, registered on March 28, 2006, for “Online business networking services” in International Class 35;Complainant is LinkedIn Corporation, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is David Naranjo, All Play Media, United States.
The disputed domain names <linkedinconnect.com> and <linkedinleadclub.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 15, 2019, 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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Center received two email communications from the Respondent on November 19 and December 11, 2019.
The Center appointed Scott R. Austin as the sole panelist in this matter on December 17, 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.
Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support:
1) that, since it was founded in 2003, Complainant has become the world’s largest professional network on the Internet, “[w]ith more than 660 million members in over 200 countries and territories, including executives from every Fortune 500 company”;
2) that “Complainant became a public company on May 18, 2011, and traded on the New York Stock Exchange under the symbol ‘LNKD’ until Complainant was acquired by Microsoft Corp. (‘Microsoft’)”;
3) that “[w]hen Microsoft announced its intention, on June 13, 2016, to acquire Complainant, the all-cash transaction was valued at $26.2 billion”;
4) that it “has more than 15,000 full-time employees with offices in 30 cities around the world and operates websites in 24 languages”;
5) that Complainant has submitted with its Complaint data from Alexa Internet Inc. website ranking system that tracks over 30 million websites worldwide showing that, “Complainant’s website at ‘www.linkedin.com’ is the 20th most popular website in the United States”;
6) that “Complainant is the owner of at least 235 trademark registrations in at least 62 jurisdictions worldwide that consist of or include the mark LINKEDIN (hereafter, the ‘LINKEDIN Trademark’)” including but not limited to, the following:
a) United States Trademark Registration No. 3,074,241, LINKEDIN, registered on March 28, 2006, for “Online business networking services” in International Class 35;
b) United States Trademark Registration No. 3,074,242, , registered on March 28, 2006, for “Online business networking services” in International Class 35;
c) United States Trademark Registration No. 3,971,644, 
, registered on May, 31, 2011, for “Social introduction and social networking services; licensing of computer software and intellectual property” in International Class 45;
d) United States Trademark Registration No. 4,007,079, LINKEDIN, registered on August 2, 2011, for “Social introduction and social networking services; licensing of computer software and intellectual property” in International Class 45; and
e) United States Trademark Registration No. 3,303,349, LINKEDIN.COM, registered on October 2, 2007, for “Online business networking services” in International Class 35.
7) that Complainant is the registrant of numerous domain names which incorporate the LINKEDIN Trademark, including <linkedin.com>, “which it registered on November 2, 2002, and which it uses in connection with its primary website”;
8) that the respective disputed domain names were registered by Respondent on July 13, 2013, (<linkedinconnect.com>) and April 15, 2015 (<linkedinleadclub.com>) and at the time of filing, were each being used “in connection with websites that have been flagged as ‘very risky’ and ‘dangerous’ because they are associated with phishing”, “use Complainant’s LinkedIn logo without permission”, and promote practices “in violation of Complainant’s User Agreement”.
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because:
a) “Complainant is the owner of at least 235 trademark registrations in at least 62 jurisdictions worldwide that consist of or include the [LINKEDIN Trademark]”, including, but not limited to, the registrations referenced under Section 4 above;
b) Prior panels ordering transfer of disputed domain names to Complainant have found that “[t]he Complainant clearly has rights in the LINKEDIN trademark for the purposes of the Policy”. And (“[t]he Complainant’s LINKEDIN mark is distinctive and well-known”;
c) “The second-level portion of each of the Disputed Domain Names contains the LINKEDIN Trademark in its entirety, with the addition of the word ‘connect’ or the words ‘lead’ and ‘club’. Prior panels have held “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”;
d) “The addition of the words ‘connect’, ‘lead’ and ‘club’ do nothing to alleviate any confusing similarity, because ‘[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element’”;
e) “[N]umerous previous panels have found that a disputed domain name containing a complainant’s trademark plus the words ‘connect’, ‘lead’ or ‘club’ is confusingly similar to the trademark”; and
f) The “overall impression of the designation” of each of the disputed domain names is one of “being connected to the trademark of Complainant.”
