The Complainant is Pinterest, Inc. of San Francisco, California, United States of America (“United States”), represented by Baker & McKenzie, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Pinerest.com c/o Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Ian Townsend of Madrid, Spain.
The disputed domain name <pinerest.com> is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 29, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied 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 notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2015.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 2, 2015. 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.
To the Panel’s knowledge (on which subject see section 6A below), the Complainant is a provider of online services via its website and mobile applications under the PINTEREST trademark, providing a facility whereby Internet users may gather images and content and organize this into themed collections on a “pinboard”.
The Complainant is the owner of a variety of registered trademarks for the word mark PINTEREST in a range of different jurisdictions including, for example, United States registered trademark No. 4145087 registered on May 22, 2012 in international classes 42 and 45.
According to WhoIs records the disputed domain name was created on February 25, 1998. Little is known regarding the Respondent, who appears from the WhoIs to be an individual with an address in Spain. The Complainant submits that the Respondent is not the original registrant of the disputed domain name and notes that, according to historic WhoIs records, that entity was a memorial park and funeral home in Alabama, United States. The Complainant says that the disputed domain name has more recently been transferred to the Respondent. The probable date for such transfer, according to the Complainant, is August 24, 2015, which is the “last updated” date shown on the WhoIs record of October 13, 2015.
Screenshots produced by the Complainant illustrate its assertion that the disputed domain name cycles through to a number of different unconnected websites, one of which invites users to participate in a survey purporting to be run by the Complainant, which produces a popup window on entry stating “Congratulations Pinterest Visitor!”, and another of which directs users to malware.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that it satisfies the threshold requirement of having trademark rights under the Policy and that its PINTEREST trademark is incorporated in the disputed domain name with the omission of a single character. The Complainant asserts that its mark is well known and that the omission of a single character from such mark constitutes “type squatting” [sic] and renders the disputed domain name confusingly similar to such mark.
The Complainant contends that it has not authorized the Respondent to register or use its PINTEREST mark or any confusingly similar variant thereof, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use of the disputed domain name. The Complainant asserts that as the disputed domain name cycles through unconnected websites or popups and directs users to malware this cannot be described as a bona fide offering of goods or services. The Complainant submits that the purpose of the disputed domain name is to capture users who mistakenly enter it when attempting to visit the Complainant’s website for the Respondent’s commercial gain and that accordingly the Respondent cannot claim rights or legitimate interests therein.
The Complainant submits that the Respondent acquired the disputed domain name from the original registrant in bad faith in order to use the disputed domain name in bad faith by creating confusion with the Complainant’s PINTEREST mark. The Complainant contends that the Octogen trio of cases (City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong,ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786) are applicable in the scenario where the Respondent is not the original registrant of the disputed domain name but subsequently acquired this in bad faith and demonstrably uses it in bad faith. The Complainant also asserts that the date of registration for the purposes of the Complaint should be the date of acquisition of the disputed domain name by the Respondent and not the original creation date.
The Complainant asserts that the date of acquisition of the disputed domain name by the Respondent is August 2015 and that the Respondent would have been aware of the Complainant’s rights by that date. The Complainant also argues that the Respondent must have been fully aware of such rights by virtue of its use of its PINTEREST mark on the surveys to which the disputed domain name points. The Complainant also describes and illustrates the use of the disputed domain name to point to sale items on a popular auction website together with popup advertisements stating that users have downloaded malware. The Complainant asserts that the use of the disputed domain name in this manner constitutes use in bad faith within the meaning of the Policy.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A preliminary issue is raised in this case by the fact that the Complaint relied upon the “substantial global reputation” of the PINTEREST trademark but did not appear to specify who the Complainant is, what it does or how it has generated substantial global reputation. The Panel has some knowledge of the Complainant and its activities, based on the Panel’s personal experience as an Internet user, despite having no prior relationship with the Complainant whatsoever. The Panel’s understanding of the Complainant’s activities aligns with that which is summarized by the panel in Pinterest, Inc. v. Pin Digital SL, WIPO Case No. D2014-1067.
