WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Slack Technologies, Inc. v. Registration Private, Domains by Proxy, LLC / Nanci Nette, Name Management Group

Case No. DCO2020-0018

1. The Parties

Complainant is Slack Technologies, Inc., United States of America (“United States” or “U.S.”), represented by DLA Piper US LLP, United States.

Respondent is Registration Private, Domains by Proxy, LLC, United States / Nanci Nette, Name Management Group, United States.

2. The Domain Name and Registrar

The disputed domain name <slack.co> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2020, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 17, 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2020.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 4, 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.

On June 12, 2020, the Center issued a Procedural Order No. 1 to the Parties on the Panel’s behalf (“the Order”). In the Order, the Panel requested: (1) dated documents to support allegations made in the Complaint relating to Complainant’s alleged common law rights in the SLACK Mark; and (2) documents referenced in the Complaint. Complainant was required to submit the above-requested evidence by June 17, 2020 and Respondent was invited to submit any comments to Complainant’s submission by June 22, 2020. On June 17, 2020, Complainant filed a “Response to Panelist’s Administrative Procedural Order No. 1 Requesting Additional Information.” Respondent failed to respond.

4. Factual Background

Complainant Slack Technologies, Inc. provides a software platform that allows teams within businesses and organizations to communicate remotely, share files with one another, and collaborate on projects within teams. Its headquarters are located in San Francisco, California, and it has a number of offices around the world, including London, England, Tokyo, Japan, Istanbul, Turkey, and Melbourne, Australia.

Complainant owns various trademark registrations for the SLACK Mark including U.S. Registration Nos. 4,610,670 (registered September 23, 2014, with a first use in commerce of April 24, 2013) and 4,877,559 (registered December 29, 2015), Canadian Registration No. A921,087 (registered November 24, 2015) and European Union Trade Mark Registration No. 012261616 (registered March 25, 2014). Also, Complainant is the registered owner of the “www.slack.com” domain name (as well as numerous other domain name incorporating the SLACK Mark). Consumers are able to access the “Slack” platform directly and Internet users are able to learn more about the goods and services that Slack Technologies offers from “www.slack.com”.

Respondent registered the Domain Name on August 11, 2014. Internet users who try to access a website associated with the Domain Name were, and still are, re-directed to websites that encourage users to download third party software content, which appears to be malware content. It appears that the website that a user is re-directed to differs depending on the device that is used.

5. Parties’ Contentions

A. Complainant

In addition to its registered rights in the United States, Complainant owns common law rights and the related goodwill to its SLACK Mark. It has been using the “Slack” name and the Mark in connection with its software platform since at least as early as April 2013. Such use predates Respondent’s registration date for the Domain Name by over a year. By the time the Domain Name was registered, Complainant’s platform was in use by businesses for over one year, with hundreds of thousands of daily users. Complainant also has a well-established international trademark portfolio of registrations for the SLACK Mark for the same or similar goods and services as those covered in the above-referenced U.S. registrations, and rights in these also pre-date Respondent’s registration date for the Domain Name by at least one year (e.g., Canada (filed on October 25, 2013 claiming a priority date of May 1, 2013) and the European Union (filed on October 29, 2013 claiming a priority date of May 1, 2013).

When Respondent began using the Domain Name, Complainant had been using the SLACK name and the Mark for more than one year. Respondent has no relationship with Complainant and no authorization from them to use the SLACK Mark, to appropriate the Domain Name, or to otherwise associate itself and its malware with Complainant. Respondent is not affiliated with Complainant or the SLACK Mark in any manner. It does not appear that Respondent has filed any applications to register SLACK in any trademark offices or jurisdictions worldwide. Also, it does not appear Respondent is commonly known by the Domain Name. The Domain Name is being used to attract Internet users seeking legitimate information about Complainant. Using the Domain Name to re-direct Internet users to a third-party website offering malware does not represent a legitimate interest in the Domain Name.

