Pinterest Inc. v. Confidential Contact et al.
Claim Number: FA1706001736709
Complainant: Pinterest Inc. of San Francisco, California, United States of America.
Complainant Representative: Baker McKenzie of London, United Kingdom.
Respondent: Alex Le of Byron Center, Michigan, United States of America.
Complainant Representative: John Berryhill of Ridley Park, Pennsylvania, United States of America.
Confidential Contact of Dallas, Texas, US.
Complainant Representative: John Berryhill of Ridley Park, Pennsylvania, USA.
Private Contact / Private Company of Private City, California, United States of America.
REGISTRIES and REGISTRARS
Registries: Vox Populi Registry Inc.
Registrars: Rebel Ltd
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Eleni Lappa, as Examiner.
Complainant submitted: June 21, 2017
Commencement: June 22, 2017
Response Date: July 6, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant submitted evidence of dozens of trademark registrations worldwide for its trademark PINTEREST which also comprises Complainant’s company name.
Respondent submitted no evidence of legitimate rights or interests for the name PINTEREST.
URS 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use
2. Registrant has no legitimate right or interest to the domain name [URS/.usRS 1.2.6.2]
3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3]
With regard to URS 1.2.6.1:
With regard to URS 1.2.6.2:
Respondent has submitted no evidence of legitimate rights or interests related to the domain name under review. Such legitimate interests or rights would be, trademark applications or registrations, rights acquired through evidence of prior significant use in the market, company names, other domain names, etc. Respondent suggested, via its Response, that the affirmative defenses quoted below, qualify as legitimate interests, and in particular, Respondent quoted:
- URS 5.7.3 Registrant is making a legitimate 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.
- URS 5.8.2 The domain name sites are operated solely in tribute to or in criticism of a person or business that is found by the Examiner to be fair use.
The above affirmative defenses may only be used in order to refute a claim of bad faith and have no bearing towards the requirement of any legitimate rights or interests held by Respondent as explained above, i.e. trademark applications or registrations, rights acquired through evidence of prior significant use in the market, company names, other domain names, etc.
Therefore the requirement of URS 1.2.6.2 is fulfilled.
With regard to URS 1.2.6.3
Complainant and Respondent both made references to the element of “commercial gain” in an effort to substantiate and rebut respectively the element of bad faith. The parties are reminded that the element of “bad faith” is in fact the prerequisite, not the element of “commercial gain”. In order to substantiate the element of bad faith, the Rules state the following, non-exclusive list of circumstances in an effort to assist the determination of the Examiner in relation to bad faith, that may nonetheless determine it exists on the basis of other grounds:
1.2.6.3. that the domain was registered and is being used in bad faith.
A non-exclusive list of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant 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
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Please feel free to share your Pinterest.com experience to help product development improve services.
The above notice may reasonably lead the visitor of the website of <pinterest.sucks>, to conclude after reading it, that the party operating the particular website may be, among else:
the Complainant (that operates Pinterest.com for which the feedback is requested) or
a party that is affiliated with the Complainant (that operates Pinterest.com for which the feedback is requested) or
a party acting with the endorsement or consent of the Complainant (that operates Pinterest.com for which the feedback is requested).
It is not made clear by any other notice on the website of <pinterest.sucks> that the party operating the website of <pinterest.sucks> has no affiliation or relation with the Complainant therefore there is a likelihood of confusion in the circumstances as to the identity and role of the party operating it.
As to the issue of “commercial gain” the Respondent has submitted several arguments in an effort to repudiate any such allegation, by submitting, among else, that:
“The Complainant's claims of "commercial gain" are clearly false. The Complainant's claim that the Respondent's intent is to divert consumers with a site denominated "Pinterest Sucks" is, at best, "genuine contestable issue" under the decisional standard of URS 8.5. The Respondent submits that the expression the Complainant would "hopefully" respond to criticism and the top title of the site as "Pinterest Sucks" would further resolve that issue in the Respondent's favor under the standard applied to UDRP, and more so in the context of the heightened burden of the Complainant under the URS.”
Nevertheless the above cannot eliminate the element of bad faith in use of the domain name under review, which primarily derives from the vague manner in which the website notice indirectly refers to the Complainant by quoting one of its main websites, and the confusion caused to the public as to the identity or role of the party operating the website <pinterest.sucks>
Moreover the Respondent submitted that the word “hopefully” in the notice posted on the website of <pinterest.sucks> clearly indicates that there is no connection with the Complainant as to the identity of the party operating said website. This Examiner finds that the particular word has no clear ability to differentiate the operator of the website of <pinterest.sucks> from the Complainant or a party affiliated with it and is not sufficient to alter the overall impression created to the public as to the identity or role of the party operating the website <pinterest.sucks>. Therefore the requirement of URS 1.2.6.3 is fulfilled.
Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. These allegations are dismissed as unsubstantiated and untrue.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Eleni Lappa, Examiner
Dated: July 11, 2017
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