WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LinkedIn Corporation v. Linda Audsley, The Training Company (Glos) / Domain Manager, The Training Company (Glos)
Case No. D2016-1757
1. The Parties
The Complainant is LinkedIn Corporation of Mountain View, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Linda Audsley, The Training Company (Glos) / Domain Manager, The Training Company (Glos) of Lydney, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, <linkedinlearning.com>, is registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2016. On August 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Response was filed with the Center on September 20, 2016.
On September 26, 2016, the Complainant sought to file with the Center a Supplemental Filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 3, 2016. 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.
On October 5, 2016, the Respondent filed a Supplemental Filing with the Center.
4. Factual Background
The Complainant was founded in 2003. It was publicly listed in its current form on the New York Stock Exchange on May 18, 2011. It operates the well-known online professional network “LinkedIn”. It currently claims to have over 450 million members in over 200 different countries. According to the Alexa ranking system, its website at “www.linkedin.com” is the fifteenth most popular website in the world.
It has numerous registered trademarks, either in its own name or through a subsidiary. Relevantly to the issues in this proceeding, these registrations include European Trademark Number EU008411928 for LINKEDIN in respect of a wide range of goods and services in International Classes 9, 35, 38, 41, 42 and 45 including, for present purposes:
“Online business networking services; advertising, marketing and promotion services for businesses;”
“Entertainment and education services; disseminating information and providing, sponsoring and hosting seminars, presentations and discussion groups and providing training in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; electronic publishing services for others; electronic and online publishing services; hosting of exhibitions, conferences and seminars and networking events for business, cultural and educational purposes; organising and conducting online educational and training events including virtual meetings and seminars.”
European Trademark Number EU008411928 has been registered since March 16, 2010.
The Respondent worked as a teacher, lecturer and educationalist between 1978 and 1994. In 1994, the Respondent set up and operated a work-based learning and development business under the name “The Training Company”. In August 2003, the business was transferred to a privately held company, erigo solutions limited. The nature of the business continued as before.
The disputed domain name was registered on February 8, 2011.
Until earlier this year, the disputed domain name resolved to a “parking page” apparently provided by the Registrar. The parking page included a number of pay-per-click advertisements. At the foot of the page, there was also a notice stating that the page had been put in place by the Registrar pending the development of a webpage by the registrant – in this case, the Respondent.
The Respondent says it was not aware that the disputed domain name had been parked in this manner until the Complaint was filed. After the Complaint was filed, it was not possible to put in place the website which the Respondent says it has been developing. Instead, a draft of the intended website has been put up at the domain name <linkedinlearning.co.uk>.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
As noted above, the Complainant has submitted a Supplemental Filing and, following from that, the Respondent has submitted an answering Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) of the Rules directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) of the Rules empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
For the most part, the Complainant’s Supplemental Filing addresses matters raised in the Response which could not reasonably have been anticipated, particularly as the Respondent had not linked its proposed website at either the disputed domain name or the “sister” “.co.uk” domain name. The Panel, therefore, will include the Complainant’s Supplemental Filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2. In the interests of fairness, the Respondent’s Supplemental Filing will also be admitted.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered European Trade Mark Number EU008411928 for LINKEDIN. (The Complainant has submitted evidence of numerous other registered trademarks for figurative versions of “LinkedIn” but, in the circumstances, it is unnecessary to consider them.)
The disputed domain name differs from the Complainant’s trademark by the addition of the word “learning” and the generic Top-Level Domain (“gTLD”), “.com”.
Disregarding the “.com” gTLD, the addition of the ordinary descriptive term “learning” to the Complainant’s trademark does not avoid a finding of confusing similarity. The Respondent contends that the expression “linked in learning” is a descriptive phrase apt to describe the nature of the Respondent’s services, or proposed services.
The Panel is willing to accept that the expressions “linked in” and “learning” can each be ordinary English expressions. The Panel is much less willing to accept that the composite expression “linked in learning” is a purely descriptive term, as generally understood under trademark law or the Policy. In any event, the Complainant’s sign is a registered trademark. Given the close visual and aural similarity of the disputed domain name to the Complainant’s trademark, the Panel is not prepared to go behind that registration.
Pointing to the five-and-half year delay between the registration of the disputed domain name (and a corresponding domain name in the “.co.uk” domain) and the filing of the Complaint, the Respondent also contends that the Complainant has shown very little interest in the field of education and is in reality known as a social networking site. These arguments are potentially more relevant to the issues addressed at the second and third stages of the inquiry and will be addressed in that context. All that is required at this stage of the inquiry is a visual and aural comparison of the disputed domain name to the Complainant’s trademark: WIPO Overview 2.0, paragraph 1.2.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
It is not in dispute between the Parties that the Respondent was not authorised to use the Complainant’s trademark in the disputed domain name; nor that the Respondent is not associated with the Complainant in any way. The disputed domain name is not derived from the Respondent’s name. As noted above, the Respondent contends that the expression “linked in learning” is a purely descriptive expression apt to describe the nature of the services the Respondent intends to provide via the website which is being developed for the disputed domain name.
The Complainant contests the Respondent’s position at many points. It points out that the disputed domain name resolved to a pay-per-click webpage from its registration until the filing of the Complaint. The Respondent says this was done by the Registrar without the Respondent’s knowledge. The Respondent further says that the delay was due to the demands of the Respondent’s day-to-day business, including undertaking postgraduate studies, research into appropriate materials for inclusion on the proposed website and testing. Once it came to the Respondent’s notice, the Respondent alleges that steps were taken to direct the disputed domain name to an incomplete version of the intended website, but could not because the disputed domain name was locked. To demonstrate the contemplated use for the disputed domain name, the Respondent says that it attached its unfinished “linked in learning” website to the domain name <linkedinlearning.co.uk>.
