LinkedIn Corporation and LinkedIn Singapore Pte. Ltd v Horizon

WIPO Case No. DAU2025-0017

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LinkedIn Corporation and LinkedIn Singapore Pte. Ltd v. HORIZON
ENGINEERING CONSULTANTS SOLUTIONS, Tawfek Mahmoud

Case No. DAU2025-0017

1. The Parties

The Complainants are LinkedIn Corporation (the “First Complainant”) and LinkedIn Singapore Pte. Ltd (the
“Second Complainant”), United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg,
Attorney at Law, LLC, United States of America.

The Respondent is HORIZON ENGINEERING CONSULTANTS SOLUTIONS, Tawfek Mahmoud, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <theaustralianlinkedin.com.au> is registered with Domain Directors Pty Ltd..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2025. On April 29, 2025, the Center transmitted by email to Domain Directors Pty Ltd. a request for registrar verification in connection with the disputed domain name. On May 9, 2025, Domain Directors Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy
(the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules

for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on May 16, 2025. In accordance with the Rules, paragraph
5(a), the due date for Response was June 5, 2025. The Response was filed with the Center on June 5,

2025.

The Center appointed Andrew F. Christie as the sole panelist in this matter on July 9, 2025. 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.

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4. Factual Background

The First Complainant, LinkedIn Corporation, and the Second Complainant, LinkedIn Singapore Pte. Ltd, are affiliates with the same parent company, Microsoft Corporation. Founded in 2003, the First Complainant connects the world’s professionals. With more than 1 billion members in more than 200 countries and regions, including executives from every Fortune 500 company, the First Complainant is the world’s largest professional network on the Internet. The First Complainant has 18,500 full-time employees with 38 offices in cities around the world and operates websites in 36 languages. The Second Complainant is registered in Australia as a foreign company under the Australian corporations legislation.

The First Complainant is the owner of at least 235 trademark registrations in at least 62 jurisdictions worldwide that consist of or include the mark LINKEDIN, including Australian Trademark No. 1401080 (registered July 2, 2012) and Australian Trademark No. 1841016 (registered November 29, 2017) for the word trademark LINKEDIN. The First Complainant is the registrant of numerous domain names, including <linkedin.com>, which it registered on November 2, 2002, and which it uses in connection with its primary website, as well as <linkedin.com.au>.

The disputed domain name was registered on October 25, 2024. The Complainants provided screenshots, taken on April 27, 2025, of the website to which the disputed domain name then resolved. This website was headed “The Australian Linked-In” with the sub-heading “Connects Australia”. The “About” page states:

“The Australian LinkedIn was founded with the vision of bridging social media gaps for Australians. Our
platform is designed to facilitate meaningful connections both locally and around the globe.” According to the
page, members can: (i) “Create detailed profiles that showcase your experience and skills, making it easier
for relevant connections to find you”; (ii) “Share knowledge and insights through posts and articles, fostering
discussions that keep you at the forefront of your industry”; and (iii) “Connect with peers via direct text and
voice messages, and audio and video calls to exchange ideas, created opportunities, and build meaningful
relationships”.

On March 13, 2025, the First Complainant sent a letter to the Respondent about the disputed domain name, requesting the Respondent to take all necessary steps to deregister the domain name. The Respondent replied on March 26, 2025, asserting, among other things: (i) Australian LinkedIn complies with Australian laws, is a registered business name, has pending Australian trademark applications, and has never infringed the First Complainant’s trademark; (ii) the First Complainant infringes the rights of other organizations by including various words in its trademarks; (iii) Australian LinkedIn intends to apply for other trademark registrations, and does not see any legal reason to withdrawn its current pending trademark applications.

As at the date of this Decision, the disputed domain name resolves to a website which appears to be the same as the website shown in the Complainants’ screenshots.

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have satisfied each of the elements required under the Policy for a cancellation of the disputed domain name.

