DECISION

 

Workday, Inc. v. Daniel Treyvaud / Sun Life

Claim Number: FA2403002088351

PARTIES

Complainant is Workday, Inc. ("Complainant"), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Daniel Treyvaud / Sun Life ("Respondent"), Ireland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wb5-myworkday.com>, registered with Amazon Registrar, 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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 14, 2024; Forum received payment on March 14, 2024.

 

On March 21, 2024, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <wb5-myworkday.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 March 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 10, 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@wb5-myworkday.com. Also on March 21, 2024, 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 April 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides enterprise cloud applications for finance and human resources. It has rights in the WORKDAY mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and other governmental trademark agencies. Respondent's domain name is identical or confusingly similar to Complainant's mark in that it fully incorporates the mark, merely adding a hyphen, the prefix wb5, the generic word "my," and the .com generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not commonly known by the domain name and is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is currently making no active use of it and previously used it to impersonate and offer services related to those offered by Complainant.

 

Respondent registered and uses the domain name in bad faith. It registered the domain name with constructive and actual knowledge of Complainant and its mark, and it registered and is using the domain name while itself having no connection with Complainant or its mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. 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). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

The WORKDAY mark was registered to Complainant with the USPTO (Reg. No. 3,280,628) on August 14, 2007 (USPTO registration certificate included in Complaint Exhibit B). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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)."), 

 

Respondent's domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the WORKDAY mark, merely adding a hyphen, the prefix wb5, the generic word "my," and the gTLD .com.  These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Maxim Integrated Products v. liao jian jia, FA2059513 (Forum September 22, 2023) ("[the] Domain Name is identical or confusingly similar to Complainant's mark.  It fully incorporates the mark, . . . , merely adding a hyphen, the letters "ic," . . ., and a gTLD"), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name, and the domain name is likely to cause confusion.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not commonly known by the domain name and (ii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is currently making no active use of it and previously used it to impersonate and offer services related to those offered by Complainant.  These allegations are addressed as follows:

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. Those names bear no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a name other than the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complaint Exhibit H is a screenshot of the parking page to which the domain name presently points. Its only substantive content is a message reading "ERROR. The requested URL could not be retrieved."  Respondent is making no active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). 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).").

 

Complaint Exhibit I contains screenshots of pages of the website which previously resolved from the domain name. These pages represented the site sponsor as "My WorkingDay" or simply as "wb5-myworkday.com."  The site was obviously commercial in nature, advertising various levels of working platforms or applications oriented toward business owners similar to the services offered by Complainant on its website located at <workday.com> (screenshot submitted as Complaint Exhibit C). Neither Complainant's word mark nor its registered design logo consisting of the written term WORKDAY with semi-circle immediately above it appeared on any of the pages, so the website was not expressly impersonating Complainant or representing that it was Complainant's site. By its use of Complainant's mark in the domain name and by offering services related to those offered by Complainant, however, it implied that there was some sort of affiliation between it and Complainant. This qualifies as passing off as Complainant or an affiliate and to the extent that Respondent actually offered the services advertised it was in direct competition with Complainant.  Using a confusingly similar domain name to pass off as and sell the same types of products as a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), 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).").

 

Complainant has made its prima facie case. On the evidence discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent was previously using the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). The evidence does not disclose whether Respondent actually provided the services advertised on its website or fraudulently represented that it did, collecting money from the customer and then not delivering the services. Regardless which scenario was present here, its conduct fit squarely within the circumstances described in Policy ¶ 4(b)(iv) and this is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Next, as discussed above, Respondent was using the domain name to pass off as Complainant or an authorized affiliate. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith 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.").

 

Complainant asserts that Respondent had at least constructive knowledge of Complainant and its WORKDAY mark when it registered the domain name. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well.  The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in January 2024 (WHOIS printout submitted as Complaint Exhibit G shows creation date). Complainant demonstrated that it is well-known throughout the world for the services it provides. Its mark is registered in numerous countries around the world (trademark registration certificates included in Complaint Exhibit B), and according to articles published by Fortune (screenshots included in Complaint Exhibit D) it employs some 17,700 people world-wide and had revenues in excess of $6.2 billion in 2022. More importantly, in order to pass off as Complainant or an affiliate and advertise services related to those advertised on Complainant's website, Respondent had to have had actual knowledge of Complainant and its mark. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

As also discussed above, Respondent is currently passively holding the domain name, making no active use of it, and this can, under certain circumstances, demonstrate bad faith registration and use. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding a confusingly similar domain name can be evidence of bad faith for the purposes of Policy ¶ 4(a)(iii).  Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The concept of bad faith as illustrated in the four subparagraphs of Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. As discussed above, it is clear that Respondent registered the domain name with actual knowledge of Complainant and its mark.

 

The Policy requires a complainant to prove both registration and a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, there is no evidence that Respondent is holding the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already concluded that Respondent had actual knowledge of Complainant and its rights in the WORKDAY mark when it registered the domain name, and that knowledge and resulting bad faith certainly continues. Also, Respondent is holding a domain name which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its products, which in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights. Respondent's passive holding of the domain name constitutes a continuing use in bad faith within the meaning and for the purposes of Policy ¶ 4(a)(iii).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <wb-5workday/com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

April 15, 2024