WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pinterest, Inc. v. Pin Digital SL
Case No. D2014-1067
1. The Parties
The Complainant is Pinterest, Inc. of San Francisco, California, United States of America, represented by Baker & McKenzie, United Kingdom.
The Respondent is Pin Digital SL of Barcelona, Spain, represented by Bellavista, Spain.
2. The Domain Names and Registrars
The disputed domain name <pingay.com> is registered with GoDaddy.com, LLC.
The disputed domain name <pinsex.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2014. On June 20, 2014, the Center transmitted by email to GoDaddy.com, LLC and eNom requests for registrar verification in connection with the disputed domain names. On June 20, 2014, both registrars transmitted by email to the Center verification responses 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2014. The Response was filed with the Center on July 28, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 6, 2014. 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.
4. Factual Background
The Complainant is the owner of a trademark registration for the mark PIN in the United States as of June 17, 2014 with registration number 4,553,185 for goods and services in classes 9 and 42 for, inter alia, software that allows users to interact online with information and media content that other users share, and providing an internet platform and a website with non downloadable software.
The Complainant is also the owner of a trademark registration for the mark PINTEREST in the United States as of May 22, 2012 with registration number 4,145,087 for goods and services in classes 42 and 45 for providing a website featuring technology that enables Internet users to create, bookmark, annotate and publicly share data, and Internet based social network services.
The disputed domain name <pinsex.com> was registered on June 5, 2008.
The disputed domain name <pingay.com> was registered on May 1, 2011.
The disputed domain names resolve to websites, which became active in June 2012 and May 2013, respectively.
5. Parties' Contentions
In addition to the PIN mark, the Complainant claims to own different trademark registrations for the mark PIN with priority date February 10, 2012 in Argentina (registration number 2609569 for undisclosed goods in class 9), Japan (registration number 5581416 for undisclosed good and services in classes 9, 35, 38, 42 and 45), Mexico (registration number 1334408 for undisclosed services in class 42), New Zealand (registration number 983421 for undisclosed services in class 35), Norway (number 98421 for undisclosed good and services in classes 9, 35, 38, 42 and 45), Saudi Arabia (registration number 145982 for undisclosed services in class 42) and Switzerland (registration number 638346 for undisclosed good and services in classes 9, 35, 38, 42 and 45), as well as PIN trademarks based on extensive common law use. The Complainant claims to also own the other PIN family marks, including PINTEREST and PIN IT, based on extensive common law use and various worldwide trademark registrations and applications, and it operates under the name "Pinterest".
The Complainant states to be well known as a provider of online services through its website and applications designed for Android and Apple mobile devices, all under the PINTEREST trademark, which it started in March 2010. The Complainant provides an online tool to help users gather images and other content and organize them into themed collections for other users to browse and discover. Each piece of content posted on Pinterest is known as a "pin", and users are knows as "pinners", who "pin" their collections on the "pinboard". They post content on Pinterest from their own collection or other websites by "pinning" it to a themed collection called a "pinboard".
The Complainant was declared "best new startup of 2011" by TechCrunch, and grew rapidly between July 2011 and July 2012. It received favorable coverage in hundreds, if not thousands, of publications worldwide, and Pinterest was declared the third most popular social networking site on the Internet in the United States in 2012. The "Pin it" button appears on hundreds of thousands of unique domains on the Internet.
The Complainant claims that the disputed domain names are identical or highly similar to the PIN name and mark, as the distinctive PIN name and mark is completely contained within the disputed domain names. The additional words "sex" and "gay", respectively, are not descriptive, but simply describe the contents of the websites hosted under the disputed domain names.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Complainant has not authorized the Respondent to register or use the disputed domain names. The disputed domain name <pinsex.com> was acquired by the Respondent around July 5, 2012, and resolved to a parking page which offered the disputed domain name for sale until at least September 19, 2012. The disputed domain name <pingay.com> was acquired by the Respondent in late 2012 or early 2013, and resolved to a parking page until between March and May 2013. Around May 2013, the website started hosting pornographic content. This demonstrated that the Respondent has not been commonly known by the disputed domain names prior to the Complainant's business becoming well known. The websites under the disputed domain names further mimic the Complainant's business concept. The Respondent's adoption of the "pin" name to offer goods and services which are not authorized by the Complainant is infringing use of the Complainant's trademark for commercial gain, and the linking of pornographic images to an otherwise wholesome mark is liable to tarnish the Complainant's trademark without justification. The use of the disputed domain names is therefore not fair use.
The Complainant also claims that at the time the disputed domain names were acquired by the Respondent and the Respondent commenced use of the websites under the disputed domain names the Complainant's rights were extremely well known. The Respondent's use of the disputed domain names confuses or is likely to confuse people and/or businesses into believing that the disputed domain names are registered to, operated or authorized by, or otherwise connected to the Complainant. This is particularly caused by the Respondent's concepts of the websites under the disputed domain names mimicking the Complainant's business model, while the disputed domain name <pinsex.com> uses the PIN mark in a similar font to that of the Complainant's trademarks and both websites under the disputed domain names adopt a similar look and feel to that used by the Complainant on its own website. These elements demonstrate the Respondent's intentional attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's websites.