The Complainants contend that the disputed domain name is confusingly similar to a trademark in which they have rights on the following grounds, among others. The relevant comparison to be made is with the third- level portion of the disputed domain name only (i.e., “theaustralianlinkedin”), because for a domain name registration at the third level, the applicable second level and first level suffixes in the domain name are generally disregarded when assessing identity or confusing similarity. The relevant portion of the disputed domain name, “theaustralianlinkedin,” contains in its entirety the LINIKEDIN trademark. It is clear that the LINKEDIN trademark is recognizable within the disputed domain name. The inclusion in a domain name of additional terms that are common or descriptive typically is regarded as being insufficient to prevent

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threshold Internet user confusion. Accordingly, inclusion in the disputed domain name of the words “the” and “australian” in addition to those of the LINKEDIN trademark is irrelevant and does nothing to dispel confusing Similarity.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names on the following grounds, among others. The disputed domain name is obviously similar to the LINKEDIN trademark. The Respondent is surely aware of the Complainants and their LINKEDIN trademark, especially because the website associated with the disputed domain name purports to offer “social media” services “to facilitate meaningful connections both locally and around the globe” – the same services offered by the Complainants in connection with the LINKEDIN trademark – and because the First Complainant owns 11 registrations for the LINKEDIN trademark in Australia, the oldest of which was registered in 2007. The Respondent is “Tawfek Mahmoud”, not “The Australian LinkedIn” or anything containing or similar thereto. The Respondent has sought, but failed to obtain, relevant trademark registrations. Given the First Complainant’s ownership of trademark registrations for the LINKEDIN trademark that are more than 19 years old – including nearly 18 years old in Australia – it is practically impossible that the Respondent is commonly known by this trademark. The disputed domain name is used in connection with a website that offers the same services offered by the Complainants in connection with the LINKEDIN trademark. The Respondent’s website includes a “Shop” page on its primary navigation bar, where visitors apparently can (or will be able to) purchase items for sale, which is obviously a commercial undertaking. None of the examples of fair use set forth in sections 2.5-2.10 of the Overview of Panel Views on Selected auDRP Questions, Second Edition (“auDRP Overview 2.0”) is applicable here.

The Complainants contend that the Respondent has registered or is using the disputed domain name in bad faith on the following grounds, among others. Bad faith exists in this case pursuant to paragraph 4(b)(iii) of the Policy because the disputed domain name obviously contains the First Complainant’s LINKEDIN trademark and the First Complainant is actively involved in business in Australia, as evidenced by its 11 registrations for the LINKEDIN trademark in Australia. Bad faith also exists here pursuant to paragraph 4(b)(iv) of the Policy because by offering social media services on a website using the disputed domain name – services that are similar to those offered by the First Complainant in connection with its LINKEDIN trademark – the Respondent has obviously created a likelihood of confusion.

B. Respondent

In its Response, the Respondent made numerous assertions of which the following are the most relevant.

The Respondent denies each contention of the Complaint. The Complaint is weak, faulty and includes a lot of issues, errors and mistakes.

The Australian LinkedIn business has complied with the Australian legislation since the establishment date. It was established in Australia in 2024 to reflect the Australian indigenous identity, environment and culture. The business holds a business name registration for the name “THE AUSTRALIAN LINKED”, registered on October 29, 2024. It has applied for registration of a number of trademarks, including THE AUSTRALIAN

LINKEDIN.

The Australian LinkedIn business provides noncommercial and fair use free and nonprofit communication services including but not limited to individual and/or group chat, messages, audio and video calls, and voice messages. It also provides nonprofit free advisory engineering and consultations services. The business has “been commonly known and renowned with using” the disputed domain name, and the business owner is recognized by Australian engineering and project management professional and academic bodies.

The Australian LinkedIn trademarks, domain name and business name are completely different to those of the Complainants, and its services are distinguished and different from the Complainants’ business, and are neither identical nor confusingly similar to the business names, company names, trademarks or domain names of any other Australian entity.

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The Australian LinkedIn business owns a strong legitimate right and interest in respect of the disputed domain name by both its Australian business name and its trademarks.