Respondent intentionally, and for commercial gain, registered the Domain Name and is using it to attract Internet users to its website to attempt to install malware on the Internet user’s computer. Respondent registered a domain name that is identical to the SLACK Mark. Further, there is only one letter of difference between Complainant’s main domain name (<slack.com>) and the Domain Name (<slack.co>). Internet users would be directed to Respondent’s website when typing in <slack.com>, if they inadvertently hit enter too quickly, before typing out the final letter of Complainant’s full domain name. This deceptive and malicious conduct on the part of Respondent as well as the malicious content featured on the re-directed domain names constitutes bad faith.

Respondent’s use of a proxy server in this case is further evidence of bad faith as it is an effort to shield the true identity of the Domain Name registrant. After the Registrar removed the proxy server that was in place, the registrant was identified as Nanci Nette, Name Management Group. From our review, Nanci Nette, of Name Management Group, has been named as a Respondent in at least twenty UDRP cases before the Center. Previous UDRP decisions have found that Respondent has been engaged in an abusive pattern of domain name registration. We also note that the Respondent has failed to respond to any of the twenty UDRP actions filed against her, which is further evidence that Respondent did not have any legitimate rights or interests in any of those domain names. This repeated pattern of registering domain names that infringe on the rights of trademark owners is strong evidence that Respondent also acted in bad faith when registering the <slack.co> Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar “to a trademark or service mark in which Complainant has rights.” Here, Complainant has rights in the SLACK Mark by virtue of its U.S. Registration Nos. 4,610,670 (registered September 23, 2014) and 4,877,559 (registered December 29, 2015), Canadian Registration No. A921,087 (registered November 24, 2015), and European Union Trade Mark Registration No. 012261616 (registered March 25, 2014).

By virtue of the trademark registrations above, Complainant has established its rights in the SLACK Mark. In addition to its registered trademark rights, Complainant is relying on its unregistered or common law trademark rights in the SLACK Mark, which it claims date back to at least April 2013. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered and unregistered marks. See, e.g., True Blue Productions, Inc. v. Chris Hoffman, WIPO D2004-0930; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.1.

According to the WIPO Overview 3.0, at section 1.3 to prove common law rights: “[T]he complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys […] conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”

With regard to its common law rights in the SLACK Mark, Complainant alleges in its Complaint: (1) “Slack Technologies has been using the SLACK name and mark in connection with its software platform since at least as early as April 2013 […] By the time the slack.co domain was registered, the Slack platform was in use by businesses for over one year, with hundreds of thousands of daily users”; (2) “In addition to its federal registration rights, in the U.S., Slack owns common law rights and the related goodwill to its SLACK mark”; and (3) “Slack also has a well-established international trademark portfolio of registered SLACK marks for the same or similar goods and services as those covered in the above-referenced US registrations, and rights in these also pre-date Respondent’s registration date for the slack.co domain name by at least one year.” In response to the Order, Complainant provided more specific support for its allegations, including:

(1) screenshots of Internet archive records from November 2, 2013 for the “www.slack.com” website, showing use of the SLACK Mark in advertising the Slack communication platform. The screenshot also shows customer testimonials from numerous companies who had been using the Slack platform as of November 2, 2013, evidencing that the Slack platform was distributed to and in use by customers before November 2013; (2) an article from Forbes Magazine published on August 14, 2013 featuring screenshots from the Slack platform showing that the platform is accessible via a computer as well as via a mobile application; (3) a screenshot showing the results of a Google search as it would have appeared as of April 30, 2013, which indicates that users were able to sign into their workspace by accessing the webpage; and (4) data on users of the Slack platform from January 2014 (i.e., February 1, 2014/16,000 daily active users; August 12, 2014 140,000 daily active users). See “https://slackhq.com/slack-has-10-million-daily-active-users)” and “https://techcrunch.com/2016/04/01/rocketship-emoji/.” The Panel finds Complainant has provided sufficient evidence to support allegations of common law rights in the SLACK Mark.