Given the graphic sexual content of the Respondent's websites, the risk of Internet users thinking there is a connection between the Respondent's websites and the Complainant is potentially very damaging to the Complainant's business. The Complainant claims that there is an inevitable conclusion that, on the balance of probabilities, confusion has occurred. In addition, the likelihood of confusion combined with the potential for disrupt or detriment is capable of amounting to the disputed domain names having been registered and being used in bad faith.
The Complainant requests the disputed domain names be transferred to the Complainant.
The Respondent argues that the word "pin", which is included in both disputed domain names, 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. 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. When the Complaint was filed, the websites under the disputed domain names had been in operation since July 2012 ("www.pinsex.com") and May 2013 ("www.pingay.com") and the Respondent is becoming popular and known within its own sector, which is the sexual and erotic adult contents industry. The website "www.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 "www.pinsex.com" has received over 99,000 daily visits reaching its highest peak in February 2014 with 550,000 visits in one day. The website "www.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 "www.pingay.com" has received over 12,600 daily visits, reaching its highest peak also on February 2014 with 506,045 visits in one day.
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 <pinsex.com> is BeRepublic Networks S.L. ("BeRepublic"). The Respondent claims that this company is directly related to the Respondent, and a part of Respondent's company. BeRepublic handled the entire project's preparation and launching of the website "www.pinsex.com", for which reason it was the initial holder of the disputed domain names.
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.
In addition to its defense arguments, the Respondent request the Panel to make a finding regarding reverse domain name hijacking and abuse of process based on paragraph 15(e) of the Rules on the basis that the Complainant has initiated a campaign against any company or website that uses the generic term "pin", claiming universal right over a dictionary word that cannot be monopolized by a sole company. In this respect the Complainant filed opposition against the Respondent's Community trademark applications as mentioned above. The Complainant knew at the time the Complaint was filed, that the Respondent is the legitimate owner of the disputed domain names and that its use cannot, under any fair interpretation of the reasonably available facts, constitute bad faith, as well as that the Respondent uses the contested domain name as part of a bona fide business.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is well established that generic Top-Level Domains such as ".com" may be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This means "pinsex" and "pingay" need to be compared to the Respondent's trademark.
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 <pinsex.com> and was registered on June 17, 2014. 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 date of application or registration of the Complainant's trademark can be relevant for the assessment of the other elements of paragraph 4(a) of the Policy (cf. paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0")). 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. As put eloquently in Dynamis Limited v. Alice Stephen Uppal, WIPO Case No. D2013-2118, "[I]t is well established that common law rights in a trademark can provide a sufficient basis for a complaint under the Policy, subject always to proof of those rights through cogent and convincing evidence. Where unregistered rights are put forward as the sole basis for a claim, and the words comprising the unregistered mark in question are descriptive in nature, then the evidentiary requirement is significantly raised. In those circumstances, proof that a descriptive common law mark has acquired distinctiveness (that is, a sufficient level of recognition so that the mark denotes a single source to consumers) is a necessary element in a complainant's case". Absent a showing of acquired distinctiveness, the mark PIN may be regarded as descriptive of the Complainant's services, which it describes in term of "pinning" images on a "pinboard" by "pinners". Therefore, 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 Respondent further rightfully argued that submitting a mere list of global trademark registrations for the mark PIN, without certificates or other evidence of the existence of such trademark registrations is also not sufficient to establish such rights. The Complainant should have realized that it has the burden of proof and submitted verifiable evidence of the trademarks it wishes to rely on. Therefore, the Panel shall only consider the Complainant's United States trademark for PIN, for which a copy of the certificate of registration was provided.
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 (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguras y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
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 Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has not denied that the Complainant has not authorized it to register or use the disputed domain names. 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 "www.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
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrates that the disputed domain names have been registered and are being 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 <pinsex.com> was registered almost two years before the Complainant started its business in March 2010. The disputed domain name <pingay.com> was registered on May 1, 2011, which is more than a year after the Complainant started its business. The disputed domain names were registered by BeRepublic, and it is undisputed that this company transferred the disputed domain name <pinsex.com> to the Respondent in June 2012 and transferred the disputed domain name <pingay.com> to the Respondent late 2012 or early 2013. 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 <pinsex.com>, which do most certainly not show that BeRepublic and the Respondent are affiliated companies. 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.
Therefore, also the third element of paragraph 4(a) of the Policy is met for the disputed domain names.
D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent's undeniable rights or legitimate interests in the relevant disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (e.g., San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., WIPO Case No. D2009-1545). As the Complainant succeeded in proving all three elements of paragraph 4(a) of the Policy with respect to the disputed domain names, there cannot be a case of reverse domain name hijacking.
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 names <pinsex.com> and <pingay.com> are transferred to the Complaint.
Date: August 28, 2014