2. Respondent has no rights or legitimate interests in the disputed domain names because:
a)Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the LINKEDIN Trademark in any manner”;
b) “Previous Panels under the Policy have found that a lack of legitimate rights or interests exists where, as here, ‘Complainant asserts that it has not authorized Respondent to use the mark.’”;
c) As found in decisions by prior panels, “[b]y using the Disputed Domain Names in connection with websites offering services that violate Complainant’s User Agreement (as discussed above), Respondent is not using the Disputed Domain Names ‘in connection with a bona fide offering of goods or services’ and is not ‘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’ – and, therefore, cannot establish rights or legitimate interests pursuant to paragraphs 4(c)(i) or 4(c)(iii) of the Policy”;
d) “[B]y using the Disputed Domain Names in connection with websites that have been flagged as ‘very risky’ and ‘dangerous’ because they are associated with phishing [as shown in an Annex to the Complaint], Respondent is not using the Disputed Domain Names ‘in connection with a bona fide offering of goods or services’ pursuant to paragraph 4(c)(i) of the Policy”; and
e) “[A]ccording to the WhoIs records [submitted as evidence in an Annex to the Complaint], the registrant of the Disputed Domain Names is ‘David Naranjo’ – not ‘LinkedIn’ or anything similar thereto. ‘This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy ¶ 4(c)(ii)’”.
3. The disputed domain names have been registered and are being used in bad faith because:
a) As prior panels have found, “[g]iven the global reach and popularity of the Complainant’s services under the LINKEDIN Trademark, the Panel holds that it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business” and, therefore, “Respondent registered the disputed domain name in bad faith because he must have been aware of the Complainant’s well-known trademark LINKEDIN and registered it targeting the Complainant”;
b) Prior panels have found bad faith use and registration where, as here, Respondent is using the disputed domain names in connection with websites that have been flagged as “‘very risky’ and ‘dangerous’ because they are associated with phishing”;
c) Prior panels have found bad faith use and registration where, as here, “[t]he websites use Complainant’s LinkedIn logo without permission and offer customers a ‘lead generation’ service that purports to ‘find people who are interested in your services’ and ‘introduce you to them on LinkedIn by adding you to the LIVE conversation in messenger’; and ‘the largest email databases of C-Level Linkedin Open Networkers in existence’ that purports to provide ‘Linkedin-verified email’ addresses ‘that you can import into your account and Linkedin sends out an invite to all of these people instantly’”, which actions constitute practices “in violation of Complainant’s User Agreement”;
d) “Respondent’s motive in registering and using the site [] 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”;
e) Respondent’s “actions constitute bad faith because, among other things, they ‘disrupt [] the business of a competitor’ (that is, Complainant) under paragraph 4(b)(iii) and ‘intentionally attempt [] to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s]web site or location or of a product or service on [Respondent’s]web site or location’ under paragraph 4(b)(iv)”;
f) “Previous panels under the Policy have found bad faith where a disputed domain name is used in connection with a website that, as here, ‘offer[s] for sale artificial [social media] followers’”;
g) “[M]any panels have found bad faith under paragraph 4(a)(iii) where, as here, a disputed domain name is used in a manner that violates a complainant’s terms of service”;
h) “[G]iven Complainant’s established rights in its trademarks and the fact that the Disputed Domain Names are ‘so obviously connected with’ Complainant given its use of the LINKEDIN Trademark for more than 16 years and its 235 trademark registrations in at least 62 jurisdictions worldwide [as shown in the Annex to the Complaint], Respondent’s actions suggest ‘opportunistic bad faith’ in violation of the Policy”; and
i) “[G]iven that Complainant’s first trademark registrations in the United States for the LINKEDIN Trademark were issued […] more than seven and nine years before Respondent registered the [respective] Disputed Domain Names – Respondent had constructive notice of the LINKEDIN Trademark and, accordingly, has acted in bad faith”; and
j) “[B]y registering the two Disputed Domain Names, Respondent has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy, which provides that bad faith is evidenced where a registrant has ‘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 [the registrant has] engaged in a pattern of such conduct.’”
