WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pixabay GmbH v. Domain Admin, Whois Privacy Corp.
Case No. D2021-2147
1. The Parties
The Complainant is Pixabay GmbH, Germany, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <pixabqy.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, the Registrar transmitted by email to the Center its verification response 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 9, 2021. 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 an online platform through which its customers create and share copyright free images, videos and music, under the mark PIXABAY.
The Complainant owns numerous PIXABAY trademark registrations in different countries and regions, such as the Australian trademark No. 2004679, registered on April 22, 2019; the Indian trademark No. 4212079, registered on August 12, 2019; the Mexican trademark No. 2033884, registered on August 28, 2019; and the European Union trademark No. 018041811, registered on September 20, 2019.
The Respondent registered the disputed domain name <pixabqy.com> on April 16, 2021.
The disputed domain name resolves to a single page website hosting a pay-per-click (“PPC”) advertising scheme.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The consensus view among panels, in relation to the first element, is that where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold of having trademark rights for the purposes of standing to file a UDRP case. The disputed domain name differs from the Complainant’s PIXABAY registered mark by the substitution of just one letter. As stated under WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.9, “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” Finally, the generic top-level domain “.com” shall be disregarded in the disputed domain name, as this is a standard registration requirement.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered any PIXABAY or PIXABQY trademarks. The Complainant also cannot find any evidence to suggest the Respondent holds unregistered rights in either of these terms. Moreover, the Respondent has not been licensed by the Complainant to use domain name that feature the PIXABAY trademark. None of the Policy’s paragraph 4(c) scenarios apply in the present case. The Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name currently resolves to a parked page comprising pay-per-click (“PPC”) advertising links. WIPO Overview 3.0, section 2.9 confirms that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The Respondent’s use of the disputed domain name, to attract and mislead Internet users, does not constitute bona fide use within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain name’s homepage contains a link reading “Buy this domain [/] The domain pixabqy.com may be for sale by its owner!”. Clicking on this link directs users to a page under the domain marketplace platform Sedo, which requests interested buyers to submit a minimum offer of 899 USD for the disputed domain name’s purchase. Panels have found that the use of a domain name (incorporating a complainant’s trademark) for the purposes of advertising its sale on a reseller platform does not constitute a bona fide offering of goods or services. The Respondent is using a typosquatting variation of the Complainant’s distinctive PIXABAY mark to attract and then divert Internet-user traffic with a view to deriving commercial gain via PPC link redirections. The Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The burden of production now shifts to the Respondent to show that it has a right or legitimate interest in the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Complainant has accrued substantial goodwill and international recognition in the PIXABAY mark for its provision of copyright free images, videos and music. It has operated under this mark since 2010, and its trademark registrations cover many jurisdictions around the world. The Complainant’s acquisition by the online graphic design platform Canva Pty Ltd in 2019 has also greatly increased the degree of its international recognition. All top Google search results for the PIXABAY term pertain to the Complainant’s offerings. The disputed domain name comprises a clear typosquatting variation of the Complainant’s PIXABAY mark, a clear evidence of bad faith. The Complainant sent a cease-and-desist letter to the Respondent on May 4, 2021, and a follow-up notice on May 12, 2021. The Respondent did not reply to either communication, which may constitute further evidence that it knowingly acted in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s PIXABAY mark. As stated in WIPO Overview 3.0, section 3.1.4, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. The Respondent’s advertisement of the disputed domain name’s sale on Sedo provides evidence of its attempt to derive consideration in excess of the disputed domain name’s registration and/or maintenance costs. Given the distinctiveness of the PIXABAY mark, the Respondent can only plausibly be targeting the Complainant (or bad faith actors) by offering the disputed domain name for a minimum sale price of 899 USD.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. Identical or Confusingly Similar
The Panel has no doubt that PIXABAY is a trademark directly connected with the Complainant’s notorious online platform.
Annex 7 to the Complaint shows numerous trademark registrations for PIXABAY, obtained since at least 2019.
The core of the disputed domain name differs from the Complainant’s trademark PIXABAY by the mere substitution of the second letter “a” on the word “pixabay” by the letter “q”, forming “pixabqy”. These letters are located closed to each other on QWERTY keyboards.
Such misspelling of the Complainant’s trademark is a practice commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking a complainant’s website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).
It is also already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Respondent has not indicated any reason to justify why he has chosen the specific term “PIXABQY” to compose the disputed domain name.
There is also no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fideoffering of goods or services. Indeed, the disputed domain name operates a pay-per-click (“PPC”) commercial scheme and the disputed domain name is being offered for sale for a value that far exceeds the registration and maintenance costs.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2021), the trademark PIXABAY was already directly connected to the Complainant’s online platform, founded in 2010.
Besides the gTLD “.com”, the disputed domain name differs from the Complainant’s mark by the mere substitution of one letter. The trademarkPIXABAY” – or its variation “PIXABQY” – has no dictionary meaning.
The Respondent had at least two opportunities to justify the adoption of this peculiar expression (during the present proceeding and when he was served with a cease-and-desist letter by the Complainant). He preferred to remain silent, in a non-collaborative posture.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name, could not have been aware of the Complainant’s trademark, and that the adoption of term “PIXABQY” could be a mere coincidence.
Also, the disputed domain name is currently linked to a website presenting a pay per click advertising scheme.
In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from offering its services to prospective clients who are clearly looking for the Complainant.
Former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007‑1415.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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 <pixabqy.com> be transferred to the Complainant.
Date: August 26, 2021