Is the Panel entitled to rely on such knowledge when reaching a decision? The Panel considers that it may do so, provided that it deems this necessary in order to reach the right decision. That said, paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) notes that if a panel intends to rely on any source outside the pleadings it will normally consider issuing a procedural order to the parties to give them an opportunity to comment. Accordingly, the Panel considered issuing such an order in the present case.
The Panel determined that it did not require to receive further comments from the Complainant on this topic; however, it considered that it was important to put those matters within the Panel’s own knowledge to the Respondent for comment in order to ensure that it was given a fair opportunity to present its case (see paragraph 10(b) of the Rules). On December 7, 2015 the Panel therefore issued Procedural Order No. 1 to the Parties indicating the extent of the Panel’s personal knowledge as outlined above and inviting the Respondent to make any comment in this regard by December 14, 2015. The Respondent did not respond to such Procedural Order.
No comments having been received from the Respondent, the Panel will proceed to its Decision and where necessary will rely on the matters within its knowledge which were put to the Respondent in Procedural Order No. 1 and will specifically identify these within the Decision.
The Complainant has produced a series of screenshots from the website “www.tmview.org” as evidence of its various registered trademarks. This website provides data directly from the official trademark offices of its various members and the Panel thus has no reason to doubt the authenticity of the information provided. However, the Complainant’s screenshots are in tabular format and do not show a detailed view of any of the marks listed. In order to obtain such a view, the Panel verified the details of the Complainant’s mark described in the factual background section above by visiting the official website of the United States Patent and Trademark Office (“USPTO”) and inputting the registration number disclosed on the Complainant’s screenshot (see paragraph 4.5 of the WIPO Overview 2.0 regarding a panel’s discretionary referencing of trademark online databases).
While the Panel is content that the information provided by the Complainant, as supplemented by its visit to the USPTO website, is sufficient to allow it to make a finding that the Complainant has rights in the PINTEREST trademark, the Panel notes that complainants and their representatives would do well to consider providing the greater detail that lies behind the initial tabular view produced by a search on “www.tmview.org”, at least in respect of any one mark which is being relied upon for the purposes of paragraph 4(a)(i) of the Policy.
Having found that the Complainant has rights in the PINTEREST trademark, the Panel observes that the disputed domain name is identical to such mark, subject to the omission of the initial letter “t” in the disputed domain name. The Panel accepts the Complainant’s submission that the omission of a single letter in the disputed domain name is insufficient to distinguish it from the Complainant’s mark and accordingly finds that the disputed domain name is confusingly similar thereto. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
As paragraph 2.1 of the WIPO Overview 2.0 notes, a consensus view among panelists in cases under the Policy has emerged that a complainant is required to make out a prima facie case that the respondent has no rights or legitimate interests in a domain name and that once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests.
In the present proceeding, the Panel is satisfied that the Complainant has made out the requisite prima facie case by way of its submissions that the Respondent was not authorized by the Complainant to use the Complainant’s PINTEREST mark or a confusingly similar variant, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use thereof. Furthermore, the Complainant’s evidence regarding the use to which the disputed domain name has been put, which appears to target the Complainant’s PINTEREST trademark by way of a survey addressed to the “Pinterest Visitor” is also supportive of the notion that the Respondent lacks rights or legitimate interests in the disputed domain name, which is itself a close typographical variant of such mark.
In these circumstances the burden of production shifts to the Respondent to bring forward evidence or allegations demonstrating rights or legitimate interests in the disputed domain name. The Respondent, however, has chosen not to file a Response in these proceedings or otherwise to communicate anything which might point towards it having such rights or legitimate interests. The Panel does note that the disputed domain name might also be read as the two words “pine” and “rest”, which might well have been the intent of the original registrant of the disputed domain name but the Panel accepts the Complainant’s contention that the Respondent is not the original registrant and is a more recent acquirer. In contrast to the original registrant, the Respondent has used the disputed domain name not in connection with any meaning of the words “pine” and “rest” but rather to address the viewer of the associated website as “Pinterest Visitor”, that is, the typographical variant representing the Complainant’s trademark, and thereafter to deliver to such viewer a variety of unrelated websites or malware. In the Panel’s opinion, no rights or legitimate interests can vest in the Respondent by virtue of such activity.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Typically, a complainant would not prevail on this aspect of the Policy if its trademark rights post-date the creation date of the disputed domain name because the registrant could not have contemplated the complainant’s then non-existent right and thus could not have registered the domain name in bad faith (see the discussion at paragraph 3.1 of the WIPO Overview 2.0). In the present case, the Complainant anticipates that difficulty by referencing the Octogen line of decisions, supra,in order to assert that the Policy does not require a complainant to show the conjunctive requirement of both bad faith registration and bad faith use. This Panel subscribes to the traditional and generally accepted view of the conjunctive requirement within this element of the Policy and, rather than rehearsing at length the arguments for and against the alternative interpretation provided by the Octogen trio, simply notes for the sake of brevity that it endorses the detailed analysis on this topic provided by the panel in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716.
