Workday, Inc. v. Terry McGlynn / McGlynn, Terry / AVMI / sales cloud strategy / added value management consulting
Claim Number: FA2303002037257
Complainant is Workday, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Terry McGlynn / McGlynn, Terry / AVMI / sales cloud strategy / added value management consulting (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain named at issue are <workdayweb.com>, <webworkday.com>, <workdaywebapp.com>, <workdayweb.online>, <workdayweb.website>, <workdayweb.mobi>, <workdayweb.info>, <workdaywordai.com>, <workdayword.com>, <workdaywebsite.com>, <workdaywebsites.com>, <workdaywebar.com>, <workday-ar.com>, <workdaysoftware.com>, <workdaysoftware.net>, <workdaysoftware.org>, <workdaysoft.com>, <workdaymanagement.com>, <workdaysales.com>, <workdayai.com>, <workdaypolicies.com>, <workdayscale.com>, <workdaypay.com>, <workdaypay.info>, <workdaypay.net>, <workdaypay.org>, <workdaypay.biz>, <workdaypays.com>, <myworkdaypay.com>, <workdaypayroll.com>, <workdaypayonline.com>, <workdaypaynow.com>, <workdaypayguide.com>, <workdaypayglobal.com>, <workdaypartnership.com>, <workdaylink.com>, <workdayit.com>, <workdayos.com>, <osworkday.com>, <workdayapple.com>, <workdayios.com>, <iosworkday.com>, <workday.global>, <workdaylaunch.com>, <erpworkday.com>, <workdayintelligence.com>, <workdayinfo.com>, <workdaymarketing.com>, <workdayidea.com>, <workdayideas.com>, <workdayeverywhere.com>, <workdaycybersecurity.com>, <workdayaicrm.com>, <workdayaisolutions.com>, <workdayaiscale.com>, <workdaycloudai.com>, <workdaycloudstrategy.com>, <workdayaiclouds.com>, <workdayaiweb.com>, <workdayaionline.com>, <workdayonline.com>, <workday.world>, and <workday.international> (collectively “Domain Names”), registered with Godaddy.Com, LLC and Register.Com, Inc (collectively “Registrars”).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 24, 2023; Forum received payment on March 24, 2023.
On March 27, 2023, Godaddy.Com, LLC and Register.Com, Inc. confirmed by e-mail to Forum that the <workdayweb.com>, <webworkday.com>, <workdaywebapp.com>, <workdayweb.online>, <workdayweb.website>, <workdayweb.mobi>, <workdayweb.info>, <workdaywordai.com>, <workdayword.com>, <workdaywebsite.com>, <workdaywebsites.com>, <workdaywebar.com>, <workday-ar.com>, <workdaysoftware.com>, <workdaysoftware.net>, <workdaysoftware.org>, <workdaysoft.com>, <workdaymanagement.com>, <workdaysales.com>, <workdayai.com>, <workdaypolicies.com>, <workdayscale.com>, <workdaypay.com>, <workdaypay.info>, <workdaypay.net>, <workdaypay.org>, <workdaypay.biz>, <workdaypays.com>, <myworkdaypay.com>, <workdaypayroll.com>, <workdaypayonline.com>, <workdaypaynow.com>, <workdaypayguide.com>, <workdaypayglobal.com>, <workdaypartnership.com>, <workdaylink.com>, <workdayit.com>, <workdayos.com>, <osworkday.com>, <workdayapple.com>, <workdayios.com>, <iosworkday.com>, <workday.global>, <workdaylaunch.com>, <erpworkday.com>, <workdayintelligence.com>, <workdayinfo.com>, <workdaymarketing.com>, <workdayidea.com>, <workdayideas.com>, <workdayeverywhere.com>, <workdaycybersecurity.com>, <workdayaicrm.com>, <workdayaisolutions.com>, <workdayaiscale.com>, <workdaycloudai.com>, <workdaycloudstrategy.com>, <workdayaiclouds.com>, <workdayaiweb.com>, <workdayaionline.com>, <workdayonline.com>, <workday.world>, <workday.international> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars have verified that Respondent is bound by their registration agreements 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 March 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2023 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@workdayweb.com, postmaster@webworkday.com, postmaster@workdaywebapp.com, postmaster@workdayweb.online, postmaster@workdayweb.website, postmaster@workdayweb.mobi, postmaster@workdayweb.info, postmaster@workdaywordai.com, postmaster@workdayword.com, postmaster@workdaywebsite.com, postmaster@workdaywebsites.com, postmaster@workdaywebar.com, postmaster@workday-ar.com, postmaster@workdaysoftware.com, postmaster@workdaysoftware.net, postmaster@workdaysoftware.org, postmaster@workdaysoft.com, postmaster@workdaymanagement.com, postmaster@workdaysales.com, postmaster@workdayai.com, postmaster@workdaypolicies.com, postmaster@workdayscale.com, postmaster@workdaypay.com, postmaster@workdaypay.info, postmaster@workdaypay.net, postmaster@workdaypay.org, postmaster@workdaypay.biz, postmaster@workdaypays.com, postmaster@myworkdaypay.com, postmaster@workdaypayroll.com, postmaster@workdaypayonline.com, postmaster@workdaypaynow.com, postmaster@workdaypayguide.com, postmaster@workdaypayglobal.com, postmaster@workdaypartnership.com, postmaster@workdaylink.com, postmaster@workdayit.com, postmaster@workdayos.com, postmaster@osworkday.com, postmaster@workdayapple.com, postmaster@workdayios.com, postmaster@iosworkday.com, postmaster@workday.global, postmaster@workdaylaunch.com, postmaster@erpworkday.com, postmaster@workdayintelligence.com, postmaster@workdayinfo.com, postmaster@workdaymarketing.com, postmaster@workdayidea.com, postmaster@workdayideas.com, postmaster@workdayeverywhere.com, postmaster@workdaycybersecurity.com, postmaster@workdayaicrm.com, postmaster@workdayaisolutions.com, postmaster@workdayaiscale.com, postmaster@workdaycloudai.com, postmaster@workdaycloudstrategy.com, postmaster@workdayaiclouds.com, postmaster@workdayaiweb.com, postmaster@workdayaionline.com, postmaster@workdayonline.com, postmaster@workday.world, postmaster@workday.international. Also on March 30, 2023, 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.
A timely Response was received and determined to be complete on April 18, 2023.
On April 19, 2023, Complainant filed an unsolicited Additional Submission responding to certain matters raised in the Response.
On April 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
The Panel must consider whether to accept the Complainant’s Additional Submission. While noting the existence of Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant). If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated, the Panel may allow the additional submission.
In the present case the Complainant’s supplemental written submission simply restates the points made in the Complaint and adds nothing of substance to the record. The Panel will have no regard to the Complainant’s additional submission.
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has provided detailed evidence of the connections between each of the Domain Names and in particular that: 1) the Domain Names are all similar variants of Complainant’s WORKDAY mark and add descriptive terms 2) The majority of the Domain Names resolve to a website at www.workdayweb.com (“Respondent’s Website”) which advertises the Domain Names for sale and provides email and telephone contact details for Respondent Terry McGlynn. A number of the remaining Domain Names resolve to a second website at www. crmsalesforce.com (“CRM Website”) which again promotes the sale of domain names and provides the same telephone contact details; and 3) Respondent Terry McGlynn has written to Complainant offering the sale of the Domain Names to the Complainant. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent. This is reinforced by the Response, which is filed by the Respondent, acknowledging that Terry McGlynn and his company Added Value Management LLC is the owner of all the Domain Names. The Panel concludes that the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
A. Complainant
Complainant, Workday, Inc., is a leading provider of enterprise cloud applications for human resources and finance. Complainant has rights in the WORKDAY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,280,638 registered August 14, 2007). The Domain Names are virtually identical and confusingly similar to Complainant’s mark because each one incorporates the WORKDAY mark in its entirety and adds a generic term and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed Respondent any rights in the WORKDAY mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, some of the Domain Names resolve to websites advertising competing services. Some of the Domain Names resolve to inactive webpages. Respondent offers the Domain Names for sale.
Respondent registered and uses the Domain Names in bad faith. Respondent offers the Domain Names for sale. Respondent registered the Domain Names in order to attract users for commercial gain. Additionally, Respondent registered the Domain Names with actual and/or constructive knowledge of Complainant’s rights in the WORKDAY mark given the Respondent’s offer to sell the Domain Names to the Complainant.
