at “https://www.salesforce.com/dreamforce/” and which makes substantial use of the mark DREAMFORCE. This is shown at Annex 7 to the Complaint.

The mark DREAMFORCE has been widely used globally and generated trading goodwill worldwide. This has earned the Complainant accolades as being one of the most admired and innovative companies in the world. This is demonstrated by Annex 9 to the Complaint.

The disputed domain name <dreamforce-2019.com> was registered by the Respondent on April 3, 2018 which is after the mark DREAMFORCE was first registered in the United States in 2005 and after the mark DREAMFORCE was first used by the Complainant in India.

In the absence of a Response the Panel finds the above facts to be true and proceeds to determine the Complaint on that basis.

5. Parties’ Contentions

A. Complainant

The Complainant contends;

1. The disputed domain name is confusingly similar to the mark DREAMFORCE in which the Complainant has well-established rights;

2. The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is being used fraudulently involving the Complainant’s personnel and customers;

3. The disputed domain name was registered and has been used in bad faith. The domain name was registered or acquired, inter alia, for the purpose of transfer for consideration in excess of out of pocket expenses, for the purpose of disrupting the Complainant’s business by way of fraudulent use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel has found that the Complainant has trade mark rights in the mark DREAMFORCE.

The only difference between the mark DREAMFORCE and the disputed domain name is the addition of a hyphen with reference to the year “2019” together with the addition of the generic Top-Level Domain (“gTLD) “.com”. It is well established that a gTLD is immaterial in considering similarity. In the Panel’s view the use of the mark DREAMFORCE in its entirety is sufficient to show confusing similarity. The Panel is supported in this view by the fact that the Complainant owns domain names incorporating “dreamforce” followed by the date of a year e.g.<dreamforce2018.com>. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark DREAMFORCE.

B. Rights or Legitimate Interests

The Complainant submits that on the evidence the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant relies upon the fact that;

1. The Complainant has never authorized the Respondent to use the mark DREAMFORCE;

2. The Complainant has no legitimate interests in the disputed domain name and registered it well after the Complainant first registered or used the trade mark DREAMFORCE;

3. The disputed domain name does not reflect the Respondent’s common name;

4. The disputed domain name is used in connection with fraudulent activity intended to impersonate Salesforce personnel and induce its customers to pay for fraudulent travel arrangements. As shown by Annexes 11 and 12 this is associated with the Respondent’s use of confusing email addresses such as “[...]@dreamforce-2019.com”.

In the Panel’s view it is well-established that the use of the domain name for illegal activity such as phishing or fraud can never confer rights or legitimate interests.

The Panel on the Complainant’s evidence and in the absence of contrary evidence or submissions by the Respondent finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith within Sections 4(b)(iii) and 4 (b)(iv) of the Policy.

As evidenced in Annex 12 to the Complaint the Respondent is acting in opposition to the Complainant and disrupting the Complainant’s business through its use of the domain name in connection with emails intended to impersonate legitimate Salesforce personnel or a legitimate business offering accommodation services relating to the Complainant’s Dreamforce conference. The Respondent is not providing such services but is duping unsuspecting customers to believe that it is doing so and to pay for the services which are not provided.

In the Panel’s view the Respondent is clearly using the domain name for fraudulent activity. This damages consumers’ interests and the Complainant’s trading goodwill in SALESFORCE and DREAMFORCE. The Panel therefore finds in the absence of contrary submissions clear evidence of bad faith registration and use within sections 4(b)(iii) and 4(b)(iv) of the Policy.

The Panel also takes into account and finds that the Complainant’s rights in DREAMFORCE are so well-established that the brand has achieved the necessary level of recognition such that the Respondent cannot have been unaware of the Complainant’s rights in the mark DREAMFORCE and therefore “willfully” registered the disputed domain name to unfairly capitalize on the Complainant’s goodwill in DREAMFORCE.

The Panel finds that the Respondent has registered and used the disputed domain name in bad faith within section 4(b) of the Policy.

7. Decision

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 <dreamforce-2019.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: January 15, 2020

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