The Complainant is LinkedIn Corporation of Sunnyvale, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Adrian Worsley of Southport, Merseyside, United Kingdom, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DomainPeople, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 2019, 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 March 6, 2019 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 amended Complaint on March 7, 2019.
The Center verified that the Complaint together with the amended 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 March 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. The Response was filed with the Center on March 28, 2019.
On April 4, 2019, the Complainant submitted by email a Supplemental Submission for consideration by the Panel. On April 5, 2019, the Respondent sent an email to the Center, inquiring about the practice of supplemental filings in UDRP proceedings.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 8, 2019. 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 April 9, 2019, the Respondent submitted by email a Supplemental Submission for consideration by the Panel. 4. Factual Background
The Complainant, LinkedIn Corporation, is the operator of LinkedIn, a global online social media platform primarily used for professional networking and recruiting. The Complainant was established in 2003 and currently has over 610 million users around the world. The Complainant is a subsidiary of Microsoft Corporation and employs over 14,000 employees.
The Complainant is the holder of a multitude of trademark registrations across various jurisdictions throughout the world for the mark LINKEDIN, which it uses in connection with its social media and professional services. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- LINKEDIN and design, international word mark registered with the World Intellectual Property Organization (“WIPO”) in numerous jurisdictions under No. 1058794 on December 21, 2009 in classes 9, 35, 38, 41, 42 and 45;
- LINKEDIN, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 008411928 on March 16, 2010 in classes 9, 35, 38, 41, 42 and 45;
- LINKEDIN, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 3963244 on May 17, 2011 in class 35;
The Disputed Domain Name was registered by the Respondent on March 6, 2015. The Disputed Domain Name currently resolves to a website displaying a picture of an individual and a message “Welcome to L” together with a text advertising the Respondent’s services aimed at the development of a local client base for businesses. The website also contains a LinkedIn logo linking to the Respondent’s LinkedIn profile, where the Respondent identifies his professional occupation as “Principal: Securing Print Attribution Insight and Revenue for Publishers. LinkedIn Profile Optimiser”. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with or authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant also claims that the Respondent has registered and uses the Disputed Domain Name with an intention to trade on the Complainant’s rights and reputation, and to drive traffic to his website and LinkedIn profile page so as to promote his own advertising services. B. Respondent
In its Response, the Respondent contends that the website connected to the Disputed Domain Name was neither registered nor used with an intent to profit from the trademarks or the reputation of the Complainant. The Respondent claims that, apart from a genuine link to its own LinkedIn profile, there is no reference to the Complainant or its LinkedIn service on the website connected to the Disputed Domain Name that could cause any confusion, nor is there any content or imagery used that could prompt Internet users to believe that the Respondent and the Complainant are connected. The Respondent further claims that it uses the Disputed Domain Name in connection with a legitimate business activity which is not connected to LinkedIn that aims at advising businesses on geographic led business activity. The Respondent claims to have 25 years’ experience as managing director of a marketing and sales organization for local newspapers and website publishers. 6. Discussion and Findings 6.1. The Complainant’s and the Respondent’s Supplemental Filings
On April 4 and April 9, 2019 respectively, the Complainant and the Respondent filed a supplemental submission with the Center for consideration by the Panel.
The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.
When submitting an unsolicited supplemental filing, the party submitting the supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance) (See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant’s unsolicited Supplemental Filing was solely used to reiterate certain arguments provided in its initial Complaint and to refute foreseeable arguments made by the Respondent in its Response, such as regarding the content of the website and the alleged legitimate interest in the Disputed Domain Name. The Respondent’s Supplemental Filing was prompted by the Supplemental Filing of the Complainant and does not provide any important new arguments or facts. Accordingly, the Panel, having reviewed the Supplemental Filings by the parties, finds that there are no exceptional circumstances or relevant facts to allow the unsolicited Supplemental Filings submitted by the Complainant and the Respondent. Therefore, the Panel will not take these Supplemental Filings into consideration. 6.2. Substantive Issues
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s LINKEDIN trademark has been registered and used in connection to its online platform services.
The Disputed Domain Name incorporates the Complainant’s LINKEDIN trademark in its entirety, merely adding the suffix “local”. As stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
The Panel is of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s LINKEDIN trademark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent see section 2.1 of WIPO Overview 3.0 ).
The Complainant considers that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and/or services and that the Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. The Complainant considers that the Respondent’s use of the Disputed Domain Name to promote his advertising services for local businesses does not meet the criteria of the so called “Oki Data test” and thus cannot be considered a bona fide offering of services.
In response, the Respondent submits that he has registered the Disputed Domain Name solely in relation to a legitimate business activity that is completely different from the Complainant’s business and would not confuse any Internet users. The Respondent contends that he has registered and is using the Disputed Domain Name in connection to the generic meaning of the terms “Linked in local” to advise businesses on geographic led consumer opportunities and local marketing strategies.
The Panel determines that the Respondent has not been commonly known by the Disputed Domain Name. The WhoIs records and the website connected to the Disputed Domain Name indicate that the Respondent’s name is Adrian Worsley. The Respondent does not demonstrate to have acquired any relevant trademark rights in “linkedinlocal”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
First, the Panel finds that the nature of the Disputed Domain Name, which incorporates the Complainant’s LINKEDIN trademark in its entirety with the addition of the descriptive term “local”, effectively suggests sponsorship or endorsement by the Complainant. This is reinforced by the fact that the Respondent uses the Disputed Domain Name in connection to a website that displays the Complainant’s logo and links to the Complainant’s LinkedIn platform (see section 2.5 of WIPO Overview 3.0).
Second, the website connected to the Disputed Domain Name is used to advertise the Respondent’s local marketing and business networking services. These services are (at least in part) related to the Complainant’s goods and services pertaining to its online LinkedIn platform. This is further evidenced by the fact that the Respondent identifies himself as a “LinkedIn Profile Optimiser” on the LinkedIn account referred to on the website connected to the Disputed Domain Name. Such a commercial use of a domain name cannot be considered legitimate as it is likely to mislead Internet users as to source or sponsorship by the Complainant for commercial gain. In light of the above, the Panel does not find the Respondent’s argument that the Disputed Domain Name is purely used in connection to the generic meaning of the terms “Linked in local” without any reference to the Complainant and its trademark convincing, especially considering the multitude of alternative terms available to the Respondent.
Third, the Respondent does not accurately and prominently disclose that he is not associated with the Complainant on the website connected to the Disputed Domain Name and effectively uses the LINKEDIN trademark to offer other services unrelated to the Complainant’s platform. As a result, the Respondent also fails the so called “Oki Data test” for legitimate resellers, distributors or service providers of a complainant’s goods or services (see section 2.8 of WIPO Overview 3.0).
In view of the above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
The Respondent has incorporated the Complainant’s well-known LINKEDIN trademark in its entirety in the Disputed Domain Name and is using the Disputed Domain Name in connection to a website advertising services that are (at least in part) related to the Complainant’s services. Furthermore, the Respondent makes express reference to the Complainant on the website connected to the Disputed Domain Name through a LinkedIn logo linking to the Complainant’s LinkedIn platform. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
In the present case, the Panel is of the opinion that the Complainant’s LINKEDIN trademark is well known and widely used. By prominently using the Complainant’s trademark in the Disputed Domain Name and on the website connected to the Disputed Domain Name, the Respondent is effectively trading off the Complainant’s goodwill and reputation associated with the LINKEDIN mark to promote its local marketing and business networking services. The Panel therefore finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or the Respondent’s advertised service on the website.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeed on the third and last element of 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.
Flip Jan Claude Petillion
Sole Panelist
Date: April 16, 2019
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