Despite this, there are exceptions to the general rule regarding a post-dating trademark, including the circumstance where a domain name has been transferred between unrelated registrants after its creation date, as is alleged here. In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date. In the present matter, the Complainant asserts that the Respondent acquired the disputed domain name in August 2015, thus post-dating the registration of the Complainant’s trademark by almost three years. The Complainant bases its assertion on the fact that this is the “last updated” date shown on the corresponding WhoIs record.
The Panel is aware that while a change in the “last updated” date on a WhoIs record might indicate a registrant transfer of a domain name, such changes can also be triggered by a renewal or indeed by the making of a variety of different types of amendments to the WhoIs data. Accordingly, the Complainant’s case would have been better served by producing entries from historic WhoIs records which might have shown a change of registrants on successive records and thus have placed the matter beyond doubt. In the absence of such records, the Panel has come to the conclusion that it may nevertheless accept the Complainant’s assertion on the following basis: First, the Panel considers that it is not wholly improbable that the “last updated” date on a WhoIs record represents the date of transfer to the present holder and, as such, it is not unreasonable to accept that allegation in the absence of countervailing evidence, the majority of which would necessarily be in the hands of the Respondent in its capacity as holder of the disputed domain name. In other words, once such an allegation has been made and the matter is clearly placed in issue by a complainant, the respondent is the party best able to bring forward evidence, which may come from a wide variety of sources, supporting a contrary proposition that it has been the holder of the domain name concerned for a longer period (as this Panel encountered in Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks, WIPO Case No. D2014-0313).
Secondly, while the present Complaint lacks the detailed evidence which historic WhoIs records would have provided, the Complainant’s averments regarding the identity of the original registrant of the disputed domain name and its past use are also supportive, albeit to a limited degree, of the notion that a transfer has taken place. Taking these two aspects together, the Panel finds on the balance of probabilities, and in particular on the basis of the present record, that the Respondent received a transfer of the disputed domain name after the Complainant’s rights in its trademark came into being, notwithstanding the original date of creation of the disputed domain name. While the disputed domain name may have been created by its original registrant for purposes unrelated to the Complainant or its trademark, the Panel is satisfied on the balance of probabilities that the transferee and present Respondent knew of the Complainant’s online fame when taking a transfer of the disputed domain name and took such transfer with intent to target the Complainant’s trademark.
Turning to the present use of the disputed domain name, there is little doubt in the Panel’s mind that this constitutes use in bad faith within the meaning of the Policy. In the Panel’s opinion, the disputed domain name is being used to capture Internet traffic generated by users of the Complainant’s services, in order to deploy malware and gain customer data through confusion generated by the typographical variant of the Complainant’s trademark contained within the disputed domain name. That the Respondent deliberately intended to target the Complainant by taking advantage of such typographical variant is demonstrated by its use of the correct spelling of the Complainant’s trademark in the legend “Congratulations Pinterest Visitor!” displayed on the associated website. Accordingly, there can be no suggestion that the Respondent acquired the disputed domain name with a good faith motivation associated with the dictionary words “pine” and “rest” which are contained therein. Furthermore, the Respondent has chosen not to answer the Complainant’s allegations or provide evidence of any alleged good faith motivation in taking a transfer of or using the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met.
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 <pinerest.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: December 21, 2015