The Respondent used and is still using the disputed domain name to provide non-profit free communication services and free engineering advisory and consultation services on the website to which the disputed domain name resolves. The Respondent has never offered, and will never offer, any domain names. Also, the Respondent has never offered fees-based services to any consumers or customers since the business establishment date. The website’s shop has never been used, and it is not an indicator of commercial gain, as there are a lot of non-profit organizations that are linking their free services to a shop to distinguish one free service from another.

The services that are provided by the Respondent are unique and distinguished for The Australian LinkedIn business and never have nor will cause any kind of confusion to anyone. The Complainants failed to provide any evidence that their business is providing the same services that are provided by the Australian LinkedIn business, and failed to provide evidence to prove that their customers had any kind of confusion.

The Complaint has been brought by the Complainants in bad faith to abuse, harass, and deprive the Respondent from their rights to continue using the disputed domain name. The Complainants had, by the time the Complaint was filed, been informed of or had otherwise ascertained all the facts necessary to establish that the Respondent had legitimate interests in the disputed domain name. The Complainants had, in communications with the Respondent, expressly acknowledged that the Respondent had rights to the disputed domain name. The Complainants threatened to remove the trademarks and the business registration of the Respondent. The Complainants knew that they have no right in the disputed domain name, and nevertheless brought the Complaint. The Complainants had knowledge of the Respondent’s rights or legitimate interests in the disputed domain name via business registration and trademarks, and engaged in harassment and threatened to remove the Respondent’s intellectual properties. The Complainants had known from the beginning that their rights in the disputed domain name were not exclusive, that the disputed domain name was generic and consisted of common words used by many Australian individuals and organizations or entities, and that the disputed domain name described the activities for which the Respondent used it.

6. Discussion and Findings

A. Multiple Complainants

The Complaint has been filed in the name of two Complainants, both of which are affiliates with the same parent company, Microsoft Corporation. The First Complainant is the owner of the trademark registrations on which the Complaint is based. The Second Complainant is registered in Australia as a foreign company under the Australian corporations legislation. Beyond stating that it is registered as a foreign company in

Australia and that it shares the status of being an affiliate of the parent company, the Complaint does not explain the role performed by the Second Complainant. The Complaint also does not explain why it is necessary or desirable for the Second Complainant to be a co-complainant. Notably, the Complainants sought the remedy of cancellation of the disputed domain name, not transfer of it. Thus, no question arises as to whether either of the Complainants satisfies the eligibility requirements for registration (and, hence transfer) of the disputed domain name as set out in auDA Policy 2019-01 “.au Domain Administration Rules: Licensing”.

The Respondent raised no objection to the Second Complainant being a co-complainant in this case. Furthermore, the inclusion of the Second Complainant did not prejudice the equitability or the procedural efficiency of the Complaint. Accordingly, the Panel allows the inclusion of the Second Complainant as a co- complainant in the case.

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B. Identical or Confusingly Similar

The First Complainant has shown rights in respect of a trademark or service mark for the purposes of the
Policy. It is the owner of a number of trademark registrations, including in Australia, for the word trademark
LINKEDIN.

The entirety of the First Complainant’s trademark is reproduced within the disputed domain name, prefixed by the words “the” and “australian”. The Panel finds the First Complainant’s mark is recognizable within the disputed domain name, and that the addition of the words “the” and “australian” does not prevent a finding of confusing similarity between the disputed domain name and the trademark for the purposes of the Policy.

Accordingly, the disputed domain name is confusingly similar to the First Complainant’s trademark for the purposes of the Policy.

The Panel finds the first element of the Policy has been established.

C. Rights or Legitimate Interests

As explained in section 2.1.1 of the auDRP Overview 2.0, a complainant is required to make out a prima in the domain name, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the respondent does provide some evidence or plausible assertions demonstrating rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant.

facie case that the respondent lacks rights or legitimate interests in the domain name. The complainant will
usually make out a prima facie case by establishing that none of the paragraph 4(c) circumstances are
present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring
it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name.

The disputed domain name consists of the First Complainant’s registered trademark, together with the descriptive and non-distinctive phrase “the australian”. The Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainants. The Complainants have established that the Respondent is not a licensee of the Complainants, is not otherwise affiliated with the Complainants, and has not been authorized by the Complainants to use the LINKEDIN trademark. The affiliation implied by the composition of the disputed domain name is false.

