LinkedIn Corporation v imran ahmed

WIPO Case No. D2023-4429

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LinkedIn Corporation v. imran ahmed

Case No. D2023-4429

1. The Parties

The Complainant is LinkedIn Corporation, United States of America, represented by The GigaLaw Firm,

Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Imran Ahmed, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <salesnavigatorprovider.com> is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2023. On October 26, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On October 26, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on October 27, 2023.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on October 31, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2023. The Respondent sent an email communication to the Center on November 1, 2023. The Center notified the commencement of panel appointment process on November 21, 2023.

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The Center appointed Luca Barbero as the sole panelist in this matter on November 24, 2023. The Panel
f inds 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 is one of the world’s largest professional network on the Internet, providing services that connect the world’s professionals to make them more productive and successful.

Founded in 2003, the Complainant has more than 19,000 full-time employees with 36 offices in cities around the world and operates websites in 26 languages, with 900 million members in more than 200 countries and regions, including executives f rom every Fortune 500 company.

The Complainant became a public company on May 18, 2011, and traded on the New York Stock Exchange under the symbol “LNKD” until it was acquired by Microsoft Corp. (“Microsoft”). When Microsof t announced its intention, on June 13, 2016, to acquire Complainant, the all-cash transaction was valued at USD 26.2 billion.

Amongst its professional services, the Complainant provides a LINKEDIN SALES NAVIGATOR solution, which offers various services for Complainant’s users by recommending data and insights to help them prioritize the accounts with the biggest opportunity and best chances with the aim at enabling users to use their time wisely, including via advanced leads and company searches.

The Complainant is the owner, amongst others, of the following trademark registrations, as per trademark registration details submitted as annex 10 to the Complaint:

- European Union trademark registration No. 018456592 for SALES NAVIGATOR (word mark), filed on April

20, 2021, and registered on September 07, 2021, in classes 41 and 45;

- International trademark registration No. 1633286 for SALES NAVIGATOR (word mark), registered on

October 19, 2021, in classes 41 and 45;

- International trademark registration No. 1626623 for LINKEDIN SALES NAVIGATOR (word mark)

registered on October 19, 2021, in class 35; and

- United States trademark registration No. 6743066 for LINKEDIN SALES NAVIGATOR (word mark), filed on

April 27, 2021, and registered on May 31, 2022 in international class 35.

The Complainant is also the owner of the domain name <salesnavigator.com>, which was registered on May
27, 2003, and is used by the Complainant to promote its LINKEDIN SALES NAVIGATOR service.

The disputed domain name <salesnavigatorprovider.com> was registered on July 21, 2023, and is pointed to a website displaying the SALES NAVIGATOR and LINKEDIN SALES NAVIGATOR trademarks and promoting a tool providing “advanced lead and account search, custom lead recommendations, and real- time sales updates” under the trademark LINKEDIN SALES NAVIGATOR. When clicking on one of the links provided to finalize the purchase or to contact the website operator, users are redirected to a Whatsapp webpage displaying a telephone number that they may contact to start a conversation.

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5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark SALES NAVIGATOR in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the term “provider” and the generic Top Level Domain (gTLD) “.com”, both of which would not prevent a f inding of confusing similarity under the f irst element.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant
states that it never licensed or authorized the Respondent to register or use the trademark SALES
NAVIGATOR in any manner.

The Complainant submits that the Respondent has never used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, since he is using the disputed domain name for a website that falsely appears to be for, or associated with, the Complainant and its LINKEDIN SALES NAVIGATOR product.

The Complainant further assets that the Respondent cannot establish rights or legitimate interests in the disputed domain name because:

i) the Respondent has never been commonly known by the disputed domain name and has never acquired

any trademark or service mark rights in the SALES NAVIGATOR mark;

ii) is making an illegitimate, commercial, unfair use of the disputed domain name, with intent for commercial

gain to misleadingly divert consumers;

iii) is not an authorized reseller of any of the Complainant’s products or services; and

iv) the Respondent’s website contains no disclosure or disclaimer informing visitors that his services are in
no way related to those of the Complainant.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered and used the disputed domain name to disrupt the Complainant’s relationship with its customers or potential customers whilst attempting to attract Internet users to his website for potential gain.

The Complainant states that considering its prior rights in the SALES NAVIGATOR mark and the fact that the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy.

The Complainant points out that the Respondent has created a likelihood of confusion with the Complainant since he is using the disputed domain name in connection with a website that falsely appears to be a website for, or associated with, Complainant and its LINKEDIN SALES NAVIGATOR product, by of fering for sale a tool or service called “LinkedIn Sales Navigator” that purportedly offers “advanced lead and account search, custom lead recommendations, and real-time sales updates”.

In its further communication dated October 27, 2023, upon acknowledging the Respondent’s identity, the Complainant also claims that the Respondent appears to be a repeat cybersquatter as he was involved in at least one other prior decision concerning 17 domain names, i.e. The Flannels Group Limited v. Imran

Ahmed, WIPO Case No. D2018-0557. The Complainant therefore submits that the Panel should f ind bad faith also in the fact that the Respondent has engaged in a pattern of abusive registrations pursuant to paragraph 4(b)(ii) of the Policy.

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B. Respondent

The Respondent did not submit a formal Response but only sent an email communication to the Center on November 1, 2023, stating that he did not understand the reason of the dispute and why the disputed domain name was locked, and requesting to have back the disputed domain name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i)        that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

Indeed, the Complainant has provided evidence of ownership of valid trademark registrations for SALES
NAVIGATOR (Annex 10 to the Complaint).

The Panel f inds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms such as “provider” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Therefore, based on the available record, the Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the Respondent. As such, where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward

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with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the Complainant). If the Respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent f rom the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel notes that the disputed domain name is used to promote and of fer for sale under the trademark LINKEDIN SALES NAVIGATOR a tool that purportedly offers “advanced lead and account search, custom lead recommendations, and real-time sales updates”. Considering the risk of implied affiliation carried by the composition of the disputed domain name, the Respondent’s use of the Complainant’s trademark to promote services in direct competition with the ones of the Complainant, and the lack of a disclaimer of non-affiliation with the Complainant, it is likely that Internet users could be confused as to the source, sponsorship, af f iliation, or endorsement of the Respondent’s website. Indeed, the content of the Respondent’s website appears to be designed to generate the impression to be visiting an of f icial website of the Complainant of one of its af f iliated entities.

In view of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Panels have held that the use of a domain name for illegal activity as applicable to this case:
impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview
3.0, section 2.13.1.

Therefore, based on the available record, the Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has directed the disputed domain name to a website where the Complainant’s trademarks SALES NAVIGATOR and LINKEDIN SALES NAVIGATOR are prominently featured and a purported LINKEDIN SALES NAVIGATOR tool, competing with the one of fered by the Complainant under the identical trademark LINKEDIN SALES NAVIGATOR, is promoted and of fered for sale. Moreover, no disclaimer of non-affiliation with the Complainant is displayed. As mentioned above, the Panel f inds that the Respondent’s website generates the impression to be visiting a website operated by the Complainant or one of its af f iliated entities, which is not the case here.

Therefore, the Panel finds that the Respondent was very likely aware of the Complainant’s trademarks at the time of registration and used the inherently misleading disputed domain name to intentionally attempt to

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attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of his website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

Lastly, panels have held that the use of a domain name for illegal activity as applicable to this case: impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Therefore, based on the available record, the Panel f inds that the Complainant has established the third element 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 <salesnavigatorprovider.com> be transferred to the Complainant.

/Luca Barbero/ Luca Barbero Sole Panelist Date: December 8, 2023