The Complainant is LinkedIn Corporation and LinkedIn Ireland Limited of California, United States of America (“United States” or “US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Niall Keaveney, Stocktrade Ltd. of Dublin, Ireland.
The disputed domain name <linkedin.ie> is registered with IE Domain Registry Limited (“IEDR”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2015 via email and on March 31, 2015 by courier. On March 17, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On March 24, 2015, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 1, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was April 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2015.
The Center appointed Yvonne McNamara as the sole panelist in this matter on May 18, 2015. 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.
The Complainant runs a networking site with a global reach for the business community.
The first-named company of the Complainant is a Delaware company, headquartered in California, and is publicly listed.
The second-named company of the Complainant is stated to be an Irish limited company and is registered in Ireland but in fact appears to have become an unlimited company. It is based in Dublin.
The Complainant’s business was founded in 2003 and the Complainant states that it now employs more than 6,800 employees in 30 offices to run the network, which is 347 million-member strong, through 24 languages.
On the basis of the substantial database comprised in the network, the Complainant also offers network-related services to people seeking to advance their careers, recruitment organisations and businesses in search of marketing opportunities.
The Complainant has submitted with its Complaint Internet traffic data from Alexa Internet Inc. to the effect that the Complainant’s website is ranked as the 14th most popular website in the world and the 9th most popular website in the United States.
Copies of figures from unaudited accounts have also been submitted showing revenues (it is assumed total turnover) of USD 447 million for the quarter ending December 31, 2013 and USD 643 million for the quarter ending December 31, 2014. The same set of figures includes the quarterly revenues between those two dates which show an uninterrupted increase in revenues per quarter. Other figures of note show approximately USD 1.5 billion in total in revenues for 2013 and USD 2.2 billion in revenues in 2014, the latter attributable as follows: approximately USD 1.3 billion to the US business and approximately EUR 885 million to the international business.
The Complainant attaches a list of 40 trade mark registrations of the word “Linkedin” or of a device comprising a representation of the word “Linkedin” in the name of either the first or second-named companies of the Complainant. Two of these are Community trade mark registrations and two are international registrations in which several other countries are designated for protection, the remainder comprise registrations in the US and Mexico.
Of particular note in connection with the Complaint are the following:
a. Community trade mark registration number 004183893 LINKEDIN in the name of LinkedIn Ireland Ltd (presumably the second-named company of the Complainant) for goods and services in class 35 including in particular, among other things: “Online business and professional networking services; commercial information agency services; recruitment information services; professional referral services; compilation, provision and updating of a business and recruitment database for the use of subscribers.”
b. Community trade mark registration number 008411928 LINKEDIN in the name of LinkedIn Ireland Ltd for goods and services in classes 9, 38, 41, 42 and 45 and in particular in class 35 for, among other things, the following: “Online business networking services; providing an online searchable database featuring employment and career opportunities and business, employment and professional queries and answers…”.
These registrations were applied for, and therefore date from, December 9, 2004 and July 7, 2009, respectively.
The Complainant also indicates that it is the owner of numerous domain name registrations and includes with the Complaint a copy of the WhoIs record for <linkedin.com> which shows the first-named Complainant to be the owner.
The Respondent has made no reply to the Complaint.
The Complainant recites the fact evident from the WhoIs database printout included with the Complaint that the disputed domain name was registered by the Respondent on February 12, 2015.
The Complainant also indicates that the disputed domain name resolves to a website at “www.jobnetwork.ie” which offers information about jobs in Ireland.
Following the approach outlined in Sensis Pty Ltd, Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057 – a case decided under the UDRP, as distinct from the IEDR Policy, but under the Rules applicable to both – the Panel has had regard, in coming to its determination in this case, to such publicly available sources of information of indisputable accuracy as are available in an effort to obtain as many relevant facts as are possible in respect of the Respondent and its use of the “Linkedin” name.
The fact that the Respondent is an extant private limited company can be confirmed by a search against the Companies Registration Office website at “www.cro.ie”.
A business name search conducted by the Panel in the CRO website revealed registration of the business name “Linked In” by a company having the same address as the Respondent, on February 10, 2015, 2 days before the Respondent registered the disputed domain name.
The Panel conducted a search for trade marks registered or applied for in the Respondent’s name in TMview, the trade marks database covering EU member states and the Office for Harmonisation in the Internal Market itself, and found no trade marks of any kind so registered or applied for.
