The Complainant is LinkedIn Corporation of Sunnyvale, California, United States of America ("United States"), represented by The GigaLaw Firm, United States.
The Respondents are Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States / Claudio Coppola of Oshawa, Ontario, Canada (hereinafter, "the Respondent"). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 26, 2017.
The Center verified that the Complaint together with the amendment to 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 proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. On September 26, 2017, two email communications were received by the Center from the Respondent. The Center informed the parties about the commencement of the panel appointment process on October 19, 2017.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 26, 2017. 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. 4. Factual Background
The Complainant is LinkedIn Corporation, a company providing professional social networking services on a global scale. The Complainant's global headquarters are in Sunnyvale, California, and it has regional headquarters in Dublin and Singapore. In August 2017, the Complainant's website was ranked as the 25th most visited website in the world, according to the website ranking system "Alexa".
The Complainant submitted evidence that it holds, amongst others, trademark rights for LINKEDIN (the "Trademarks") in the United States, including word and semi-figurative trademarks, the first of which were registered on March 28, 2006 (United States Trademark Registration No. 3074241 LINKEDIN). The fact that the Complainant has rights in the Trademarks has furthermore been confirmed by previous UDRP decisions (LinkedIn Corporation v. Private Registration,WIPO Case No. D2015-1678; LinkedIn Corporation v. yin jun,WIPO Case No. D2015-1070; LinkedIn Corporation v. Daphne Reynolds,WIPO Case No. D2015-1679). The Complainant also submitted evidence that it has been the holder of the domain name since November 2, 2002, which it uses in connection with its primary website.
The disputed domain name was registered on April 3, 2017, well after the Complainant secured rights to the Trademarks. The disputed domain name does not resolve to an active website. However, in accordance with evidence submitted by the Complainant, the Respondent was using the disputed domain name in emails offering a fraudulent "LinkedIn Loyalty Rewards Program" and as part of an email address. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark rights.
First of all, the Complainant states that the disputed domain name contains the Trademarks in its entirety, with the addition of the word "rewards", and refers to previous UDRP decisions that have found that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy" (Oki Data Americas, Inc. v. A,WIPO Case No. D2001-0903; Six Continents Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249;
Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
Furthermore, the Complainant asserts that the addition of the word "rewards" does nothing to alleviate any confusing similarity, as numerous UDRP decisions have concluded that the addition of a word, including the addition of the word "rewards", is not sufficient to avoid a finding of confusing similarity (AARP v. Anthony Lauberth,WIPO Case No. D2017-0155; Government Employees Insurance Company v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC,WIPO Case No. D2016-1275; Compagnie Générale des Etablissements Michelin v. Kim Bum LLC / PrivacyP,WIPO Case No. D2012-2092). According to the Complainant, this is further enhanced by the fact that the Trademark appears at the beginning of the disputed domain name and therefore constitutes its dominant portion. The overall impression of the disputed domain name is that it is connected to the Complainant's Trademarks.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in LINKEDIN and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that it has never assigned, licensed, transferred or authorized in any way the Respondent to register or use the disputed domain name in any manner.
Moreover, to the Complainant's knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademarks or service rights in it.
Moreover, the Complainant asserts that, by failing to use the disputed domain name in connection with an active website, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the disputed domain name (Philip Morris USA Inc. v. Gabriel Hall,WIPO Case No. D2015-1779; L'Oréal v. Haya Manami,WIPO Case No. D2015-0924).
Furthermore, the Complainant states that the Respondent uses the disputed domain name in emails offering a fraudulent loyalty rewards program, which would further substantiate the finding that the Respondent has no rights or legitimate interests in the disputed domain name (Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc. v. infosheraton,WIPO Case No. D2010-2195; and Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742).
(c) The disputed domain name was registered and is being used in bad faith.
According to the Complainant, the Respondent's motive for registering and using the disputed domain name has been to disrupt the Complainant's relationship with its customers or to attempt to attract Internet users for potential gain, which would constitute evidence of registration and use in bad faith.
