Ceridian Dayforce Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2010001919096
Complainant is Ceridian Dayforce Corporation (“Complainant”), represented by Ashley M. Bennett Ewald of LATHROP GPM, LLP, Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dayforcecrm.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2020; the Forum received payment on October 30, 2020.
On November 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dayforcecrm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2020 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@dayforcecrm.com. Also on November 6, 2020, 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 December 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is part of a global business services company, providing human resource solutions and payroll services in more than 50 countries worldwide. Complainant offers its products and services to a variety of industries, including retail and hospitality, manufacturing, healthcare, financial services, sports entertainment, and others. Complainant has rights in the DAYFORCE trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,261,665, registered December 18, 2012). Respondent’s <dayforcecrm.com> is identical or confusingly similar to Complainant’s DAYFORCE trademark as it merely adds the acronym “CRM” and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <dayforcecrm.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the DAYFORCE trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with an apparent malware scheme.
Respondent registered and uses the <dayforcecrm.com> domain name in bad faith. Respondent has a long-standing history of registering domains that infringe on the trademarks of other brand owners. Furthermore, Respondent uses the disputed domain name in connection with an apparent malware scheme. Lastly, Respondent had actual notice of Complainant’s rights to the DAYFORCE trademark prior to registering the disputed domain name based on the Respondent’s use of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,261,665 DAYFORCE (word), registered December 18, 2012 for goods in class 9;
No. 4,261, 666 DAYFORCE (word), registered December 18, 2012 for services in class 42; and
No. 4,491,839 DAYFORCE (word), registered March 4, 2014 for goods and services in classes 16, 35, 36, 41 and 45.
The <dayforcecrm.com> domain name was registered on February 28, 2020.
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 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”).
The Complainant asserts rights in the DAYFORCE trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 4,261,665, registered December 18, 2012). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark 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).”). Therefore, the Panel find that Complainant has demonstrated rights in the DAYFORCE trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <dayforcecrm.com> domain name is identical or confusingly similar to Complainant’s DAYFORCE trademark as it merely adds the acronym “CRM,” a common acronym that stands for customer relationship management, and the “.com” gTLD. The addition of an acronym and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel note that the added letters CRM is an acronym for “customer relationship management”, and thereby merely indicates that it is related to a service provided by the Complainant to Complainant’s customers. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 that Respondent lacks rights or legitimate interests in the <dayforcecrm.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DAYFORCE trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also 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 trademark 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 WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the DAYFORCE mark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <dayforcecrm.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with an apparent malware scheme. Using a confusingly similar domain name in furtherance of a malware scheme 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 Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has provided evidence that the disputed domain name resolves to a website that prompts visitors to “go through a standard security check” and then install a “Secured Search extension,” which is presumably malware. Therefore, the Panel find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <dayforcecrm.com> domain name in bad faith as Respondent has a long-standing history of registering domains that infringe on the trademarks of other brand owners. A respondent’s history of adverse UDRP decisions can show bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant argues that Respondent has been involved in over 120 UDRP complaints resulting in transfer, involving a string of typosquatted domains derived from a wide range of well-known trademarks and brands. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent registered and uses the <dayforcecrm.com> domain name in bad faith as Respondent uses <dayforcecrm.com> in connection with an apparent malware scheme. Using a confusingly similar domain name in furtherance of a malware scheme can evidence bad faith per Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). As noted, Complainant has provided evidence showing that Respondent’s resolving website prompts visitors to download malware. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered the <dayforcecrm.com> domain name in bad faith as Respondent had actual notice of Complainant’s rights to the DAYFORCE trademark prior to registering the disputed domain name based on Respondent’s use of the trademark. A respondent’s use of a trademark can demonstrate actual knowledge of a complainant’s rights to the trademark prior to registering a disputed domain name and thus show bad faith. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Here, Complainant argues that DAYFORCE is a coined term with no set English meaning except as used in connection with Complainant’s services and software. Thus, Respondent must have had actual knowledge of Complainant’s rights to the trademark prior to registering the disputed domain name. The Panel agrees, and find that Respondent registered the disputed domain in bad faith per 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 <dayforcecrm.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 7, 2020
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