Following the Center’s notification of the Complaint to Respondent, Respondent sent two emails to the Center. The first email was sent on November 19, 2019, the same day Respondent received the Notification of Complaint. In his first email, Respondent asserts that he does not understand the reasons for the Complaint as he has “no money” and questions whether he is being asked to delete the domain he registered and “legally purchased” from the concerned Registrar. The Center acknowledged receipt of that communication the following day, reminded Respondent that “the due date for submission of your Response is December 9, 2019”, and provided information on how to file a response.
In the second email, sent by Respondent on December 11, 2019, after the expiration of the deadline for submission of his Response, Respondent reiterates that Complainant is wasting its time because it could not recover any monetary damages against him, and suggests Complainant pay Respondent for the disputed domain names. Respondent sent no further communications and has provided no argument or evidence in response to Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of each disputed domain name; and
(iii) each disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, as well as supporting documents submitted as evidence and the decisions of prior panels, the Panel finds that Complainant has established trademark rights in and to its well-known LINKEDIN Trademark used by Complainant in connection with its online business networking services. See, e.g., LinkedIn Corporation v. Contact Privacy Inc. Customer 0138656558 / Scott Offord, Bytes and Sites Inc, WIPO Case No. D2016-1171 (“[t]he Complainant’s LINKEDIN mark is distinctive and well-known”) (transfer of <autopilotforlinkedin.com>); LinkedIn Corporation v. yin jun, WIPO Case No. D2015-1070 (transfer of <linkedin.wang>); LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679 (transfer of <linkedlnjobs.com>).
Complainant contends, inter alia, that the disputed domain names are confusingly similar to its LINKEDIN Trademark in which Complainant has rights because “[t]he second-level portion of each of the [disputed domain names] contains the LINKEDIN Trademark in its entirety, with the addition of the word ‘connect’ or the words ‘lead’ and ‘club’”. Prior panels have held “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. Asdinc.com, WIPO Case No. D2001-0903 (“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”).
The Panel agrees and notes that prior UDRP panels have also found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a generic Top-Level Domain to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy paragraph 4(a)(i). See, e.g., Facebook Inc. v. Jeremy Williams, 3 Man Group, WIPO Case No. D2019-1535 (disputed domain name <facebookbitcoin.com>“contains the Complainant’s mark in its entirety and is in this manner identical or confusingly similar to the FACEBOOK mark. The additional word ‘bitcoin’ does not avoid the confusing similarity”).
Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
One panelist, citing section 1.7 of the WIPO Overview 3.0 in a recent decision under the Policy, noted: “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue”, Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633.
Complainant’s LINKEDIN Trademark is readily recognizable as incorporated in its entirety into each of the disputed domain names here and for that reason this Panel finds the disputed domain names confusingly similar to the LINKEDIN Trademark in which Complainant has rights.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element”, WIPO Overview 3.0, section 2.1. See also, Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because:
a) “Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the LINKEDIN Trademark in any manner”;
b) “[A]ccording to the WhoIs records [submitted as evidence in an Annex to the Complaint], the registrant of the Disputed Domain Names is ‘David Naranjo’ – not ‘LinkedIn’ or anything similar thereto. ‘This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy ¶ 4(c)(ii)’”.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, stating, without challenge by Respondent, that Respondent has no license right or other authorization from Complainant “to register or use the LINKEDIN Trademark in any manner”.
Prior panels under the Policy have found that a lack of legitimate rights or 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, WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).
Complainant has submitted evidence showing Respondent’s name “David Naranjo” as the registrant in the WhoIs record made available through the concerned Registrar, which name bears no resemblance to either of the disputed domain names. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been commonly known by either of the disputed domain names. The Panel finds in review of the WhoIs record and other evidence submitted by Complainant that Respondent is not commonly known by either of the disputed domain names.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name).