The Panel further noted that the disputed domain name still resolves to the “www.jobnetwork.ie” website and that the words “LinkedIn” or “Linked In” do not appear anywhere on the website.
In respect of the first head of the complaint, namely the identity or misleading similarity of the disputed domain name with a protected identifier in which the Complainant has rights, the Complainant points to its LINKEDIN trade mark registrations – both word and device marks – to assert the identity of the disputed domain name with a mark in which it has rights.
The Complainant contends that the Respondent has no rights in law and no legitimate interests in the disputed domain name in circumstances where the Complainant has never licensed the Respondent to use the LINKEDIN marks or any of them or transmitted any other right to the Respondent in respect of them and where, at least to the Complainant’s knowledge:
a. the Respondent has never used or made preparations to use the disputed domain name except for the use noted above, namely as a conduit to the “www.jobnetwork.ie” website;
b. the Respondent has never been commonly known by the name “Linkedin” and essentially could not possibly be, given the exclusive association of the “Linkedin” name with the Complainant;
c. the Respondent’s use of the disputed domain name cannot be accounted for on the basis that it has any geographical significance.
The Complainant primarily invokes clause 2.1.4 of the IEDR in its argument that the disputed domain name was registered in bad faith. The use of the disputed domain name to resolve to a website which offers job search, recruiting and related information services – a use that is comprised in the offering of the Complainant in its LINKEDIN business and for which the LINKEDIN marks are registered - is argued to be an intentional attempt to divert Internet traffic to the Respondent’s site by virtue of confusing users as to the existence of some link or association with the Complainant’s business. The Complainant argues that such is the goodwill and reputation of the Complainant that this use could not be made in ignorance of the Complainant’s rights or reputation in the mark and therefore could not have been made in good faith.
As indicated the Respondent made no response to the Complaint.
The IEDR Policy prescribes the elements of a justified complaint in respect of a domain name as follows:
(a) A domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; and
(b) The Respondent has no rights in law or legitimate interests in respect of a domain name; and
(c) A domain name has been registered or is being used in bad faith.
The consensus view drawn from the decisions of WIPO panels (as reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) is that a respondent's default in responding to a complaint in a particular case does not automatically result in a decision in favour of the complainant in the case. Accordingly, while under paragraph 13.2 of the Rules, a panel may draw appropriate inferences from a respondent's default, the complainant in such circumstances must still satisfy the panel that the three elements required under the policy in question – whether the UDRP or the IEDR Policy – have been met.
The first element to be established by a complainant is that it has rights in a protected identifier to which the domain name is identical or misleadingly similar.
Paragraph 1.3 of the IEDR Policy provides:
“Protected identifiers for the purposes of this Policy are:
1.3.1. Trade and service marks protected in the island of Ireland.
1.3.2. Personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland.
1.3.3. Geographical indications that can prima facie be protected in the island of Ireland…”
It is abundantly clear that the Complainant not only has rights in the LINKEDIN mark that has been incorporated into the disputed domain name, but, with its Community trade mark registrations, it has the strongest kind of right possible in such a word, namely registration of the word in plain block type, in Ireland – the country of interest in connection with the disputed domain name and in respect of the precise services of interest.
The Panel finds that the disputed domain name is identical to the Complainant’s Community trade mark registrations of the word “LinkedIn”.
Furthermore the nature and scale of the business run by the Complainant under the LINKEDIN mark which the Complainant has substantiated in its Complaint but which is anyway evident on the basis of being a notorious fact, within the meaning of that term in the context of the principles of judicial notice, it is further clear that the Complainant has accrued the kind of common law rights in its goodwill and reputation which could be protected by an action in passing off in circumstances where there was confusing use of the LINKEDIN mark by a third party.
The Complainant does not rely on such common law rights to establish the right on the basis of which it makes the Complaint but it is mentioned here as the scale of the reputation in question is relevant to the second and third elements of legitimate interest and bad faith.
Paragraph 3 of the IEDR Policy provides that the following factors may be considered as evidence of rights to or legitimate interests in the domain name:
“3.1.1. Where the registrant can demonstrate that before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business.
3.1.2. Where the domain name corresponds to the personal name or pseudonym of the registrant.
3.1.3. Where the domain name which is identical or misleadingly similar to a geographical indication has been used, in good faith, by the registrant before such geographical indication was protected in the Island of Ireland.”
