ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LinkedIn Corporation v. Name Redacted Case No. D2022-3290 1. The Parties 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 Name Redacted.1 2. The Domain Names and Registrar The disputed domain names and (the "Domain Names") are registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2022. On September 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 5, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 proceedings commenced on September 9, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 3, 2022. The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 17, 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. 1 The Respondent's name has been redacted at the request of the Complainant, as explained below. page 2 4. Factual Background The Complainant is a corporation established under the laws of the State of Delaware, United States and headquartered in Sunnyvale, California, United States. The LinkedIn social media platform was launched in 2003 and now connects more than 850 million professionals in more than 200 countries and regions. The Complainant became a public company on May 18, 2011, and traded on the New York Stock Exchange under the symbol "LNKD" until Microsoft Corporation acquired the Complainant in 2016. The Complainant has more than 19,000 full-time employees with 36 offices in cities around the world and operates websites in 26 languages, including a principal website at "www.linkedin.com". The Complainant holds at least 235 LINKEDIN and LINKEDIN-formative trademark registrations in at least 62 jurisdictions, including United States registrations for LINKEDIN (Registration Number 3074241, registered March 28, 2006) and LINKEDIN.COM (Registration Number 3303349, registered October 2, 2007) as standard character marks. The Registrar's WhoIs database shows that the Domain Name was registered in the name of a domain privacy service (Contact Privacy Inc. Customer 7151571251, Canada) on June 3, 2022, and the Domain Name was registered a month later, on July 3, 2022, in the name of the same domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant of both Domain Names as the Respondent [Name Redacted], with no organization listed and different postal addresses in the State of California. The Panel notes that both postal addresses given are incomplete, representing actual residential apartment buildings but without the unit numbers necessary to deliver mail. Different contact email addresses are listed as well for the two Domain Names. Nevertheless, noting the same registrant name and broader circumstances of the case, the Panel considers the Domain Names were registered by the same Respondent and are under common control. Moreover, the Complainant states that the Respondent [Name Redacted] is actually the name of an employee of the Complainant. It appears that the Respondent has been impersonating an unrelated third party (an employee of the Complainant), and the Complainant requests that the Respondent's name be redacted in the published Decision. The Policy, paragraph 4(j) provides that "[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision". The Panel determines that this is such a case. The registration details for the underlying registrant are suspicious on their face, and the Respondent has not replied to communications from the Complainant or the Center. The Panel does not consider it probable that the named Respondent was a party to the registration of the Domain Names, and the Panel orders the redaction of the Respondent's name to protect the named Respondent's privacy and avoid further impersonation and potential identity theft. See, e.g., Lutosa v. Name Redacted, WIPO Case No. D2021-0809. Accordingly, the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. It does not appear that the Domain Names have ever resolved to active websites. However, the Complainant demonstrates with Network Tools that as of September 4, 2022, the Respondent had configured MX records for the Domain Names. MX records are DNS (domain name system) resource records that specify a mail server, enabling a domain name to be used for email addresses. Thus, the party controlling the Domain Names has prepared to use the Domain Names for email purposes. page 3 5. Parties' Contentions A. Complainant The Complainant asserts that both Domain Names are confusingly similar to its registered LINKEDIN and LINKEDIN.COM trademarks, and that the Respondent has no permission to use the marks or other evident rights or legitimate interests in the Domain Names, which have not been used to date. The Complainant argues for a presumption of bad faith, given that the Complainant's LINKEDIN mark is famous or widely known, protected by at least 235 trademark registrations in at least 62 jurisdictions worldwide, the oldest of which was registered 16 years ago. Even in 2016, a UDRP panel found that the Complainant's mark was "distinctive and well-known". LinkedIn Corporation v. Contact Privacy Inc. Customer 0138656558 / Scott Offord, Bytes and Sites Inc, WIPO Case No. D2016-1171. Further, the creation of MX records is often seen as a prelude to fraudulent use of a domain name for phishing or spearphishing scams. See, e.g., Altria Group, Inc. and Altria Group Distribution Company v. Emerson Terry, WIPO Case No. D2021-0045; Zambon S.p.A. v. Wills Sylace, WIPO Case No. D2020-3347. The Complainant quotes Pancil, LLC v. Jucco Holdings, WIPO Case No. D2006-0676: "[t]he only