B. Respondent
The Response is difficult to coherently summarize but to the best of the Panel’s understanding Respondent is a sales and marketing professional with expertise in search engine optimization. The Respondent has studied the Complainant for more than 5 years and registered the Domain Names with the intention of offering them as a package to the Complainant in order to protect the Complainant’s interests online. Respondent has offered the Domain Names to Complainant for sale on three previous occasions.
Respondent contends that Respondent has rights and legitimate interests in the Domain Names. Respondent registered the Domain Names as part of a business strategy for Complainant, from which Respondent does not derive commercial gain. The Respondent’s Website was created by the Registrar and Respondent does not derive any commercial benefit from the Respondent’s Website. Respondent did not register or use the Domain Names in bad faith as registration and use were undertaken to protect the Complainant.
Complainant holds trademark rights for the WORKDAY mark. The Domain Names are confusingly similar to Complainant’s WORKDAY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses the Domain Names in bad faith.
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.
Complainant asserts rights in the WORKDAY mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,280,638 registered August 14, 2007). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the each of the Domain Names are confusingly similar to Complainant’s WORKDAY mark because each incorporates Complainant’s mark in its entirety, adding only a generic term (or generic abbreviations) and a gTLD. Addition of generic or descriptive words and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the WORKDAY mark. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Terry McGlynn / McGlynn, Terry / AVMI / sales cloud strategy / added value management consulting” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The majority of the Domain Names presently resolve to the Respondent’s Website or the CRM Website which both purport to offer services in competition with Complainant and advertise that the Domain Names are for sale. Moreover, the Response indicates that the Domain Names were registered as part of a strategy (not known or endorsed by Complainant) to register a series of domain names corresponding to the Complainant’s WORKDAY mark in order to sell them as a package to the Complainant. Neither the offer for sale or the use of the Domain Names to offer competing services is by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel notes that the remaining the Domain Names resolve to inactive webpages which by itself is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Names, Respondent had actual knowledge of Complainant’s WORKDAY mark. Respondent, in its Response, acknowledges that it is a marketing consultant who registered the Domain Names following a study of the Complainant and did so with the intention of offering the Domain Names for sale to the Complainant as a package, which it has done. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has acquired 63 domain names that are confusingly similar to the WORKDAY mark and offered them for sale, both to the public generally (on the Respondent’s Website) and (on multiple occasions) to the Complainant. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). In the present case, given the nature of the Domain Names and the evidence provided in the Response about Respondent’s intention and use of the Domain Names, the Panel finds that the Respondent registered and used the Domain Names in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <workdayweb.com>, <webworkday.com>, <workdaywebapp.com>, <workdayweb.online>, <workdayweb.website>, <workdayweb.mobi>, <workdayweb.info>, <workdaywordai.com>, <workdayword.com>, <workdaywebsite.com>, <workdaywebsites.com>, <workdaywebar.com>, <workday-ar.com>, <workdaysoftware.com>, <workdaysoftware.net>, <workdaysoftware.org>, <workdaysoft.com>, <workdaymanagement.com>, <workdaysales.com>, <workdayai.com>, <workdaypolicies.com>, <workdayscale.com>, <workdaypay.com>, <workdaypay.info>, <workdaypay.net>, <workdaypay.org>, <workdaypay.biz>, <workdaypays.com>, <myworkdaypay.com>, <workdaypayroll.com>, <workdaypayonline.com>, <workdaypaynow.com>, <workdaypayguide.com>, <workdaypayglobal.com>, <workdaypartnership.com>, <workdaylink.com>, <workdayit.com>, <workdayos.com>, <osworkday.com>, <workdayapple.com>, <workdayios.com>, <iosworkday.com>, <workday.global>, <workdaylaunch.com>, <erpworkday.com>, <workdayintelligence.com>, <workdayinfo.com>, <workdaymarketing.com>, <workdayidea.com>, <workdayideas.com>, <workdayeverywhere.com>, <workdaycybersecurity.com>, <workdayaicrm.com>, <workdayaisolutions.com>, <workdayaiscale.com>, <workdaycloudai.com>, <workdaycloudstrategy.com>, <workdayaiclouds.com>, <workdayaiweb.com>, <workdayaionline.com>, <workdayonline.com>, <workday.world>, <workday.international> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 25, 2023
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