In recognition of the difficulty that there can be in proving a negative under this head of a complaint, the practice has evolved among UDRP or IEDR panels (see paragraph 2.1 of the WIPO Overview 2.0) to require the Complainant in the first instance to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In the normal course the burden of proof would then shift to the Respondent to demonstrate rights or legitimate interests in the disputed domain name. Since the Respondent has made no response in this case however it is up to the Panel to draw such inferences as can properly be drawn.
In this regard and in respect of the indicia of rights and legitimate interests set out in paragraph 3 of the IEDR Policy, it is clear that 3.1.2 and 3.1.3 have no application in this case.
There is a fundamental point of fact in this case militating against the operation of the kind of factors described in clause 3.1.1 to show legitimate interest, namely that the Respondent can only have commenced its use of the disputed domain name after February 12 this year, when it was registered. In circumstances where it is not plausible that any person commencing use of a mark or domain name in connection with an on-line service in 2015 – particularly one relating to career opportunities – was not aware of the LINKEDIN network, which is accessed through the domain name <linkedin.com>, it is difficult to see how it could credibly be asserted that any use in the last number of years in connection with Internet-based services could have been made without notice of the Complainant’s interest in the LINKEDIN mark within the meaning of paragraph 3.1.1 of the IEDR Policy. Furthermore, such use as the Complainant is aware of, namely use purely as a conduit to the website at “www.jobnetwork.ie”, does not reflect any substantive connection with any good or service of the Respondent established or commenced at any date. Registration of the “Linked In” business name referred to above was done by the Respondent just two days before it applied to register the disputed domain name, does not appear to reflect any use of the words “Linked In” other than as part of the disputed domain name and appears to have been registered to ground the application to register the disputed domain name. Under Irish law, the registration of a business name confers no exclusive right in the use of the business name. It was in any event registered at a time when the Respondent must have been fully aware of the Complainant’s use of the LINKEDIN mark in connection with its network as set out above., Under the circumstances, the Respondent does not, in the opinion of the Panel, have any rights in law or legitimate interests in the disputed domain name.
The Panel accepts that the Complainant has not licensed the LINKEDIN mark to the Respondent. A very powerful inference to that effect arises not only from the explicit statement in the Complaint in this regard, but from the Respondent’s silence.
Paragraph 2 of the IEDR Policy provides that among the indicia of bad faith are:
2.1.1 Where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant or to a competitor of the complainant for valuable consideration in excess of the registrant’s documented expenses which are directly related to the registration of the domain name; or
2.1.2 Where the domain name has been registered or is used primarily in order to prevent the complainant from reflecting a protected identifier in which it has rights in a corresponding domain name; or
2.1.3 Where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant; or
2.1.4. Where the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the complainant has rights; or
2.1.5. Where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the complainant has rights; or
2.1.6. Where the registrant has intentionally provided misleading or false information when applying for the domain name registration.
The Complainant relies mainly on paragraph 2.1.4 for its argument.
Given the scale of the business run by the Complainant under the LINKEDIN mark, its global reach and international reputation, it is not plausible to suppose that the Respondent decided to incorporate the word “Linkedin” into a domain name under the “.ie” top level domain in early 2015 in anything other than full knowledge of the Complainant’s reputation in the mark.
In circumstances where the use made of the disputed domain name is that as a link or conduit into a website run by the Respondent which offers information in relation to jobs opportunities, the only reasonable inference arising is that the Respondent aims to gain some increase in traffic to its site by reference to the Complainant’s trade mark and business. Having regard to the difference in nature and scale of the respective businesses of the parties and the absence of any substantive use of the mark in question from the Respondent’s website, it is likely that most visitors to the Respondent’s site would not believe that they were on the Complainant’s site. However, it is entirely possible that there could be an assumption of some link or association between the two sites – perhaps that the Respondent’s site is somehow approved by, benefits from some association with, or is a local offshoot of, the Complainant’s site. On these bases the Panel finds that such diversion of Internet traffic and potential associative consequences of use of the disputed domain name was intended by the Respondent within the meaning of paragraph 2.1.4 of the IEDR Policy.
The Panel also finds that such a use would, for the reasons stated, be likely to dilute the distinctiveness of the LINKEDIN mark and that the Respondent cannot but be aware of that and that a finding of bad faith can therefore be made on the basis of considerations set out at paragraph 2.1.5 of the IEDR Policy also.
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <linkedin.ie> be transferred to the Complainant.
Yvonne McNamara
Sole Panelist
Dated: June 10, 2015