The Complainant is LinkedIn Corporation, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Dejan Marinkovic, Serbia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 December 13, 2021, 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 December 15, 2021.
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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Center received email communications from the Respondent on December 13, 14, 15, 17, and 28, 2021, and January 13, 2022.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 19, 2022. 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 BackgroundThe Complainant was founded in 2003 and the Complainant is a business that connects the world’s professionals, with a view to making them more productive and successful. The Complainant has 756 million members in 200 countries and regions, including executives from Fortune 500 companies and is one of the world’s largest professional networks on the Internet.
The Complainant became a public company on May 18, 2011, and traded on the New York Stock Exchange, until the Complainant was acquired by Microsoft Corp., to which the Panel is referring as “Microsoft”. Microsoft acquired the Complainant in 2016 in a transaction that was valued at USD 26.2 billion.
The Complainant has more than 16,000 full time employees with 33 offices in cities around the world and operates websites in 24 languages, including at “www.linkedin.com”. The Complainant registered that domain name on November 2, 2002. The Complainant’s global headquarters are in Sunnyvale, California, with EMEA headquarters in Dublin and APAC headquarters in Singapore.
The Complainant is the owner many trademark registrations in many jurisdictions worldwide that consist of or include the trademark LINKEDIN and a schedule of these trademark registration is set out in Annex 11 to the Complaint. These include United States Reg. No 3,074,241 LINKEDIN registered as of March 28, 2006, with claimed date of first use in commerce of May 5, 2003.
The Disputed Domain Name was registered on September 2, 2019. The Respondent is using the Disputed Domain Name in connection with a website for “International Strategic Consulting” that promotes the services of an individual named Dejan Marinkovic, who is now named as the Respondent, as set out at Annex 9 to the Complainant.
The Respondent, Dejan Marinkovic, had sent an email to the Complainant on November 22, 2021, offering to sell the Disputed Domain Name, stating “Offer me an amount I won’t be able to refuse”. This was from [...]@linkedin.tel.
5. Parties’ Contentions A. Complainant Identical or Confusingly SimilarThe Complainant submits that, as a previous panel has found in LinkedIn Corporation v. Private Registration WIPO Case No. D2015-1678
The Complainant goes on to submit that the Disputed Domain Name is confusingly similar to the LINKEDIN trademark, with the Top Level Domain (“TLD”) in a domain name, as “.com” to be disregarded under the confusing similarity test. The Complainant continues that the second-level portion of the Disputed Domain Name contains the LINKEDIN trademark in its entirety. The Complainant draws the Panel’s attention to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 1.7, which sets out that, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The Complainant further submits that, where, as in this case, the Disputed Domain Name contains the Complainant’s trademark and only such trademark, it is apparent without elaboration that that the Disputed Domain Name is identical or confusingly similar to the trademark and cites in support Societe Air France v. Indra Armansyah,WIPO Case No. D2016-2027.
The Complainant concludes that the Disputed Domain Name is confusingly similar to the LINKEDIN trademark.
Rights or Legitimate InterestsThe Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name and states that the Complainant has never assigned, granted, licensed, transferred or in any way authorized the Respondent to register or use the LINKEDIN trademark in any way and submits that this fact, on its own, can be sufficient to prove the second criterion of the Policy and cites in support Six Continents Hotels, Inc. v IQ Management Corporation,WIPO Case No. D2004-0272. The Complainant continues that previous panels have found that a lack of legitimate rights or interests exists where, as here, the Complainant asserts that it has not authorized the Respondent to use the trademark, which is not denied by the Respondent.
The Complainant notes that the Respondent is using the Disputed Domain Name in connection with a website that promotes an individual’s “International Strategic Consulting” services, as set out in Annex 9 to the Complaint. The Complainant submits that these services are just as the services offered by the Complainant’s own LinkedIn website, which offers individuals the opportunity to promote their professional services, and concludes that the Respondent is not engaged in a bona fide offering of goods or services, as set out in paragraph 4(c)(i) of the Policy and cites various previous WIPO decisions in support, including Burlington Networks Inc. v. Tope Lawal,WIPO Case No. D2005-0974.
