LinkedIn Corporation v. Kharim Khan
Claim Number: FA1210001467581
Complainant is LinkedIn Corporation (“Complainant”), represented by Morgan A. Champion of Cooley LLP, New York, USA. Respondent is Kharim Khan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <linkedni.com>, registered with Domaininthehole.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2012; the National Arbitration Forum received payment on October 17, 2012.
On October 18, 2012, Domaininthehole.com LLC confirmed by e-mail to the National Arbitration Forum that the <linkedni.com> domain name is registered with Domaininthehole.com LLC and that Respondent is the current registrant of the name. Domaininthehole.com LLC has verified that Respondent is bound by the Domaininthehole.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@linkedni.com. Also on October 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <linkedni.com> domain name is confusingly similar to Complainant’s LINKEDIN mark.
2. Respondent does not have any rights or legitimate interests in the <linkedni.com> domain name.
3. Respondent registered or used the <linkedni.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant is the owner of the LINKEDIN mark. Complainant uses the LINKEDIN mark in promoting its online networking service for professionals.
2. Respondent is one Kharim Khan, located in Islamabad, Pakistan. Respondent registered the disputed domain name on November 11, 2009. The disputed domain name resolves to the <rudespace.com> domain name, an adult-oriented website.
3. Complainant is the owner of several United States Patent and Trademark Office (“USPTO”) registrations for the LINKEDIN mark (e.g., Reg. No. 3,074,241 registered Mar. 28, 2006). Complainant also holds numerous registrations to the LINKEDIN mark around the world.
4. The <linkedni.com> domain name is confusingly similar to the LINKEDIN mark. The only change made to Complainant’s mark in the disputed domain name isthe transposition of the last two letters in the LINKEDIN mark.
5. There is no evidence, neither in the WHOIS information or elsewhere, that Respondent has ever been commonly known by the <linkedni.com> domain name. Complainant has not authorized Respondent to use the LINKEDIN mark in carrying out its adult-oriented business.
6. Complainant’s mark is so famous and unique that it is overwhelmingly likely that Respondent had notice as to Complainant’s rights in the LINKEDIN mark.
7. Respondent is attempting to attract commercial gains through the confusing similarity between the disputed domain name and Complainant’s mark.
8. Respondent is engaging in opportunistic bad faith, and is capitalizing on the fame and uniqueness of the LINKEDIN mark, because there could have been no other reason to register the domain other than to confuse Internet users who associate the disputed domain with the LINKEDIN mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it has sufficient rights in the LINKEDIN mark, and that the <linkedni.com> domain name is confusingly similar to the LINKEDIN mark. Complainant bases its rights in the mark upon the fact that it is the owner of USPTO registrations for the LINKEDIN mark (e.g., Reg. No. 3,074,241 registered Mar. 28, 2006). The Panel notes that while Complainant also alleges to hold numerous registrations to the LINKEDIN mark around the world, they do not provide official documentation of these rights. Nevertheless, the Panel finds that Complainant’s registration of the LINKEDIN mark with the USPTO establishes Complainant’s rights in the mark, and that it is irrelevant that Complainant cannot provide documentation of rights within Respondent’s country of origin. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that the <linkedni.com> domain name is confusingly similar to the LINKEDIN mark. Complainant points out that the only changes made to Complainant’s mark in the disputed domain name are the addition of the gTLD “.com,” and the transposition of the last two letters in the LINKEDIN mark. Complainant argues that neither of these changes to the LINKEDIN mark prevent confusing similarity. The Panel finds the addition of “.com” to the disputed domain name is irrelevant to this analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel further agrees that the disputed domain name is confusingly similar because the Respondent merely transposed of the last two letters of the LINKEDIN mark in the <linkedni.com> domain name. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Therefore, the Panel determines that the <linkedni.com> domain name is confusingly similar to the LINKEDIN mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that there is no evidence, either in the WHOIS information or elsewhere, to indicate that Respondent has ever been commonly known by the <linkedni.com> domain name. Complainant further argues that it has not authorized Respondent to use the LINKEDIN mark in carrying out its adult-oriented business. Finally, Complainant cites the famousness and uniqueness of the LINKEDIN mark as illustrating how unlikely it is that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record gives the registrant as one “Kharim Khan.” The Panel finds that all of these factors taken to together negate the possibility that Respondent is commonly known by the <linkedni.com> domain name under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent cannot have rights or legitimate interests in the <linkedni.com> domain name because the disputed domain name resolves to another domain, <rudespace.com>, which offers adult-oriented material in the form of sexually oriented social networking. The Panel notes Complainant’s Exhibit 9, which evidences the adult-oriented material available on the website, and solicits Internet users to register for the website. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to adult-oriented material illustrates neither legitimate interests nor rights in the disputed domain name under Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Complainant also argues that Respondent is typosquatting because it transposes the last two letters in the otherwise registered LINKEDIN mark in order to take advantage of common spelling errors. The Panel agrees and find that the <linkedni.com> domain name is an effort by Respondent to redirect Internet users seeking Complainant’s LINKEDIN affiliated websites to a website featuring adult-oriented material. See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”). For these reasons, the Panel chooses to conclude that Respondent has neither rights nor legitimate interests in the <linkedni.com> domain name.
Complainant asserts that Respondent has engaged in bad faith registration and use of the <linkedni.com> domain name. Complainant argues that Respondent is attempting to attract commercial gains through the confusing similarity between the disputed domain name and Complainant’s mark. Complainant contends that Internet users will go to the disputed domain name and believe they are on a website endorsed and/or authorized by Complainant. Complainant contends that the confused or mistaken Internet users that visit the <linkedni.com> domain name find themselves on a adult-oriented fee-based website, from which Respondent earns a profit. Previous panels have held that a respondent registers and uses a disputed domain name in bad faith when they intend to profit by diverting confused Internet users who were searching for goods/services provided by the complainant. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel agrees and finds that Respondent has registered and is using the disputed domain name with the purpose of confusing Internet users and attracting personal commercial gain as prohibited under Policy ¶ 4(b)(iv).
Complainant believes that the adult-oriented material available on the disputed domain name’s resolving website is in itself evidence of a bad faith registration and use. The Panel finds that in such cases the use of a disputed domain name to divert Internet users to adult-oriented material is per se bad faith use and registration. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”). The Panel agrees and finds the use of the disputed domain name to redirect Internet users to a resolving domain name and website that features adult-oriented material is bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that its mark is so famous and unique that it is overwhelmingly likely that Respondent had notice as to Complainant’s rights in the LINKEDIN mark. In the alternative, Complainant argues that constructive notice of a famous mark such as LINKEDIN is sufficient to establish registration in bad faith. The Panel notes that Complainant bases its fame in part upon its user base of over 175 million members in over 150 industries. The Panel finds that Complainant’s argument of bad faith based on constructive notice is irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, if the Panel believes that Complainant’s LINKEDIN mark is famous enough that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds sufficient evidence of actual knowledge and concludes the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent is engaging in opportunistic bad faith because the fame and uniqueness of the LINKEDIN mark make it unlikely that Respondent could have had any reason for registering the domain name other than to trade on that name and confuse Internet users into visiting the disputed domain name. Previous panels have found bad faith registration and use when the fame of a mark is such that there could be no conceivable good faith use of the disputed domain name. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). The Panel agrees and finds Respondent was engaging in opportunistic bad faith in registering and using the <linkedni.com> domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <linkedni.com> domain name be TRANSFERRED from Respondent to Complainant
John J. Upchurch, Panelist
Dated: December 6, 2012
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