The Complainants have also plausibly asserted that the Respondent is not commonly known by the disputed domain name, does not have any registered trademarks relating to the disputed domain name, is not using the disputed domain name for a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainants have, therefore, put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

To establish rights or legitimate interests in the disputed domain name, the Respondent sought to rely on its
business name registration of THE AUSTRALIAN LINKEDIN. However, the Respondent misunderstands the
legal significance of a business name registration. In particular, the Respondent appears to believe that
registration of a business name either gives proprietary rights to it or is evidence of proprietary rights in it –
neither of which is correct. Section 16 of the Business Names Registration Act 2011 (Cth) explains that the
purpose of registering a business name is to ensure that those who engage with a business carried on under
a name other than the business’s legal name can identify and contact the business. Section 18 of the
legislation makes it an offence to carry on a business under a name other than the business’s legal name
unless that name is registered as a business name. Thus, business name registration is a legal requirement
where a trader chooses to operate under a name other than their legal name. The registration permits
consumers to know the legal name of the business with whom they are engaging, and ensures that the
trader does not commit an offence. Section 17 of the Business Names Registration Act 2011 (Cth) expressly
provides that a registrant of a business name does not acquire any property rights in the business name
merely by virtue of its registration as a business name. Property rights in such a name would only arise if the

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name was a registered trademark or if the name had acquired secondary meaning such as to constitute an
unregistered trademark. See also section 2.12.3 of the auDRP Overview.

The Respondent is the applicant for a number of Australian trademark registrations for the trademarks THE AUSTRALIAN LINKEDIN and THE AUSTRALIAN LINKED-IN. However, none of these applications have proceeded to grant. A pending trademark application does not provide the applicant with any proprietary rights in the trademark for which registration is sought. See section 2.12.2 of the auDRP Overview 2.0.

For proprietary rights to subsists in a name that is not a registered trademark, it must have acquired secondary meaning – that is, it must have sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the complainant from those of other traders. Merely trading under the name does not, as such, make it distinctive. Where the name consists of a generic or descriptive word, a strong case will be required to show that the word has acquired secondary meaning such as to become associated with the user and its goods or services. Operating a website which corresponds to the name, and using that website in connection with business, will not necessarily give rights in that name. Evidence relevant to establishing such secondary meaning includes: (i) the length and amount of sales under the name; (ii) the nature and extent of advertising using the name; (iii) surveys of consumer recognition of the name; and (iv) media references to the name. In this case, the Respondent’s name lacks distinctiveness, and incorporates the registered trademark of another person (the First Complainant). The evidence provided by the Respondent does not establish that the name THE AUSTRALIAN LINKEDIN has acquired a secondary meaning that is associated with the Respondent.

The Complainants have put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration or use of a domain name is in bad faith.

The Panel notes that: (i) the Respondent registered the disputed domain name many years after the
Complainants first used and registered the Australian LINKEDIN trademark; (ii) the disputed domain name
incorporates the trademark and merely adds the descriptive phrase “the australian”; and (iii) the Respondent
has used the disputed domain name to resolve to a website purporting to offer social media and networking
services, being services that are similar to those offered by the Complainants in connection with the
LINKEDIN trademark. It is clear the Respondent registered the disputed domain name with knowledge of
the First Complainant’s trademark, and that by registering the disputed domain name the Respondent sought
to imply an affiliation with the Complainants that does not exist. Registration of the disputed domain name in
these circumstances is a bad faith registration.

It is also clear that the Respondent used the disputed domain name in an intentional attempted to attract Internet users to its website by creating confusion in the minds of the public as to an association between the website and the Complainants. The Respondent’s use of the disputed domain name in this manner is a bad faith use.

Having reviewed the record, the Panel finds that both the Respondent’s registration and the Respondent’s use of the disputed domain name were in bad faith.

The Panel finds that the third element of the Policy has been established.

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7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <theaustralianlinkedin.com.au> be cancelled.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: July 29, 2025