The Complainant is LinkedIn Corporation of Mountain View, California, United States of America ("U.S."), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, U.S..
The Respondent is Private Registration of Sydney, New South Wales, Australia. 1 2. The Domain Name and Registrar
The disputed domain name (hereafter the "Domain Name") is registered with Crazy Domains FZ-LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2015. On September 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Private Registration is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2015. On October 4, 6, 8 and 23, 2015, the Respondent Gert Van Tonder sent emails to the Center. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on October 23, 2015.
The Center appointed Jon Lang as the sole panelist in this matter on November 10, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 23, 2015, due to exceptional circumstances, the Panel extended the due date for rendering its decision until December 1, 2015. 4. Factual Background
The Complainant is the world's largest professional network on the Internet. It was founded in 2003 and became a public company on May 18, 2011. Its most recently reported financial results (April 30, 2015), shows quarterly revenue of USD 638 million. The Complainant has more than 7,600 full-time employees and operates websites in 24 languages. It is headquartered in California and has several offices throughout the U.S. and internationally. According to Alexa (which operates a website ranking system), the Complainant's website at "" is the 14th most popular website in the world.
The Complainant is the registrant of numerous domain names, including , which it registered on November 2, 2002. It also owns several trademark registrations worldwide that consist of or include the mark LINKEDIN, including those (for LINKEDIN) registered on March 28, 2006, (U.S. Registration Nos. 3,074,241 and 3,074,242).
The Respondent registered the Domain Name on September 13, 2014 and uses (or used) it in connection with a dating website. 5. Parties' Contentions A. Complainant
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant has rights in the LINKEDIN trademark. The inclusion of the word "babes" in the Domain Name does nothing to alleviate any confusing similarity, because the similarity between the Domain Name and the Complainant's mark is not diminished by the addition of descriptive or generic words and Internet user confusion is unlikely to be alleviated thereby.
The Domain Name is confusingly similar to the LINKEDIN trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the LINKEDIN trademark in any manner.
In using the Domain Name, without permission or consent of the Complainant, in connection with a dating website which is targeted to the Complainant's members and which utilizes information from profiles of the Complainant's members, the Respondent's activities have not given rise to a bona fide offering of goods or services for the purposes of demonstrating rights or legitimate interests under the Policy.
Moreover, although the Complainant does not offer dating services, its professional networking services are similar to the personal networking services offered by the Respondent. The Respondent has not, in offering a service that competes with the Complainant's service, and which relies entirely on the Complainant's service for its existence and confuses users, created a bona fide offering of goods or services.
To the Complainant's knowledge, the Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name. Indeed, given the Complainant's use of the LINKEDIN trademark for 12 years and its numerous registrations worldwide, it is unlikely that the Respondent is commonly known by this trademark.
By using the Domain Name, without the permission or consent of the Complainant, in connection with a dating website which is targeted to the Complainant's members and which utilizes information from profiles of the Complainant's members, the Respondent's actions are clearly commercial in nature.
The Respondent is relying on the Complainant's famous trademark to attract Internet users to its website.
The Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith
The Respondent's motive in registering and using the website to which the Domain Name resolves appears to be to disrupt the Complainant's relationship with its customers or potential customers or to attempt to attract Internet users for potential gain.
Given the Respondent's references on its own website to the Complainant and the LINKEDIN trademark, it is inconceivable that the Respondent chose the Domain Name without knowledge of the Complainant's activities and the name and trademark under which it is doing business.
As already mentioned, the Respondent is using the Domain Name, without permission or consent of the Complainant, in connection with a dating website which is targeted to the Complainant's members and utilizes information from profiles of the Complainant's members. Such use clearly creates a likelihood of confusion with the LINKEDIN trademark because users may believe that the Respondent's website is somehow affiliated with the Complainant.
Moreover, given the Complainant's established rights in its famous LINKEDIN trademark and its use of that mark for 12 years, the Respondent's actions suggest "opportunistic bad faith".
Finally, the Respondent has had constructive notice of the LINKEDIN trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. He did, however, send 5 (five) emails to the Center, none dealing with the substance of the Complaint. For the sake of completeness however, these are set out below:
October 4, 2015 – "Hi What is the issue?
Thanks"
October 6, 2015 – "What do you need me to do?"
October 8, 2015 – "Site taken down, thanks"
October 23, 2015 – "The site has been taken down already more than a week ago.
Please confirm. Thanks"
October 23, 2015 – "The site has been taken down.
If they want the domain too, I guess they can get it. How much will they be paying for it?
Thanks" 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the LINKEDIN trademark for the purposes of the Policy.
Ignoring the generic Top-Level Domain ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's LINKEDIN mark and the word, "babes". As the LINKEDIN mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The issue therefore is whether the addition of the term "babes" renders the Domain Name something other than confusingly similar to the Complainant's LINKEDIN mark. LINKEDIN is the first and dominant element of the Domain Name. The inclusion of the word "babes" does not detract from the immediate recognition, on an aural or visual level, of the LINKEDIN mark. The Domain Name and LINKEDIN mark are confusingly similar.
The Panel finds that the Domain Name is confusingly similar to the LINKEDIN mark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would, in any way, be inappropriate.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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 in issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves as earlier described, the Panel would not accept that there is a legitimate noncommercial or fair use. In any event, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose of the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant". That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that the Respondent's website, to which a domain name which is confusingly similar to the Complainant's LINKEDIN mark resolves, could be a bona fide offering in the circumstances of this Complaint. The Respondent clearly takes advantage of the Complainant's business model and trademark in connection with its dating website in that it uses, without permission, a confusingly similar Domain Name to target the Complainant's members and utilizes information from their LINKEDIN profiles for its own commercial purposes.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent certainly has not provided any. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above.
Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
The Policy sets out other grounds upon which a finding of bad faith registration and use may be based, but given the finding above, it is unnecessary to go on to consider what other possible grounds there might be.
In all the above circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: November 30, 2015
1 The Complainant filed the Complaint against Private Registration and the Registrar Crazy Domains FZ-LLC confirmed that Private Registration is the registrant of the disputed domain name. What appears to be the underlying registrant of the disputed domain name, Gert Van Tonder, communicated with the Center further to the Notification of Complaint and Commencement of Administrative Proceeding. For the purposes of this decision, the Panel treats the underlying registrant as having been at all material times the beneficial owner of the disputed domain name and therefore all references herein to the Respondent are references to the above-named Gert Van Tonder.
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