WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Backlinko LLC v. Contact Privacy Inc. Customer 1244268266 / Lyn Newkirk, Zureviews Distribution
Case No. D2019-1436
1. The Parties
Complainant is Backlinko LLC, United States of America (“USA” or “U.S.”), represented by Takedown Media Group, China.
Respondent is Contact Privacy Inc. Customer 1244268266, Canada / Lyn Newkirk, Zureviews Distribution, USA.
2. The Domain Name and Registrar
The disputed domain name <backlinko.biz> (“the Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 27, 2019.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 7, 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.
4. Factual Background
Complainant owns U.S. Trademark Registration No. 5,054,174 for the BACKLINKO Mark (or the “Mark”), which was registered on October 4, 2016, for educational services namely, online classes in the field of online marketing.
The Domain Name was registered on April 3, 2019.
5. Parties’ Contentions
The Domain Name <backlinko.biz> is identical to the BACKLINKO Mark. Moreover, Respondent is also selling educational services in the field of online marketing on the website associated with the Domain Name. There are four separate educational courses being sold: How to Get More [internet] Traffic in 2019; Copywriting Definitive Guide; YouTube Subscribers Course; and E-Commerce SEO (Search Engine Optimization). On each of the pages, there is a “buy now” button where those educational materials can be purchased for USD 9.95 by credit card or Paypal. By using the Mark to sell services in the same context in which Complainant was granted its trademark rights, Respondent is creating significant confusion within the marketplace.
Complainant has rights in the Mark since October 2016. Brian Dean, Complainant’s owner, first registered the company’s principle domain name <backlinko.com> on September 28, 2011. Complainant is not aware of any trademark owned by Respondent that is identical or similar to the Domain Name. A search of the United States Patent and Trademark Office’s trademark database does not show any trademarks which include the word “Backlinko” that are not registered by Complainant. Complainant did not authorize Respondent to use the Mark in any manner. The Mark is not a generic term. A search of the Internet using the search term “backlinko” will only return results related to either Brian Dean, Backlinko LLC, or the e-learning classes about online marketing which he publishes. Respondent’s use of the Mark in the Domain Name does not comply with the fair use requirement of paragraph 4(c) of the Policy. Because the Domain Name is identical to the Mark, it carries a high risk of implied affiliation with Complainant’s business. Consequently, Respondent has no rights or legitimate interests to the Mark as used in the Domain Name.
The Domain Name was registered and is being used in bad faith. By using the Mark in the Domain Name, Respondent is intentionally attempting to attract for commercial gain, Internet users to its website by impersonating Brian Dean and Complainant’s domain name. Complainant is a well-known creator and publisher of online marketing classes. Backlinko LLC was founded on July 25, 2011. The company’s website has been in existence since 2011. The Mark was registered in 2016. Within the intervening years hundreds of online news articles and interviews have been published about Complainant and its owner Brian Dean. Moreover, Respondent is well aware that Brian Dean and “www.backlinko.com” own the Mark. This is clear from the fact that Respondent has posted YouTube videos to each of the pages where it is selling a different educational course and each of these videos features Brian Dean of Backlinko LLC. Three of these videos have been taken directly from Brian Dean’s own YouTube Channel while the fourth video is a 39-minute interview in which Brian Dean answers questions related to online marketing. Before reviewing this case, Respondent removed these videos from its website, but screenshots taken on June 17, 2019, and made of record here prove Respondent’s usage and prior knowledge that Brian Dean is the owner of the Mark. By using the Mark in the Domain Name and then posting videos featuring Brian Dean of on pages where Respondent is selling online classes in the field of online marketing, Respondent is deliberately attempting to mislead Internet visitors as to the source of educational services he is selling and/or that Brian Dean is affiliated with <backlinko.biz>.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no dispute over Complainant’s rights in the BACKLINKO Mark. It is registered with the United States Patent and Trademark Office as Registration No. 5,054,174 and, therefore, is entitled to a presumption of validity.
The Domain Name <backlinko.biz> incorporates in its entirety the BACKLINKO Mark. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. The use of the generic Top-Level (“gTLD”) “.biz” does not impact the assessment whether a domain name is identical or confusingly similar to a trademark. See, Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the BACKLINKO Mark in any manner, including as a domain name. The record evidence indicates that Respondent registered the Domain Name well after Complainant had registered rights in the Domain Name. Respondent has not provided any evidence establishing that it has been commonly known by the Domain Name. Furthermore, there is no evidence that Respondent is making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name insofar as Respondent is using the Domain Name in connection with a website where Respondent is selling services similar to those sold by Complainant. Moreover, the Domain Name carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Backlinko LLC was founded on July 25, 2011, and Complainant’s website has existed since 2011. The Mark was registered with the United States Patent and Trademark Office on October 4, 2016. Respondent registered the Domain Name in 2019 – well after Complainant established its rights in the Mark. Moreover, within the intervening years, online news articles, interviews, and videos have been available about Complainant and its owner Brian Dean. Respondent would have had to know about Complainant, its owner Brian Dean, and the BACKLINKO Mark when registering the Domain Name insofar as Respondent posted YouTube videos on the website associated with the Domain Name featuring Brian Dean, the Mark, and information about online marketing. Thus, the Panel concludes that Respondent registered the Domain Name in bad faith.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant’s BACKLINKO Mark to host a site that is selling online classes in the field of online marketing, using videos that Complainant has produced. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <backlinko.biz> be transferred to Complainant.
Harrie R. Samaras
Date: August 21, 2019