Workday, Inc. v. Zhi Chao Yang
Claim Number: FA2205001995426
Complainant is Workday, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indianapolis, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <myworkdayjonbs.com>, <mywerkdayjobs.com>, <myworkdayjebs.com>, <mywormdayjobs.com>, <myworkdayjobx.com>, <myworkcayjobs.com>, <myworkdayuobs.com>, <myworkdayjohs.com>, <myworkrayjobs.com>, <myworkeayjobs.com>, <myworkdayjkbs.com>, <myworkdahjobs.com>, <myaorkdayjobs.com>, registered with Cloud Yuqu 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2022; the Forum received payment on May 9, 2022.
On May 10, 2022, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <myworkdayjonbs.com>, <mywerkdayjobs.com>, <myworkdayjebs.com>, <mywormdayjobs.com>, <myworkdayjobx.com>, <myworkcayjobs.com>, <myworkdayuobs.com>, <myworkdayjohs.com>, <myworkrayjobs.com>, <myworkeayjobs.com>, <myworkdayjkbs.com>, <myworkdahjobs.com>, <myaorkdayjobs.com> domain names are registered with Cloud Yuqu LLC and that Respondent is the current registrant of the names. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 May 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in English and Simplified Chinese, setting a deadline of May 31, 2022 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@myworkdayjonbs.com, postmaster@mywerkdayjobs.com, postmaster@myworkdayjebs.com, postmaster@mywormdayjobs.com, postmaster@myworkdayjobx.com, postmaster@myworkcayjobs.com, postmaster@myworkdayuobs.com, postmaster@myworkdayjohs.com, postmaster@myworkrayjobs.com, postmaster@myworkeayjobs.com, postmaster@myworkdayjkbs.com, postmaster@myworkdahjobs.com, postmaster@myaorkdayjobs.com. Also on May 11, 2022, 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 June 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Simplified Chinese, thereby making the language of the proceedings Simplified Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Notice of Complainant in English and Simplified Chinese and has chosen not to respond to the Complaint. The resolving website is in the English language. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it is a leading provider of enterprise cloud applications for human resources and finance. Founded in 2005, Complainant delivers human capital management, financial management, payroll solutions, time tracking, planning, and analytics applications designed for organizations of all sizes. The world’s largest companies trust Complainant as their enterprise cloud suite, and Complainant has customers across many industries including, communications, education, financial services, government, healthcare, insurance, life sciences, manufacturing, nonprofit, retail and hospitality, and technology. Complainant’s headquarters is in Pleasanton, California, and it has 19 other office locations throughout the United States; Complainant also has offices in other countries around the world. Complainant has rights in the WORKDAY mark through its registration with multiple trademark agencies, including in the United States in 2007 and in China in 2019.
Complainant alleges that the disputed domain names are identical or confusingly similar to its WORKDAY mark as each of the domain names contains the mark, or a misspelling of the mark, together with a misspelling of the generic/descriptive term “jobs” For example, five of the domain names include misspellings of “jobs” as “jebs”, “jobx”, “uobs”, “johs”, or “jkbs.” The other seven domain names include in intentional misspellings of WORKDAY as “werkday”, “wormday”, “workcay”, “workray”, “workeay”, “workdah”, and aorkday.” The only difference between the disputed domain names and Complainant’s trademarks is the generic term “my” and the intentional misspelling of either “jobs” or WORKDAY.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its WORKDAY mark in any way. Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, it uses the disputed domain names to resolve to a parked website that displays pay-per-click advertising hyperlinks to competing services.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. First, Respondent uses the disputed domain names to disrupt Complainant’s business by displaying competing hyperlinks for commercial gain. Moreover, Respondent uses the disputed domain name to pass off as Complainant in the furtherance of a phishing scheme. Finally, Respondent registered and uses the disputed domain names with actual knowledge of Complainant’s rights in the WORKDAY mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark WORKDAY, with rights dating back to 2007, and uses it to provide enterprise cloud applications for human resources and finance.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names resolve to a parked web page that displays pay-per-click advertising hyperlinks to services that compete with those of Complainant.
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”).
Each of the domain names contains Complainant’s WORKDAY mark, or a misspelling of the mark, together with a misspelling of the generic/descriptive term “jobs” For example, five of the domain names include misspellings of “jobs” as “jebs”, “jobx”, “uobs”, “johs”, or “jkbs.” The other seven domain names include in intentional misspellings of WORKDAY as “werkday”, “wormday”, “workcay”, “workray”, “workeay”, “workdah”, and aorkday.” The only difference between the disputed domain names and Complainant’s trademarks is the generic term “my” and the intentional misspelling of either “jobs” or WORKDAY. Misspelling a protected mark in a domain name, while adding generic/descriptive terms (whether or not misspelled), does not distinguish a disputed domain from a protected mark under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Blink Health Inc. v. Teddy Online Boot / fred ted, FA2108001960052 (Forum Sept. 20, 2021)) (finding confusing similarity when “The disputed domain name incorporates Complainant’s BLINK mark in its entirely merely adding the term ‘phamaceuticals,’ a misspelling of the term ‘pharmaceuticals’, along with the “.com” gTLD.”); see also Transamerica Corporation v. Zhichao Yang, FA2109001962452 (Forum Oct. 1, 2021) (finding confusing similarity when “Respondent’s at-issue domain names each contain Complainant’s TRANSAMERICA trademark along with either the prefix “com” or “my” and followed by the generic term “employee benefits,” or simply followed by a misspelled variant of the term “employee benefits.”); see also Liberty Mutual Insurance Company v. Texas Internet, FA1006001330686 (Forum Aug. 3, 2010) (holding <libertymutul.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark as the respondent simply omitted the letter “a”); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: WHOIS information can be used to determine whether a Respondent is commonly known by a disputed domain under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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). Here, the WHOIS information for the disputed domain names shows that the registrant is “Zhi Chao Yang”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The disputed domain names resolve to a parked webpage that displays click-through advertising links to services that compete with those of Complainant. A respondent’s use of confusingly similar domain name to display hyperlinks to third-party websites that compete with the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i)or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent uses at least one of the disputed domain names in furtherance of a phishing scheme, but it does not present convincing evidence to that effect. Thus the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and it will not further discuss the allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain to disrupt Complainant’s business for commercial gain through competing hyperlinks. Generally, using the confusingly similar nature of a disputed domain name to attract Internet users to a website that features links to third-party competitors of a complainant is evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of a disputed domain name that sponsored advertisements demonstrated bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN /DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (finding that it can be presumed that the respondent is obtaining some commercial benefit when the respondent’s use of a disputed domain name involves hosting links to third-parties who are in competition with the complainant). Therefore the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent displays a pattern of bad faith registration of disputed domain names. First, Complainant cites prior UDRP cases lost by Respondent; second, registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myworkdayjonbs.com>, <mywerkdayjobs.com>, <myworkdayjebs.com>, <mywormdayjobs.com>, <myworkdayjobx.com>, <myworkcayjobs.com>, <myworkdayuobs.com>, <myworkdayjohs.com>, <myworkrayjobs.com>, <myworkeayjobs.com>, <myworkdayjkbs.com>, <myworkdahjobs.com>, <myaorkdayjobs.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 14, 2022
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