Accepting for present purposes the Respondent’s explanation for the delay in setting up the proposed website and lack of knowledge about the resolution of the disputed domain name to the pay-per-click page, the central problem for the Respondent is that its intended use is use of a confusingly similar domain name in connection with services directly covered by the Complainant’s registered trademark. The Panel has previously noted the Respondent’s view that the expression “linked in learning” is purely descriptive.
The Respondent points to a number of other domain names which begin with or include “linkedin”. Unless the scale of such uses is sufficiently large to support a finding that the expression in question is truly descriptive, however, third-party uses are not usually determinative. The examples advanced by the Respondent do not involve the composite expression “linked in learning”. All but one of the examples advanced by the Respondent are like <linkedintutors.com> and <linkedincoaching.com> which resolve to webpages displaying text such as “Grow your business with LinkedIn®” and “Optimizing LinkedIn for Career Advancement Report”, respectively. The Panel has no information whether or not these types of sites are associated officially with the Complainant. It is plain, however, that such uses involve the provision of some service or product directed to the Complainant’s LinkedIn service. As such, there may arguably be a basis for them to be characterized as nominative fair uses (although whether or not they do in fact do so is not an issue the Panel needs to decide). The point for present purposes is that their character is different to that of the Respondent’s use or intended use. Although the Respondent also invokes the defence of fair use, the Respondent does not use “linkedin” to identify the Complainant’s service. The Respondent seeks to use the term in respect of its wholly unassociated services. Accordingly, these examples do not assist the Respondent.
As noted above, the Panel has difficulty accepting the view that the disputed domain name is purely descriptive and, as also noted above, the addition of “learning” to the Complainant’s trademark does not dispel the potential for confusion. Despite the Respondent’s view that the Complainant is really and primarily a social networking site, the fact is the Complainant’s trademark is registered for the very services the Respondent alleges to be providing, or intends to provide. The Respondent adopted the disputed domain name many years after both the Complainant adopted its trademark and also after the registration of the Complainant’s trademark.
In these circumstances, the Panel is unable to accept the Respondent’s argument that it has rights or a legitimate interest in the disputed domain name. Given the registration of the Complainant’s trademark for goods and services encompassing “education services”, it appears that the Respondent’s use, or proposed use, does not fall within Policy, paragraph 4(c) safe harbors, or otherwise. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Both the Complainant and the Respondent have invoked support for this part of the case, and also the inquiry into registration and use in bad faith, from numerous prior UDRP panel decisions. The Panel is not bound by prior decisions, each of which ultimately turns on its own facts. However, the interests of certainty and predictability require the Panel to seek to decide the proceeding consistently with decisions dealing with similar fact situations: see WIPO Overview 2, paragraph 4.1.
The decisions cited by the Respondent ultimately do not assist it on this part of the case. The cases exhibit many variations, but the following examples suffice to illustrate why they do not assist the Respondent. Aero Club v. Domain Admin - DomainGrabber.com, WIPO Case No. D2013-1656 concerned the domain name <woodland.com>. The complainant proved ownership of trademarks for WOODLAND in numerous countries for footwear but, sofar as the evidence went, its actual trading activities appeared to be confined to India. The respondent had registered the domain name in 1999. The respondent was not engaged in making or selling footwear, but had a web development business in Texas in the United States. The complainant did not have any trademarks registered in the United States. Nor was it able to show any sales or reputation there. The present case is nothing like the situation in this decision.
In the second case, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424, the complainant proved ownership of the trademark HISTORIC HOTELS OF AMERICA. The respondent had registered <historichotels.com> in connection with a service for booking “historic hotels”. The learned panel in that case was prepared to accept that the respondent had adopted the domain name without any knowledge of the complainant. Also, it considered the nature of the complainant’s trademark rights to be very limited to a very close resemblance to its registered trademark. The Panel infers that this required use of effectively the whole of the trademark in question. In contrast, the disputed domain name in the present case includes the Complainant’s trademark in full and merely adds a wholly descriptive term, and is thus distinguishable.
The other cases cited by the Respondent are all distinguishable.
Accordingly, the second requirement under the Policy is satisfied.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is clear from the record that the Respondent was well aware of the Complainant’s trademark when the Respondent adopted the disputed domain name. It appears, however, that the Respondent was operating under the mistaken view that the Complainant’s rights did not extend to educational services. The Respondent’s misapprehension of the nature of the Complainant’s rights, while indicating that the Respondent may not have been acting in bad faith in the sense of an animus furandi, nonetheless cannot be exculpatory under the Policy.
The Respondent’s apparent lack of knowledge about the resolution of the disputed domain name to the pay-per--click page is also not usually exculpatory. Panels have repeatedly ruled that the registrant has a responsibility to ensure that its domain name is not used in bad faith: see WIPO Overview, paragraph 3.8.
The Respondent may well be right to argue that the Complainant was not known as a provider of educational services in 2011 when the Respondent registered the disputed domain name. Assuming that point in favour of the Respondent for the purposes of the present proceeding, it does not avail the Respondent. The fact is the Complainant has a clear trademark registration for LINKEDIN which directly covers the services the Respondent uses, or wishes to use, the disputed domain name for.
In these circumstances, the registration and use, or intended use, of the disputed domain name which is confusingly similar to the Complainant’s registered trademark constitutes registration and use in bad faith under the Policy. Accordingly, the Complainant has established the third requirement under 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 name, <linkedinlearning.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: October 17, 2016