DECISION

 

Workday, Inc. v. Polyakov Andrey

Claim Number: FA2312002076751

 

PARTIES

Complainant is Workday, Inc. ("Complainant"), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Polyakov Andrey ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <workdaywinapp.com> and <workdaymax.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 27, 2023; Forum received payment on December 27, 2023.

 

On December 27, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <workdaywinapp.com> and <workdaymax.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2024 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@workdaywinapp.com and postmaster@workdaymax.com. Also on December 28, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 18, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a leading provider of enterprise cloud applications for finance and human resources. Complainant's products and services are used by more than 10,000 organizations around the world and across industries from medium-sized businesses to more than 50% of the Fortune 500. Complainant's goods and services are marketed, sold, and provided under the WORKDAY trademark and various other registered marks incorporating the term WORKDAY. Complainant has rights in the WORKDAY mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,280,638, registered August 14, 2007). The disputed domain names are confusingly similar to Complainant's mark because the disputed domain names incorporate the WORKDAY mark in their entirety merely adding the generic terms "win app" and "max"; and the "com" generic top-level domain ("gTLD").

 

ii) Respondent has no legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the WORKDAY mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain names resolve to websites, which appear to offer Complainant's services for download as an Application, or "App." Respondent's websites display Complainant's logo and trademark prominently, featured as the first thing a user would see on the page.

 

iii) Respondent registered and uses the disputed domain names in bad faith. Respondent is using the disputed domain names for websites that offer competing services for download as an Application, or "App." Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the WORKDAY mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names were registered on December 3, 2023.

 

2. Complainant has established rights in the WORKDAY mark based upon registration with the USPTO (e.g., Reg. No. 3,280,638, registered August 14, 2007).

 

3. The disputed domain names' resolving websites prominently feature Complainant's WORKDAY logo and mark and offer competing services for download as an Application, or "App."

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the WORKDAY mark (e.g., Reg. No. 3,280,638, registered August 14, 2007) based upon registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the WORKDAY mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).

 

Complainant argues that the disputed domain names <workdaywinapp.com> and <workdaymax.com> are confusingly similar to Complainant's WORKDAY mark because they wholly incorporate Complainant's mark and merely add the generic terms "win app" and "max." The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Edelman, Inc. v. PEY LING LEAN, FA 2064668 (Forum Oct. 26, 2023) (determining that "the addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i)., …, the disputed domain name <edelmanshop.com> is confusingly similar to Complainant's EDELMAN mark."). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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.").

 

Complainant contends Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the WORKDAY mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The unmasked WHOIS information for the disputed domain names lists the registrant as "Polyakov Andrey." The Panel thus finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel notes that the disputed domain names resolve to websites offering services for download as an Application, or "App," which are competing with Complainant's business. The Panel further notes that the disputed domain names' resolving websites prominently feature Complainant's WORKDAY logo and mark. Passing off as a complainant in this way to offer for sale competing goods 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 Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website … confusing them into believing that some sort of affiliation exists between it and Complainant … [which] 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 also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) ("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" where "Respondent is apparently using the disputed domain name to offer for sale competing services."). Complainant provides representative printouts of the disputed domain names' resolving websites. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and uses the disputed domain names in bad faith since Respondent is using the disputed domain names to host websites, which use Complainant's WORKDAY marks, display its logos and offer services for download as an Application, or "App" competing with Complainant's business. Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant's business by diverting Internet users from Complainant's website to Respondent's website where it offered competing printer products).

 

The Panel recalls that Complainant provides screenshots of the disputed domain names' resolving websites, which display Complainant's logo and mark, and offer services for download as an Application, or "App," which are competing with Complainant's business. The Panel finds that Respondent's offering unauthorized or counterfeit or competing WORKDAY products to consumers at the disputed domain names' resolving websites for sale constitutes bad faith registration and use of the disputed domains per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).

 

Next, Complainant claims that Respondent had knowledge of Complainant's rights in the WORKDAY mark at the time of registering the disputed domain names. To support this assertion, Complainant points to the fact that Respondent's websites intentionally use Complainant's well-known logo and trademark prominently, featured as the first thing a user would see on the page. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant's rights in the WORKDAY mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <workdaywinapp.com> and <workdaymax.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: January 20, 2024