Workday, Inc., filed a UDRP against the domain name Workday.media, on the basis of a registered mark for WORKDAY from 2007. The disputed domain was registered in 2024 and the Complainant operates from the domain Workday.com.
The Complainant lost the UDRP despite no response being filed by the Respondent.
Here’s what the Forum (NAF) panelist said:
The Domain Name consists of the generic word “workday”. The Domain Name has a generic meaning, namely a day on which one works (as distinguished from a day off) and the Panel is not satisfied that WORKDAY mark is so distinctive, well-known and ubiquitous that the Panel can conclude, for that reason alone, that the Respondent’s registration of a domain name containing an ordinary English language word was motivated by awareness of Complainant and a desire to take advantage of any confusion (which would generally amount to bad faith registration), as opposed to registration of the Domain Name for its inherent meaning.
Final decision: Deny the transfer of the domain Workday.media to the Complainant. The decision showcases why ultra-generic domains often make rather weak trademarks.
The domain transfer was denied.
Workday, Inc. v. Giancarlo Molina / c3.ai
Claim Number: FA2404002095649
PARTIES
Complainant is Workday, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Giancarlo Molina / c3.ai (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is workday.media (“Domain Name”), registered with Squarespace Domains II LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 30, 2024; Forum received payment on April 30, 2024.
On April 30, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the workday.media domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@workday.media. Also on May 1, 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 May 23, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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, Workday, Inc., is a leading provider of enterprise cloud applications for human resources and finance. Complainant has rights in the WORKDAY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,280,638 registered August 14, 2007). Respondent’s workday.media domain name is identical or confusingly similar to Complainant’s mark because it incorporates the WORKDAY mark in its entirety and adds the “.media” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the workday.media domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its WORKDAY mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, but instead passively holds the Domain Name.
Respondent registered and uses the workday.media domain name in bad faith. Respondent passively holds the Domain Name. Respondent had actual knowledge of Complainant’s rights in the WORKDAY mark prior to registration of the workday.media domain name due to the reputation of the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant having failed to establish bad faith registration and use of the domain name workday.media has not established all required elements of its claim, and thus its complaint must be denied.
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 has rights in the WORKDAY mark based on registration with the USPTO (e.g. Reg. No. 3,280,638 registered August 14, 2007). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the workday.media domain name is identical to Complainant’s WORKDAY mark as it wholly incorporates the WORKDAY mark along with the “.media” gTLD; see Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Domain Name consists of the generic word “workday”. The Domain Name has a generic meaning, namely a day on which one works (as distinguished from a day off) and the Panel is not satisfied that WORKDAY mark is so distinctive, well-known and ubiquitous that the Panel can conclude, for that reason alone, that the Respondent’s registration of a domain name containing an ordinary English language word was motivated by awareness of Complainant and a desire to take advantage of any confusion (which would generally amount to bad faith registration), as opposed to registration of the Domain Name for its inherent meaning. Nor does Complainant provide any evidence relating to the identity of Respondent, such as past dealings with Complainant, or connection with Complainant’s businesses, such that it would be reasonable to infer Respondent was aware of Complainant at the time of registration. Nor is there any evidence before the Panel of the Respondent engaging in a pattern of bad faith behavior or any other conduct that would suggest registration and use of the Domain Name in bad faith. Respondent is not obviously a competitor of Complainant.
Therefore, in order to determine if Respondent’s registration of the Domain Name was motivated by awareness of Complainant or the inherent qualities of the word “workday”, it is necessary to consider evidence of Respondent’s use of the Domain Name. The Domain Name was registered on March 24, 2024 and presently does not resolve to any active website. While non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding, the WIPO Jurisprudential Overview 3.0 at ¶ 3.3 states that:
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In the present case the Complainant’s mark and the Domain Name consist of a generic English-language word and it is not implausible that there may be a good faith use for a domain name that refers to an activity that most adults undertake for much of their adult lives.
The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting. See IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. “). In the present case Respondent has registered a domain name consisting of a generic term that happens to correspond with WORKDAY mark and not used the Domain Name in the two months since registration. Absent any other evidence that Respondent has engaged in bad faith conduct, those facts are not sufficient to establish bad faith under the Policy.
The Panel notes that in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s WORKDAY mark as opposed to the descriptive meaning of the word there may be grounds to consider a refiled complaint, subject to the applicable criteria.
As reasoned above, the Panel finds that Complainant has failed to prove that the Domain Name was registered and used in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the workday.media domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: May 24, 2024
