Pinterest, Inc. just won control over two domain names PinSex.com and PinGay.com which are active sites driving a huge numbers of members and traffic based off a finding that Pinterest had common law rights to the word “pin”
The disputed domain name
The disputed domain name
Pinterest got a US trademark on the term “pin” in June 2014.
According to the domain holder the website pinsex.com” has had approximately 48.8 million visits since it became operative, with almost 70,000 registered users from all over the world.
In the last three months pinsex.com received over 99,000 daily visits reaching its highest peak in February 2014 with 550,000 visits in one day.
The website pingay.com has had approximately 3.4 million visits since it became operative, and has almost 3,000 registered users from all over the world. In the last three months pingay.com has received over 12,600 daily visits, reaching its highest peak also on February 2014 with 506,045 visits in one day.
I have no idea of why the domain holder did not select a three member panel but they didn’t.
Instead The one member panel of Alfred Meijboom rejected the domain holders argument that the word “pin”, is a generic term understood in most languages, with various meanings, such as “a device used for fastening objects or material together”, or to attach or fasten with a pin or pins in a specified position and finding that Pinterest has common law trademark rights also finding that the site had the “look and feel” of Pinterest.”
Here are the highlights of the decision:
“The Respondent challenges the Complainant’s allegation that its rights in the word “pin” are established based on extensive common law use, as the Complainant should have shown that the word “pin” has become a distinctive identifier associated with the Complainant or its goods/services by providing relevant evidence, which would be length and amount of sales under the trademark, the nature and extent of advertising, and consumer surveys and media recognition. The Complainant failed to submit such evidence as it merely referred to prints of its own website. The Respondent claims that many other webpages, including Google Maps, Microsoft Windows, Amazon, Microsoft Office and Facebook, use the word “pin” in the same dictionary sense of the word.
“The Respondent further argued that the Complainant only mentioned to having registrations for the mark PIN, which list cannot be contrasted with actual certificates issued by the national offices. The only certificate included was issued for the United States trademark mentioned in paragraph 4 above, which was registered on June 17, 2014 and applied for in August 2012, which was after the disputed domain names were already operative.”
“The Respondent does not argue the Complainant’s rights in the United States registered trademark PINTEREST as mentioned in paragraph 4 above, but does challenge the Complainant’s rights in the marks PINTEREST and PIN IT insofar as the Complainant based its rights on acquisition through extensive common law use for lack of sufficient evidence, as well as the rights claimed by the Complainant based on trademark registrations in absence of trademark certificates.
According to the Respondent the Complainant is clearly identified in the market by the trademark PINTEREST. However, the terms “pin” and “pin it” are generic terms that appear in the dictionary, which the Complaint – when explaining that content is called “pin” and users “pinners” – actually does not use as trademarks but within their dictionary meanings.
When comparing the disputed domain names with the Complainant’s claimed rights, it should be considered that the names of the disputed domain names are “pinsex” and “pingay”, while “pin” is a generic term that cannot be monopolized by one company. The Respondent argues that on the other hand when comparing the disputed domain names with the PINTEREST trademark there are enough differences in the names and in their conceptual references for any consumer to differentiate one term from the other.”
“The Respondent claims that it has legitimate rights and interest in respect to the disputed domain names.”
The Respondent further claims that it was established in June 2012, with providing sexual and erotic contents through the Internet as its main activity. As the Respondent is a Spanish company, the legitimate right over the disputed domain names are recognized by the Spanish Trademark Act, which acknowledges the Respondent’s trade name “Pin Digital” as an acquired right. Further in July 2012 the Respondent applied for the registration of Community trademark 11058195 for “PINSEX your daily dose of sexpiration”, and in May 2013 the Respondent applied for the registration of Community trademark 11856309 for “PINGAY”. Both trademark applications have been opposed by the Complainant and are currently in procedure.
The Complainant indicated that it launched its activity in the website “pinterest.com” in 2010 and became known in 2012. The Respondent points out that all the documents filed by the Complainant to prove it claim that it has become “well known” are in relation to the word “pinterest” and mostly within the United States. The Respondent, on the other hand, is a small company from Spain and the fact that a website becomes popular in Unites States does not mean it is well known worldwide. The Respondent’s activity began in June 2012, when the website “www.pinterest.com” was not known in the European Community. Most of Spanish and European users were not aware of its existence, and the Complainant had not even applied for a trademark registration at that time.
The Respondent argues that it is irrelevant for these proceedings if the websites under the disputed domain names have mimicked the Complainant’s business concept and claims that the Complainant has not proven to have any registered right over the layout, or how the information is provided in a web page. What is more, the websites under the disputed domain names provide sexual and erotic contents for adult users by providing a wide selection at the homepage, with direct links to specific video and photos the user may want to see. This system, layout, form of presentation is commonly used by websites that provide sexual and erotic contents.
The Respondent refers to research showing that visitors to the websites under the disputed domain names did not previously visit the Complainant’s website. Considering the services provided by the Complainant in contrast with the services provided by the Respondent, the Respondent alleges that it is clear that they are addressed to very different users, and as the Complainant does not allow any sexual or erotic content in its web page, both companies will surely never coincide in the market. In this respect, the Respondent claims that it is making a legitimate fair use of the disputed domain names, as the submitted research regarding its users show that the Respondent has no gain from the Complainant’s activity.
The disputed domain name pinsex.com was created in 2008, while the Respondent started preparations for the launch of the website under this disputed domain name early 2012.