The Complainant asserts that the Respondent must have been aware of the Trademarks when registering the disputed domain name. The Complainant further submits that the Respondent has not used the disputed domain name in connection with an active website, which, combined with the fact that the Trademarks have a strong reputation and are widely known, is evidence of bad faith. This finding would be supported by the fact that the Respondent tried to conceal its true identity and has failed to provide any evidence of good faith use.
Finally, the Complainant submits that the Respondent has tried, through emails containing the disputed domain name, to convey the false impression that Internet visitors can obtain rewards that are connected to the Complainant's activities. The Respondent would therefore have tried to obtain a commercial benefit by taking advantage of the reputation of the Complainant's Trademarks, which would constitute bad faith (amongst others, The Coca-Cola Company v. Frank Rasile,WIPO Case No. D2014-0466; London Merchant Securities plc v. Anjei Gandhi,WIPO Case No. D2005-0433). B. Respondent
Following the Center's notification of the Complaint to the Respondent, the Respondent sent two emails to the Center, on September 26, 2017. In its first email, the Respondent asserts that he does not understand the reasons for the Complaint as he registered and paid for the disputed domain name, and he asks for more information. In the second email, the Respondent states that he has involved his lawyers and he repeats his request for more information. The Respondent has not sent any further communications and has not replied to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LINKEDIN.
Secondly, as to whether the disputed domain name is identical or confusingly similar to the Trademarks, the comparison is to be made between the Trademarks and the second-level portion of the disputed domain name only (i.e. "linkedinrewards"), as it is well established that the generic Top-Level Domain (".com") may be disregarded for this purpose (Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom,WIPO Case No. D2005-1115; L'Oréal v. Tina Smith,WIPO Case No. D2013-0820).
The disputed domain name fully incorporates the Complainant's LINKEDIN Trademarks in which the Complainant has exclusive rights, with the addition of the generic word "rewards". Similarly to other UDRP panels, this Panel finds that the addition of the word "rewards" does not constitute an element so as to avoid confusing similarity for purposes of the Policy (PepsiCo, Inc. v. Bin G Glu,WIPO Case No. D2007-0490; Government Employees Insurance Company v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC,WIPO Case No. D2016-1275; AARP v. Anthony Lauberth,WIPO Case No. D2017-0155).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's LINKEDIN Trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue."
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
First of all, there is no evidence that the Respondent is commonly known by the name "linkedinrewards", or is in any way affiliated with the Complainant or authorized to use the Trademarks. Furthermore, the Complainant has submitted evidence that the website linked to the disputed domain name is inactive, and that the disputed domain name has been used in fraudulent emails pretending to offer rewards in connection with the Complainant's activities. In light of this evidence and as the Respondent has chosen not to rebut the Complainant's allegations in his communications, this Panel finds that the Complainant has satisfied this element of the test in paragraph 4(a)(ii) of the Policy (Solvay SA v. Registration Private, Domains By Proxy, LLC / "SOLVAY SA",WIPO Case No. D2016-0393; SYSTRA v. Eq Brain,WIPO Case No. D2017-1479; Syngenta Participations AG v. Guillaume Texier, Gobain ltd,WIPO Case No. D2017-1147).
For the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of "registration and use of a domain name in bad faith."
First of all, with regard to the Respondent's registration of the disputed domain name, this Panel believes, after reviewing the evidence submitted by the Complainant, that the Respondent must have known and have been aware of the Complainant's Trademarks and the associated products and services at the time of registration of the disputed domain name.
It further appears from the Complainant's evidence that the disputed domain name has not been used in connection with an active website. Rather, the Respondent has been using the disputed domain name in fraudulent emails, claiming to offer rewards in relation to the Complainant's services and asking for information from the Internet users receiving the emails. It appears therefore that the Respondent purposefully conveys the impression that its activities are those, or are linked to those, of the Complainant, to attract Internet users for fraudulent purposes. In line with well-established case law, this Panel finds such activities to constitute bad faith use (The Coca-Cola Company v. Frank Rasile,WIPO Case No. D2014-0466; DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135; London Merchant Securities plc v. Anjei Gandhi,WIPO Case No. D2005-0433). This finding is further confirmed by the Respondent's attempt to hide its identity.
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy. 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 disputed domain name be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: November 9, 2017
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