URS FINAL DETERMINATION

Pinterest Inc. v. WhoisGuard, Inc. et al.
Claim Number: FA1706001736785

DOMAIN NAME

<pinterest.press>

PARTIES

	Complainant: Pinterest Inc. of San Francisco, CA, United States of America
	Complainant Representative: Baker McKenzie of London, United Kingdom

	Respondent: Michael W Tilson of Acworth, GA, United States of America

REGISTRIES and REGISTRARS

	Registries: DotPress Inc.
	Registrars: Namecheap

EXAMINER

	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.
	Natalia Stetsenko, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: June 21, 2017
	Commencement: June 22, 2017
	Response Date: June 22, 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").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: The Complainant is the holder of, inter alia, US and Community trade mark registrations for the PINTEREST mark, registered in Classes, 9, 35, 38, 41, 42, and 45. The ownership, status and use have been confirmed by the Trademark Schedule attached to the complaint.

URS Procedure 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.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

The disputed domain name incorporates the PINTEREST trademark in its entirety, adding only the suffix <.press>, which, being a top-level domain, is not relevant for the assessment whether the disputed domain name is identical and/or confusingly similar to the registered trademark in question. It is therefore found that the disputed domain name is identical to the Complainant’s “PINTEREST” trademark.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Complainant has not authorized Registrant to use its trademark “PINTEREST” or to register a domain name incorporating this mark. Registrant is not commonly known by the name, and the domain name is not being put to a legitimate use. Given this and the fact that Respondent admits the lack of any interest in the domain name in his response, it is found that Respondent lacks rights and legitimate interests in the disputed domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  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.

Determined: Finding for Complainant

Despite Respondent’s denial of acting in bad faith, the evidence on the case record show that the domain resolved to a page containing links to Complainant’s and other unrelated websites, which can not but create an impression that those may be associated with the famous Pinterest business. The webpage to which the domain resolved did not contain any identification of Respondent allowing Internet users to differentiate between the two entities, thus causing confusion and diverting Internet traffic to Respondent’s webpage. These circumstances clearly support finding of bad faith in the use of the disputed domain name by Respondent. Also, previous Panels have found bad faith in circumstances where it is unlikely that the registrant would have selected the domain name without knowing about the reputation associated with the famous trademark corresponding to the domain name in question. In view of the fame of the mark “PINTEREST” and association that the TLD .press creates, consumers’ first associations will be with the trademark holder. Therefore, one could resolve that Respondent registered its domain name having Complainant’s trademark in mind in an effort to trade off the goodwill and renown of Complainant's mark.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

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 name(s) be SUSPENDED for the duration of the registration:

pinterest.press

Natalia Stetsenko
Examiner
Dated: June 28, 2017

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