WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LinkedIn Corporation v. Contact Privacy Inc. Customer 0138656558 / Scott Offord, Bytes and Sites Inc

Case No. D2016-1171

1. The Parties

The Complainant is LinkedIn Corporation of Mountain View, California, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Contact Privacy Inc. Customer 0138656558 of Toronto, Canada / Scott Offord, Bytes and Sites Inc of Brookfield, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <autopilotforlinkedin.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint concerning the disputed domain name and the domain name <linkedincite.com> was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On June 10, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name and <linkedincite.com> which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Respondent submitted a non-substantive email to the Center. The proceeding was suspended on June 27, 2016. During the suspension period a settlement was reached regarding <linkedincite.com>. In light of this, the Complainant submitted an amendment to the Complaint on June 29, 2016 deleting reference to this domain name from the Complaint. The proceeding was reinstituted solely as to the disputed domain name on June 29, 2016.

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 June 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 21, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on July 26, 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.

4. Factual Background

The Complainant operates LinkedIn, the largest professional network on the Internet with more than 400 million members globally. Founded in 2003, the Complainant now has over 9,700 full-time employees and operates websites in 24 languages. According to Alexa's website ranking system, the Complainant's website at "www.linkedin.com" is among the most popular websites in the world. In the first quarter of 2016 the Complainant reported revenue of USD 861 million. The Complainant holds numerous trademark registrations for LINKEDIN in the United States and in other jurisdictions around the world. The United States Patent and Trademark Office (USPTO) issued the first U.S. registration for LINKEDIN on March 28, 2006.

The disputed domain name was registered by the Respondent on October 20, 2014, according to relevant WhoIs data maintained by the Registrar. The Respondent currently is redirecting the disputed domain name to a website at "www.autopilot.li". The website promotes what the Respondent describes as a "lead generations system" and "marketing tool" (i.e., software) created for use by LinkedIn members. The website currently contains a disclaimer representing that "Social Media Marketing Software LLC or Autopilot does not have any association with LinkedIn Corporation." The disclaimer further states: "LinkedIn Corporation does not endorse the use of Autopilot."

The Complainant describes the Respondent's software as using an automated bot, which "automates clicks through to underlying LinkedIn user profiles, and abuses LinkedIn's endorsements feature by automating the giving of endorsements to other LinkedIn members to, in order to deceptively inflate LinkedIn profile views." According to the Complainant, the Respondent's software is in violation of Complainant's terms of service as well as state and federal laws.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant's LINKEDIN mark, as the disputed domain name incorporates the Complainant's mark in its entirety. The Complainant asserts that the addition of the words "autopilot" and "for" in <autopilotforlinkedin.com> do not serve to distinguish the disputed domain name from the Complainant's mark. The Complainant maintains that the disputed domain name leaves the overall impression of being connected to the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant explains that the Respondent has not been licensed or otherwise authorized to register and use the LINKEDIN mark in any manner, which the Complainant asserts can be sufficient to prove the second element of the Policy. The Complainant further submits that the Respondent is using the disputed domain name in connection with a website selling software that illegally accesses and automates activity on the Complainant's website, in violation of the Complainant's terms of service as well as state and federal laws, including California Penal Code Section 502(c); the federal Computer Fraud and Abuse Act (18 U.S.C. §§1030); state common law of trespass; and the Digital Millennium Copyright Act (17 U.S.C. §§ 512, 1201). Consequently, the Complainant maintains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent has not been commonly known by the disputed domain name and has no trademark rights therein. The Complainant asserts based on the foregoing that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the Respondent is using the disputed domain name with a website offering for sale automated software to improperly, and without authorization, access and copy content from the LinkedIn website. According to the Complainant, the Respondent despite repeated assurances that the use of the disputed domain name would cease, has instead redirected the disputed domain name to a website at "www.autopilot.li" and is continuing to offer illegal services. The Complainant submits it is inconceivable that the Respondent could have chosen the disputed domain name without knowledge of the Complainant and the Complainant's LINKEDIN mark, and asserts that the Respondent's clear motivation registering and using the disputed domain name is to attract Internet users to the Respondent's website for commercial gain and to disrupt the Complainant's relationship with its customers.

The Complainant further asserts that the Respondent's opportunistic bad faith is demonstrated by the use of the disputed domain name for purposes of an unauthorized violation of the Complainant's terms of service. The Complainant cites Photobucket.com, Inc. v. Vindo International Ltd., WIPO Case No. D2012-0036; Supercell Oy v. Nathan Kupp / Domains By Proxy, LLC, WIPO Case No. D2016-0243.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting"(see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; and the Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, under the second element UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing that the respondent lacks such a right or interest. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

A. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's LINKEDIN mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

Applying this standard, the disputed domain name is confusingly similar to the Complainant's LINKEDIN mark for purposes of the Policy. The Complainant's LINKEDIN mark is distinctive and well-known, and the disputed domain name incorporates the Complainant's mark in its entirety. The addition of the words "autopilot" and "for" does not serve to differentiate the disputed domain name from the Complainant's mark.

Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may generally be disregarded, and are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. Nevertheless, the Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's LINKEDIN mark. The Respondent has used the disputed domain name to divert Internet users to a website offering software to LinkedIn members, which appears to violate the terms of service for the Complainant's website.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed 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 or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a response to the Complaint or otherwise, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.

It is evident from the record in this proceeding the Respondent knew of the Complainant and had the Complainant's LINKEDIN mark in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's LINKEDIN mark. The confusing similarity of the disputed domain name to the Complainant's mark likely has resulted in Internet user confusion, given that the Complainant's LINKEDIN mark is distinctive and widely known. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. Internet users encountering the disputed domain name could easily expect they will arrive at a website that is affiliated with, endorsed or sponsored by the Complainant.

Under U.S. law the referential use of another's mark is permissible only under certain conditions and must not suggest a false affiliation or endorsement by the trademark owner. These principles have been applied by panels in UDRP decisions in respect of resellers or distributors of trademarked goods or services,² as well as in other contexts. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211; BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035.

The record in this case clearly reflects the Respondent's registration and use of the disputed domain name to divert Internet users to a website where the Respondent offers software that appears at a minimum to violate the terms of service of the Complainant's website. Prior UDRP panels have found such conduct to constitute abusive registration and use of a domain name. See Photobucket.com, Inc. v. Vindo International Ltd., WIPO Case No. D2012-0036; and Supercell Oy v. Nathan Kupp / Domains By Proxy, LLC, WIPO Case No. D2016-0243 (finding bad faith where respondent's software for sale "help[s] the Complainant's users breach the Complainant's terms of service"). Moreover, against this backdrop, the Respondent's addition of the disclaimer does not legitimize the Respondent's use of the disputed domain name.

Under the attendant circumstances, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted earlier, there is no indication in the record that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the Respondent clearly was aware of the Complainant and had the Complainant's LINKEDIN mark in mind when registering the disputed domain name. Absent any reply by the Respondent, the record reflects that the Respondent's motive in relation to the registration and use of the disputed domain name most likely was to capitalize on or otherwise take advantage of the Complainant's trademark rights for commercial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to sponsorship, endorsement of or affiliation with the Respondent's website and the products and services offered thereon. While it appears the Respondent recently posted a disclaimer on his website, there is no evidence in the record that the Respondent prior to the filing of the Complaint made any genuine effort to do so. In the absence of an explanation by the Respondent, this disclaimer is too little and too late to extirpate the Respondent's bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 <autopilotforlinkedin.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: August 9, 2016

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.

² See WIPO Overview 2.0, paragraph 2.3.