WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LinkedIn Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Ogburu Johnson, Bank
Case No. DCO2018-0007
1. The Parties
The Complainant is LinkedIn Corporation of Sunnyvale, California, United States of America ("United States"), represented by The GigaLaw Firm, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Ogburu Johnson, Bank of Dubai, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <linkedinmail.co> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2018. On February 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2018, 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 February 19, 2018, 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 February 20, 2018.
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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 19, 2018.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on March 27, 2018. The Panel finds that it is 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 LinkedIn Corporation was founded in 2003 and today is one of the largest world's professional network on the Internet. With more than 546 million members in over 200 countries and territories, it includes executives from all Fortune 500 member companies. With offices in 32 cities around the world and operating websites in 24 languages, it serves to connect the world's professionals and thereby helps them exchange information.
When Microsoft Corp. announced its intention, on June 13, 2016, to acquire the Complainant, the all-cash transaction was valued at USD 26.2 billion.
According to Alexa (which operates a website ranking system that tracks over 30 million websites worldwide), the Complainant's website at "www.linkedin.com" is the 31st most popular website in the world and the 11th most popular website in the United States.
Among other domain names, the Complainant registered <linkedin.com> on November 2, 2002 which it uses for its primary website.
The Complainant holds several trademark registrations worldwide that consist of or include the mark LINKEDIN, including the following registered in the United States:
Mark | Reg. No. | Date of First Use in Commerce | Date of Registration |
LINKEDIN | 3,074,241 | May 5, 2003 | March 28, 2006 |
LINKEDIN | 3,074,242 | May 5, 2003 | March 28, 2006 |
LINKEDIN | 3,971,644 | May 2003 | May 31, 2011 |
LINKEDIN | 4,007,079 | May 2003 | August 2, 2011 |
LINKEDIN.COM | 3,303,349 | May 30, 2004 | October 2, 2007 |
All these registrations cover "networking" and related services.
The Respondent registered the disputed domain name <linkedinmail.co> on February 1, 2018 and uses it to redirect Internet users to the Complainant's own website.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name <likedinmail.co> is confusingly similar to the Complainant's trademark LINKEDIN, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussions and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trademark LINKEDIN.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In this case the disputed domain name <linkedinmail.co> contains the Complainant's trademark, LINKEDIN, in its entirety. The addition of the non-distinctive word "mail" is clearly not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) "in cases where the domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark."
Furthermore, previous panels have found that the inclusion of the word "mail" in a disputed domain name also containing a complainant's trademark is confusingly similar to the trademark. See. BHP Billiton Innovation Pty Ltd v. Coyaw,
WIPO Case No. D2017-1746 (finding <bhpbillitonmail.com> confusingly similar to BHP BILLITON).
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain ("TLD") as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0).
The Panel finds that the disputed domain name is confusingly similar to the trademark LINKEDIN in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, 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) 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to use or register the trademark LINKEDIN as a domain name or for any other reason.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, "Complainant asserts that it has not authorized Respondent to use the mark." Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144.
The Panel notes that the disputed domain name was registered and used by the Respondent to redirect Internet users to Complainant's own website. In the Panel's view this cannot be considered a bona fide offering of goods or services (See, e.g., PayPal Inc. v. Jon Shanks,
WIPO Case No. D2014-0888), but rather an attempt to mislead Internet users, as mentioned when dealing with the next prong.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The 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
To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.
Given the global reach and popularity of Complainant's services under the LINKEDIN trademark, the Panel is satisfied that the Respondent must have been aware of the Complainant's trademark LINKEDIN when it registered the disputed domain name <linkedinmail.co> on February 1, 2018.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
As expressed by one panel: "Redirecting the disputed domain name to Complainant's own website implies also bad faith: Such behavior includes the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant (see MySpace, Inc. v. Mari Gomez,
WIPO Case No. D2007-1231) and may increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant." Mandarin Oriental Services B.V. v. Domain Administrator, Matama,WIPO Case No. D2017-0615.
By using the disputed domain name, the Respondent has intentionally attempted to disrupt the Complainant's relationship with its customers and ultimately take advantage from the goodwill attached to the Complainant's famous mark LINKEDIN by creating a likelihood of confusion to Internet users with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement. This amounts to 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 <linkedinmail.co> be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: April 9, 2018
