Workday, Inc. v. Jarrod Brennet
Claim Number: FA2003001888024
Complainant is Workday, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, United States. Respondent is Jarrod Brennet (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workday-admin.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 12, 2020.
On March 13, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <workday-admin.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@workday-admin.com. Also on March 19, 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 April 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant, Workday Inc., provides enterprise cloud applications for human resources and finance. 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 Aug. 14, 2007). Respondent’s <workday-admin.com> domain name is confusingly similar to Complainant’s mark because it wholly contains Complainant’s mark, merely adding the generic term “admin,” a hyphen, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <workday-admin.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s WORKDAY mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent e-mail phishing scheme.
Respondent registered and uses the <workday-admin.com> domain name in bad faith. Respondent uses the disputed domain name to impersonate Complainant in order to deceive and defraud Complainant’s customers. Additionally, Respondent has actual knowledge of Complainant’s rights in the WORKDAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was registered on January 13, 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”).
Complainant claims rights in the WORKDAY mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 3,280,638, registered Aug. 14, 2007). Therefore, the Panel finds that Complainant has rights in the WORKDAY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <workday-admin.com> domain name is confusingly similar to Complainant’s mark because it wholly contains Complainant’s WORKDAY mark, merely adding a generic term and a hyphen. Changes to a mark such as the addition of generic terms and hyphens are generally insufficient to distinguish a domain name from a mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018). Complainant notes that the only differences between the disputed domain name and the WORKDAY mark are the additions of the generic term “admin” and a hyphen. In a case against this same Respondent, the panel found the domain <711-admin.com> to be confusingly similar to opponent’s mark 7-ELEVEN/ (7-Eleven, Inc. v. Jarrod Brennet, FA1878009 (Forum Jan. 31, 2020)). Thus, this Panel finds that the disputed domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent does not have rights or legitimate interests in the <workday-admin.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s WORKDAY mark. Where a response is lacking, WHOIS information and lack of authorization can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (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 of record lists the registrant as “Jarrod Brennet,” and Complainant contends that it did not authorize Respondent’s use of the WORKDAY mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email phishing scheme. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims that Respondent impersonates a specific employee of Complainant in order to deceive and defraud Complainant’s customers through emails about invoice payments. Complainant provides a copy of such an email from Respondent. Thus, the Panel finds that Respondent’s use of the domain name indicates that it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶4(c)(ii).
Complainant claims that Respondent registered and uses the <workday-admin.com> domain name in bad faith because Respondent uses the disputed domain name to impersonate Complainant in order to deceive and defraud Complainant’s customers. Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant claims that Respondent uses the confusingly similar domain name to deceive Complainant’s customers and profit from the confusion. As discussed, Complainant provided the Panel with a copy of one of Respondent’s fraudulent emails. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent has actual knowledge of Complainant’s rights in the WORKDAY mark. Actual knowledge may be shown through a respondent’s use of a complainant’s marks to pass itself off as the complainant under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent’s use of Complainant’s mark in its attempt to impersonate Complainant through email displays demonstrates actual knowledge of Complainant’s rights in the WORKDAY mark. Complainant has shown that the signature block of Respondent’s emails displays Complainant’s mark and information. Thus, the Panel infers that Respondent registered and uses the <workday-admin.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <workday-admin.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 27, 2020
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