The Domain Name incorporates in its entirety Complainant’s SLACK Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Furthermore, the use of a country code Top-Level Domain (“ccTLD”) such as “.co” is irrelevant as it is well established that it is a standard registration requirement and as such is disregarded under the first element confusingly similarity test. See L’Oréal v Tina Smith, WIPO Case No. D2013-0820; see also the WIPO Overview 3.0, at section 1.11.1.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

On the record evidence, it is uncontested that Respondent has no rights or legitimate interests in the SLACK Mark.

Complainant maintains that when Respondent began using the Domain Name, it had been using the SLACK name and the Mark for more than a year. It further points out that Respondent has no relationship with Complainant and no authorization from them to use the SLACK Mark, to appropriate the Domain Name, or to otherwise associate itself and its malware with Complainant. Complainant further maintains that it does not appear Respondent has filed any applications to register SLACK in any trademark offices or jurisdictions worldwide, nor does it appear Respondent is commonly known by the Domain Name. The Domain Name is being used to attract Internet users seeking legitimate information about Complainant and then to re-direct them to a third-party website offering malware. Complainant argues this does not represent a legitimate interest in the Domain Name citing BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-1601 (“The use of the disputed domain name to divert Internet traffic to a malware scam is not a bona fide offering of goods or services”).

Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the SLACK Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered the Domain Name on August 11, 2014, which based on the evidence of record, is about 9 months after Complainant began using the SLACK Mark as described above. Although Complainant’s use of the SLACK Mark was not long standing before Respondent registered the Domain Name, Respondent’s bad faith registration is evidenced by the fact that the Domain Name: (1) adopts the entirety of the SLACK Mark and combines it with the ccTLD “.co” that is one letter off from Complainant’s own domain name <slack.com>; (2) the Domain Name is confusingly similar to Complainant’s Mark; (3) Complainant has provided evidence of its use of the SLACK Mark previous to the registration of the Domain Name (including for example an article published in Forbes magazine in August 2013), and the rapid growth of its active users that increased on February 1, 2014 from 16,000 daily active users to 140,000 daily active users by August 12, 2014; and (4) Respondent is in default, and has not shown any rights or legitimate interests in the Domain Name. On the uncontroverted evidence, the Panel finds that on the balance of probabilities, Respondent registered the Domain Name in bad faith.

In Royal Caribbean Cruises Ltd. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2049, the Panel stated: “it is not known why the Respondent has redirected the disputed domain name to the third party website or how it might be benefitting from having done so and it is therefore unclear as whether its conduct falls within one or more of the specific circumstances evidencing bad faith and use which are set out at paragraph 4(b) of the Policy.” The Panel in the Royal Caribbean case nonetheless reasoned that the circumstances set forth in the Policy are expressed to be without limitation, and the conduct by a respondent which is essentially the same in its intention and effect as one or more of the stated circumstances “will be considered in a broadly similar way.” Here, it is inherently an act of bad faith to redirect Internet users (many, or all, of whom will have been seeking Complainant’s website) to a third-party website containing malware. Even if Respondent’s conduct does not fall strictly within one of the specific examples of conduct that constitutes bad faith set out in the Policy, due to Respondent’s deceptive and malicious conduct the Panel finds that the Domain Name has been registered and used in bad faith.

Respondent’s use of a privacy service to mask the identity of the underlying registrant is, in the circumstances here, a further indication of bad faith. Indeed, after the Registrar removed the proxy server that was in place, the Domain Name registrant was identified as Nanci Nette, Name Management Group. From Complainant’s investigation, Nanci Nette of Name Management Group, has been named as a Respondent in at least twenty UDRP cases before the Center. Previous UDRP decisions have found that Respondent “has been engaged in an abusive pattern of domain name registration” to prevent mark owners from being able to utilize the domains (except for one decision that resulted in a denial under the standing requirement of the first element). See, e.g., Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette, WIPO Case No. D2019-2223). Also, Complainant notes that Respondent has failed to respond to any of the twenty UDRP actions filed against her, which is further evidence that Respondent did not have any legitimate rights or interests in any of those respective Domain Name. This repeated pattern of registering domain names that infringe on the rights of trademark owners is additional evidence that Respondent acted in bad faith when registering the Domain Name.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Name <slack.co> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: June 29, 2020