explanation of what has happened is that the Respondent's motive in registering and using the [domain names] seems to be [.] simply to disrupt the Complainant's relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy." As there is not yet a website or email use associated with the Domain Names, the Complainant also cites the "passive holding" doctrine first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("Nuclear Marshmallows"). The Complainant suggests that the Nuclear Marshmallows factors align well with the circumstances of this proceeding: the Complainant's mark is distinctive and well-established, the actual registrant has obscured its identity and failed to submit a Response, and any good faith use of the Domain Names is implausible. A previous UDRP panel similarly concluded that the passive holding doctrine applied in a proceeding involving the Complainant's trademark: LinkedIn Corporation v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Claudio Coppola, WIPO Case No. D2017-1789. The Complainant argues further that the registration of two Domain Names based on its LINKEDIN mark reveals a pattern of conduct "to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name", as described in paragraph 4(b)(ii) of the Policy. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall 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". page 4 A. Identical or Confusingly Similar The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. The Domain Names both incorporate the Complainant's registered LINKEDIN and LINKEDIN.COM trademarks in their entirety. The addition of a word ("finances" or "receivable", respectively) does not prevent a finding of confusing similarity. See id., section 1.8. The addition of the TopLevel Domain ".com" is usually disregarded as a standard registration requirement (see id. section 1.11.1); in this case, it happens to be included in the trademark LINKEDIN.COM, which only affirms the confusing similarity. The Panel concludes that the Complainant has established the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent's 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent 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 at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant has demonstrated well-established trademark rights, denies any permission to use the trademark, and observes the lack of use of the Domain Names to date. Thus, the Complainant has made a prima facie case, and the burden of production shifts to the Respondent. The Respondent has obscured its identity, apparently impersonated an employee of the Complainant, and failed to respond to the Complaint. The Panel finds that the Respondent has failed to meet its burden of production and concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following (in which "you" refers to the registrant of the domain name): "(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 page 5 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 online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." The record shows (as earlier UDRP panels have found) that the Complainant's LINKEDIN mark is highly distinctive and very well known in the United States and internationally. The Panel finds it probable that the Respondent was well aware of the mark and intended ultimately to exploit it, with the effect of disrupting the business of a "competitor" as described in paragraph 4(b)(iii) (in the sense of acting in opposition to the Complainant - see WIPO Overview 3.0, section 3.1.3) or misdirecting Internet users to another site for commercial gain as described in paragraph 4(b)(iv). While there are decisions finding a "pattern of conduct" in as few as two domain name registrations, it is not clear that depriving the Complainant of these two descriptive Domain Names in the sense of paragraph 4(b)(ii) was a likely motive in this case. The examples listed in paragraph 4(b) are expressly non-exclusive, however, and the Complainant cites precedents for a presumption of bad faith simply from the registration of a domain name based on a famous or well-known trademark such as this one (see WIPO Overview 3.0, section 3.1.4). The Respondent has not responded with any reasoning or evidence to rebut such a presumption. Similarly, as the Respondent has not yet published a website or used the Domain Names to send emails, the Complainant cites the passive holding doctrine of Nuclear Marshmallows. See WIPO Overview 3.0, section 3.3, which accords well with the facts of this case. The trademark is not a dictionary word. The mark is very well established, with at least 235 registrations in 65 jurisdictions over 16 years, applied to a brand used by more than 850 million people worldwide. The Respondent has apparently usurped the identity of an employee of the Complainant and has failed to respond to the Complaint. At the same time, the Respondent has configured the Domain Names for potential use in fraudulent email schemes, which also would be bad faith use under the Policy (see WIPO Overview 3.0, section 3.4). Given the totality of these circumstances, the Panel finds that the Respondent registered and is using the Domain Names in bad faith, thus concluding that the Complainant has established the third element of the Complaint. 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 Names, and , be transferred to the Complainant. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: October 31, 2022
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