WIPO has decided three more Legal Rights Objections to New gTLD application and in all three cases the Objector has lost and the New gTLD applicant has won.
The cases decided today are:
Pinterest’s objection to Amazon’s application for the new gTLD .Pin;
Defender Security Company objection to Merchant Law Group’s application to its application for the new gTLD .Home and
The Canadian Real Estate Association’s objection to the new gTLD application of Afilias on .MLS
In the decision on .Pin the the issue was although the Objector had registered trademarks to the term Pinterst it didn’t have any registered trademark to the term “pin” which was the applied for gTLD:
“Although it appears to be common ground between the Parties that the principles of law enunciated by the United States Court of Appeals for the Ninth Circuit apply in determining likely confusion between Amazon’s proposed <.pin> gTLD and any trademark owned by Pinterest, the Panel does not accept Amazon’s
contention that Pinterest’s United States trademark rights (if any) are “the relevant rights” for the LRO and the Complainant sought to rely on two Community Trademarks (CTM) applications and the Panel held that the applications for CTMs revealed no obvious grounds for denying the registrations and as such the trade mark applications were considered sufficient for the purposes of the Policy.”
“Even if a respondent need only show an arguable case that the application will fail, a panel will still risk being drawn into an argument as to the merits of the application that it is likely to be ill placed to deal with.”
“In the absence of evidence of registered trademark rights, it is necessary for Pinterest toestablish that, through use, PIN, P and PIN IT have come to identify Pinterest and its goods or services, such as to entitle Pinterest to exercise the right at common law to prevent passing off.
“To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with the complainant’s goods and services.”
“The word PIN is a common descriptive English word , used as a noun or as a verb(as are the nouns PINNER and PINBOARD, in which Pinterest is not here claiming trademark rights).
“On the material presented by Pinterest in support of its Objection, the Panel is not satisfied that the word PIN has been used , either by Pinterest itself or by the very large number of Internet users, retailers and media commentators since Pinterest started in 2010
“Because Pinterest and others use this dictionary term for its dictionary meaning and not as a trademark, the Panel is not satisfied that PIN functions as a mark to identify Pinterest or its goods or services.”