Panels deciding cases under the Policy have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. According to the Respondent it is clear that changes to the whoIs registrant data were not made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name.
The Respondent acknowledged that the former owner of the disputed domain name
The Respondent asserts that it is clear that the disputed domain names have not been registered or acquired for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant. The Respondent has been active for various years and has never had the intention to interfere, or transfer its activity or domain names to the Complainant. Further, the disputed domain names are clearly registered and active to provide the services of the Respondent, and the disputed domain names do not prevent the Complainant from reflecting its marks in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. The Complainant and the Respondent are not competitors, as they both provide very different activities addressed to very different Internet users. In fact, the adult contents of the Respondent’s web sites under the disputed domain names are completely prohibited on the Complainant’s website.
The Respondent acknowledged that the Complainant has a valid trademark registration for the mark PIN in the United States, which trademark was filed after the Respondent started operating the disputed domain name
“The fact that this trademark registration may be younger that the Respondent’s use of the disputed domain names is, however, not relevant for the assessment of the first element of paragraph 4(a) of the Policy. ”
“The Panel shall therefore decide the relevance of the Complainant’s claim that it owns the PIN trademark based on extensive common law use, and its reference to the trademark registrations in Argentina, Japan, Mexico, New Zealand, Norway, Saudi Arabia and Switzerland.
“To establish common law rights, the Complainant must prove that the term “pin” acquired distinctiveness in relation to the goods and services of the Complainant. Generally, one would have expected the Complainant to submit relevant evidence including the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
In this case, all the Complainant did in relation to its claim for common law trademark protection was submit two webpages from its own website. As such, the Panel considers this not enough evidence to prove the Complainant’s alleged common law rights in the mark PIN.
The disputed domain names reproduce the PIN trademark in their entirety, and add the generic words “sex” and “gay”.
Such words are to be considered generic because they are descriptive for the contents of the website to which the disputed domain names resolve. It is consistently decided that adding a generic term to an established mark does not affect the finding that a domain name is confusingly similar to that mark.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark, and the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did, however, deny that it was familiar with the Complainant when it established its company in June 2012, and started preparing the introduction of the website pinsex.com.
As the element “pin” in the disputed domain names is identical to the first part of the Respondent’s company name, the Respondent believes to have a legitimate interest in the disputed domain names. The Complainant submitted ample evidence of its success by the end of 2011 and mid 2012. Although the Panel admits that the Respondent has a point when it alleged that a company being well known in the United States does not necessarily mean that it is well known in Europe or Spain, it is not convinced that the Respondent was not aware of the Complainant.
The Complainant’s services under the PIN mark were rolled out globally and a company which is active on the Internet, and more particularly in the field of social media, such as the Respondent, was or should have been aware of the existence of the Complainant.
This is further emphasized by the fact that the disputed domain names resolve to websites that are, apart from the type of content, unmistakably similar to the Complainant’s website.
The fact that the Respondent’s business concept is also similar to that of the Complainant is further evidence of the fact that it is likely that the Respondent was familiar with the Complainant.
In absence of an explanation why the Respondent chose the disputed domain names, the Panel finds that the Respondent did not succeed to show that it has rights or legitimate interests in the disputed domain names.
Therefore, the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
It is not in dispute that the disputed domain names were originally registered before the Complainant applied for registration of the PIN mark in the United States, and that the disputed domain name
The disputed domain name
The disputed domain names were registered by BeRepublic, and it is undisputed that this company transferred the disputed domain name
The invoices of BeRepublic from June 2012 which the Respondent submitted as evidence of the alleged affiliation between BeRepublic and the Respondent are merely invoices from BeRepublic showing that it performed services (e.g., search engine optimization) with respect to the website under the disputed domain name
In absence of additional evidence, the Panel therefore assumes that the disputed domain names were transferred between unaffiliated companies.
According to the circumstances explained above and those set forth in paragraph 6.B., and although the Complainant did not provide evidence of a trademark registration for the term “pin” in 2012, the Panel is satisfied that the Complainant actually used this term “pin” in the context of its social media services. In comparing the relevant websites of the Complainant and the Respondent, the Panel finds that the look and feel of the websites under the disputed domain names is very similar to the look and feel of the website of the Complainant.
The Panel cannot agree with the Respondent’s argument that many websites have a similar look and feel as none of the examples shown by the Respondent show the same amount of similarity as the Respondent’s websites.
For that reason it seems apparent that the Respondent acquired the disputed domain names because it was familiar with the Complainant, the Complainant’s website and the Complainant’s use of the term “pin” when it acquired the disputed domain names. Therefore, the Respondent has used the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant and the Complainant’s use of the term “pin” as to the source, sponsorship, affiliation, or endorsement of its services on its websites under the disputed domain names. Consequently, the disputed domain names are used by the Respondent in bad faith.
According to paragraph 4(a)(iii) of the Policy the Complainant must not only prove use of the disputed domain names in bad faith, but also registration of the disputed domain names in bad faith.
UDRP panels consistently considered acquisition of an existing domain name by a new party as a new registration for the purpose of deciding if the disputed domain names were registered in bad faith (cf. paragraph 3.7 of the WIPO Overview 2.0). Because the purpose of the Respondent’s acquisition of the disputed domain names was to take advantage of the Complainant’s goodwill in its website and (at that time not yet registered) marks, the acquisition of the disputed domain names were made in bad faith.
Consequently, the Panel finds that the Respondent also registered the disputed domain names in bad faith.”