The Panel has found above that the disputed domain names are confusingly similar to Complainant’s LINKEDIN Trademark. The Panel accepts Complainant’s contentions that Respondent is not commonly known by either of the disputed domain names and that Respondent has never been authorized by Complainant to use Complainant’s LINKEDIN Trademark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain names.
It remains for the Panel to determine whether there is evidence for Respondent to rebut Complainant’s prima facie case to show that it has rights or legitimate interests in the disputed domain names.
Complainant has submitted evidence in the record to support its contention that the disputed domain names at the time of filing the Complaint, were each being used “in connection with websites that have been flagged as ‘very risky’ and ‘dangerous’ because they are associated with phishing”, “use Complainant’s LinkedIn logo without permission”, and promote practices “in violation of Complainant’s User Agreement”.
For example, Complainant has shown in the Annexes attached to its Complaint, inter alia, that the websites accessed through each of the disputed domain names use Complainant’s LinkedIn logo, referenced in the LINKEDIN Trademark registrations in Section 4 above, without permission. The websites also offer customers a “lead generation” service that purports to “find people who are interested in your services” and “introduce you to them on LinkedIn by adding you to the LIVE conversation in messenger”; and “the largest email databases of C-Level Linkedin Open Networkers in existence”, that purports to provide “Linkedin-verified email” addresses “that you can import into your account and Linkedin sends out an invite to all of these people instantly.”
Complainant contends that the practices shown on Respondent’s websites are in violation of Complainant’s User Agreement, because under that Agreement users agree that they will not, among other things, “[c]reate a false identity on LinkedIn, misrepresent your identity, create a Member profile for anyone other than yourself (a real person), or use or attempt to use another’s account”; “[i]mply or state that you are affiliated with or endorsed by LinkedIn without our express consent (e.g., representing yourself as an accredited LinkedIn trainer)”; or “[r]ent, lease, loan, trade, sell/re-sell or otherwise monetize the Services or related data or access to the same, without LinkedIn’s consent.”
Section 2.13 of WIPO Overview 3.0: provides:
“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See, e.g., BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601 (“use of the disputed domain name to divert Internet traffic to a malware scam is not a bona fide offering of goods or services”); 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043 (finding no rights or legitimate interests where disputed domain name was used “to distribute malware”); Meteosolutions S.r.l. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-1288 (finding no rights or legitimate interests where “the Domain Name resolves to a warning page informing the Panel ‘yourconnection is not private, attackers might be trying to steal your information’”);
The Panel agrees with Complainant and finds that the actions taken by Respondent and practices promoted through the websites accessed through the disputed domain names violate Complainant’s User Agreement and, therefore, constitute use for illegal activity that can never confer rights or legitimate interest on Respondent.
Considering all of the circumstances, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any argument or evidence to rebut the Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain names and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain names; or
(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
The Panel finds that Respondent has registered the disputed domain names in bad faith for at least the following reasons.
As prior panels have found, “[g]iven the global reach and popularity of the Complainant’s services under the LINKEDIN Trademark, the Panel holds that it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business” and, therefore, “Respondent registered the disputed domain name in bad faith because he must have been aware of the Complainant’s well-known trademark LINKEDIN and registered it targeting the Complainant.” LinkedIn Corporation v. Registration Private, Domains By Proxy, LLC / Sathishkumar Varatharajan, Kudo Metrics, WIPO Case No. D2018-1807.
