Workday, Inc. v. Emily Vaguine
Claim Number: FA1702001716531
Complainant is Workday, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Emily Vaguine (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workday.biz>, registered with 1API GmbH.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2017; the Forum received payment on February 9, 2017.
On February 9, 2017, 1API GmbH confirmed by e-mail to the Forum that the <workday.biz> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 February 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2017 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@workday.biz. Also on February 9, 2017, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Workday, Inc. is a provider of enterprise cloud applications for human resources and finance. In connection with this business, Complainant uses the WORKDAY mark and legitimate <workday.com> domain name to provide information about its services and resources for its consumers.
Complainant has rights in the WORKDAY mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,280,638, registered Aug. 14, 2007).
Respondent’s <workday.biz> is identical and confusingly similar to Complainants WORKDAY mark, as the disputed domain name consists to the mark in its entirety, and merely adds the generic top-level domain name (“gTLD”) “.biz.”
Respondent has no rights or legitimate interests in the <workday.biz> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the WORKDAY mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather the disputed domain name resolves to a rotating series of deceptive pay-per-click sponsored links, which include references to Complainant and Complainant’s competitors. Respondent is also offering to sell the domain via SEDO’s Domain Buy Service, further indicating its lack of rights and legitimate interests.
Respondent has registered and used the disputed domain name in bad faith. Respondent’s offer to sell the disputed domain name is evidence of its bad faith. Respondent is a sophisticated domainer owning multiple domain names which infringe on well-known third-party trademarks, indicating that its registration of <workday.biz> is part of a pattern of such bad faith registration. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the WORKDAY mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WORKDAY mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its WORKDAY trademark.
Respondent’s <workday.biz> domain name addresses pay-per-click links, which include references to Complainant and Complainant’s competitors.
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 response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its WORKDAY mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
The at-issue domain name consists of Complainant’s entire WORKDAY trademark followed by the top-level domain name “.biz”. The difference between the domain name and Complainant’s trademark, resulting from the addition of a top-level (necessary to create the domain name), is insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <workday.biz> domain name is identical to Complainant’s WORKDAY mark. See Seagate Technology LLC v. Michael Kibler / TC Services, FA 1432728 (Forum April 19, 2012) (“The Panel notes that the disputed domain name contains Complainant’s mark in its entirety with the addition of a generic top-level (“gTLD”) “.biz.” Based on prior UDRP cases holding that this addition does not sufficiently differentiate a disputed domain name from a mark, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s SEAGATE mark pursuant to Policy ¶4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Emily Vaguine” with an email address of “domainebuy@gmail.com.” There is no evidence in the record which otherwise suggests that Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii)that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the 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).
Respondent’s <workday.biz> domain name addresses a website that lacks any content except for a series of pay-per-click links to Complainant’s competitors and other third parties. Respondent’s use of the confusingly similar at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, while Complainant submits a document to show that Respondent offers the domain name for sale on a third party auction site; Complainant fails to authenticate such document. The document on its face seems to be that of a third party auction site’s listing for the at-issue domain name. However, even if the document actually represents a print out from an online domain name selling service, the Panel can only speculate about what the site’s practices are regarding listing domain names for sale and whether or not Respondent was even aware that its domain name was listed for sale. Therefore, the documentary exhibit proffered by Complainant has no evidentiary value to support Complainant’s conclusion that Respondent was or is offering the <workday.biz> domain name for sale and thereby acting in bad faith under Policy ¶ 4(b)(i).
Similarly, Respondent’s domain name has a common descriptive use outside of its trademark use. This fact discounts any persuasive inference from the mere fact of WORKDAY’s incorporation into Respondent’s domain name that the registrant (Respondent) was actually aware of the Complainant’s trademark at the time the domain name was registered.
Nevertheless, the fact that Respondent uses the confusingly similar <workday.biz> domain name to address a webpage containing links to Complainant’s competitors as well as other entities, is telling. Such use is likely to disrupt Complainant’s business and appears to capitalize on the confusion between Complainant’s trademark and Respondent’s domain name. Using the domain name in this manner therefore demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <workday.biz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 15, 2017
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