The Complainant continues that, to the Complainant’s knowledge, the Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. The Complainant submits that, therefore, the Respondent cannot establish rights or legitimate interests pursuant paragraph 4(c) (ii) of the Policy. The Complainant continues that the Respondent is not commonly known by the Disputed Domain Name or any variation thereof pursuant to the Policy, paragraph 4(c)(ii). The Complainant also submits that, given the Complainant’s use of the LINKEDIN trademark for more than 18 years and its 235 trademark registrations in at least 62 jurisdictions worldwide, it is certain that the Respondent is not commonly known by the LINKEDIN trademark.
The Complainant submits that, by using the Disputed Domain Name to promote his own “International Strategic Consulting” services, as set out in Annex 9 to the Complaint, and by offering to sell the Disputed Domain Name to the Complainant for “an amount I won’t be able to refuse”, as set out in Annex 10 to the Complaint, the Respondent is clearly not engaged in a noncommercial use of the Disputed Domain Name, without intent for commercial gain and, therefore, does not have rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. The Complainant concludes that the Respondent has not been making noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, because the Respondent is offering the Disputed Domain Name for sale.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registered and Used in Bad FaithThe Complainant submits that the Disputed Domain Name should be considered as having been registered and used in bad faith by the Respondent.
The Complainant cites WIPO Overview 3.0, section 3.1.4, which states that “The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. The Complainant submits that the LINKEDIN trademark is clearly well known, given that it is protected by at least 235 trademark registrations in at least 62 jurisdictions worldwide, the oldest of which was registered more than 15 years ago.
The Complainant continues that it is implausible that the Respondent was unaware of the Complainant when the Respondent registered the Disputed Domain Name, given the fame of the LINKEDIN trademark. The Complainant continues that the only explanation of what has happened is that the Respondent’s motive in registering and using the Disputed Domain Name seems simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. The Complainant submits that these both constitute evidence of registration and use in bad faith.
The Complainant also sets out that, as shown in Annex 10 to the Complaint, the Respondent sent an email to the Complainant attempting to sell the Disputed Domain Name and wrote “Offer me an amount I won’t be able to refuse”. The Complainant submits that this constitutes bad faith pursuant to paragraph 4(b)(i) of the Policy. The Complainant continues that the Complainant’s first trademark registrations in the United States for its LINKEDIN trademark were issued on March 28, 2006, more than 13 years before the Respondent registered the Disputed Domain Name and that the Respondent has acted in bad faith accordingly.
The Complainant concludes that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant
B. RespondentThe Respondent did not file a formal Response but sent various email communications to the Center, which do not raise any points that are relevant to the issues in this Complaint.
6. Discussion and FindingsThe Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established registered rights in its LINKEDIN trademark and that the earliest of those registered rights go back some 13 years before the registration of the Disputed Domain Name. The Panel further finds that the Complainant’s LINKEDIN trademark has become well known, due to the massive use that has taken place of that trademark throughout the world for the past nearly 20 years.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s LINKEDIN trademark, in which the Complainant has rights. The Disputed Domain Name incorporates in full the Complainant’s well-known trademark LINKEDIN, in which the Complainant has rights. In assessing confusing similarity, it is well established that the incorporation of a TLD, such as “.tel”, as here, does not avoid a finding of confusing similarity.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark LINKEDIN, in which the Complainant has rights, and the provisions of the Policy, paragraph 4(a)(i) have been met.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Respondent is not affiliated with or licensed by the Complainant to use the Complainant’s LINKEDIN trademark nor has the Respondent been commonly known by the Disputed Domain Name. The use of the Disputed Domain Name to resolve to a website that offers “International Strategic Consulting” services, which could be taken to be similar services to those offered by users of the Complainant’s own services, does not constitute use of 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, without intent for commercial gain to misleadingly divert consumers or to tarnish the LINKEDIN trademark of the Complainant.
The Panel finds that the provisions of paragraph 4(a)(ii) of the Policy have been met.
C. Registered and Used in Bad FaithThe Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. It is a reasonable inference from the use that the Respondent has made of the website linked to the Disputed Domain Name and from the fact that the Complainant’s trademark is well-known that the Respondent knew of the Complainant’s LINKEDIN trademark, when the Respondent registered the Disputed Domain Name.
The Panel finds both that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant, who is owner of the LINKEDIN trademark, for valuable consideration likely in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name and, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s LINKEDIN trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or the services offered on that website.
Accordingly, the Panel finds the provisions of paragraph 4(a)(iii) have been satisfied.
7. DecisionFor 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,
Michael D. Cover
Sole Panelist
Date: February 2, 2022