The Panel finds based on the evidence submitted that Complainant’s LINKEDIN Trademark is highly distinctive and well known throughout the world. It has been used continuously and extensively since at least as early as 2003 in connection with Complainant’s online business networking services, having rapidly acquired considerable goodwill and renown worldwide. Prior UDRP panels have repeatedly recognized the strength and renown of Complainant’s LINKEDIN Trademark in deciding in favor of transfer of disputed domain names to Complainant. See, e.g., LinkedIn Corporation v. Private Registration, WIPO Case No. D2015-1678 (transfer of <linkedinbabes.com>); LinkedIn Corporation v. Contact Privacy Inc. Customer 0138656558 / Scott Offord, Bytes and Sites Inc., WIPO Case No. D2016-1171 (“[t]he Complainant’s LINKEDIN mark is distinctive and well-known”) (transfer of <autopilotforlinkedin.com>); LinkedIn Corporation v. yin jun, WIPO Case No. D2015-1070 (transfer of <linkedin.wang>); LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679 (transfer of <linkedlnjobs.com>); LinkedIn Corporation v. Direct Privacy, Domain Name Proxy Service, Inc., WIPO Case No. D2014-0494 (transfer of <llinkedin.com>). See also WIPO Overview 3.0, section 3.2.2; see, e.g., eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks is a factor supporting bad faith).
Given these circumstances, the Panel finds that Respondent could not plausibly argue that he did not have knowledge of Complainant’s LINKEDIN Trademark at the time he registered the disputed domain names on July 13, 2013 (<linkedinconnect.com>) and April 15, 2015 (<linkedinleadclub.com>), and like prior UDRP panels in the decisions cited above, this Panel is convinced that Respondent was well aware of Complainant’s mark when it registered the disputed domain names and did so in bad faith.
Similarly, given the fact of multiple disputed domain names registered by Respondent and the timing of such registrations over a decade after Complainant began using its LINKEDIN Trademark, both of which disputed domain names encompass Complainant’s entire mark, appending common terms, the Panel believes these factors warrant a finding that Respondent has engaged in an abusive pattern of registration of domain names targeting Complainant’s LINKEDIN Trademark, such conduct amounting to bad faith registration pursuant to paragraph 4(b)(ii) of the Policy.
The Panel also finds that Respondent’s use of the disputed domain names is in bad faith.
Based on the websites to which each of the disputed domain names resolve, as discussed in detail under Section 6 B. above, Complainant submits that prior panels have found bad faith use and registration where, as here, “[t]he websites use Complainant’s LinkedIn logo without permission and offer customers services which constitute practices ‘in violation of Complainant’s User Agreement’.” See, e.g., inder, Inc. v. Edgar Jimenez, WIPO Case No. D2016-0769 (finding bad faith where disputed domain name “is used to improperly commercialize the Complainant’s content in violation of the Complainant’s Terms of Use”); Tinder, Inc. v. Raimundo Rodriguez Huter, WIPO Case No. D2016-0726 (finding bad faith where “Respondent provides services at the disputed domain name that are in violation of [Complainant’s] Terms of Use”); Supercell Oy v. Nathan Kupp / Domains By Proxy, LLC, WIPO Case No. D2016-0243 (finding bad faith where respondent acted “in breach of the Complainant’s terms of service”); WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding bad faith where “Complainant contends that Respondent is… violating [Complainant’s] Terms of Service in various ways”); and Photobucket.com, Inc. v. Vindo International Ltd., WIPO Case No. D2012-0036 (finding bad faith where “Respondent’s software product [enables conduct] in violation of the [complainant’s] Terms of Use in a manner not authorized or licensed by the Complainant”).
Given that the disputed domain names are so obviously connected with Complainant and Complainant’s established rights in its LINKEDIN Trademark through its use of the LINKEDIN Trademark for more than 16 years and its 235 trademark registrations in at least 62 jurisdictions worldwide as shown in the evidence submitted by Complainant, the Panel finds that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 (Domain Name so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests “opportunistic bad faith”). In light of the long history of Complainant’s trademarks and Complainant’s significant international presence and brand recognition, the Panel finds it is likely that Respondent knew of Complainant’s mark and by incorporating it in its entirety into the disputed domain names, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion he created between the disputed domain names and the LINKEDIN Trademark. See Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850 (finding bad faith and ordering the transfer of the domain name <casinowesternunion.com>).
The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain names in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names <linkedinconnect.com> and <linkedinleadclub.com> be transferred to Complainant.
Scott R. Austin
Sole Panelist
Date: January 6, 2020