On July 16, 2013, the WIPO Arbitration and Mediation Center issued a panel opinion on an objection brought by Pinterest, Inc. (“Pinterest”), the San Francisco-based creator of the social media platform Pinterest, under the New gTLD Dispute Resolution Procedure.

Our readers are probably familiar with the common top-level domains, such as .com and .gov.  In 2012, companies could apply for a new top-level domain that was not so restricted, and could be almost anything.

These new “generic” top-level domains, or gTLDs, can be names, words in the dictionary, the applicant’s own trademarks, etc.

The owner of a new gTLD can issue domain names either within its own organization or to third parties. In this matter, Pinterest objected to registration of the gTLD by Amazon EU S.à.r.l (“Amazon”), asserting that it had trademark registrations for the mark PINTEREST, pending applications to register the mark PIN in several countries around the world, and common law rights to the marks PIN IT, PINTEREST, and a stylized “P.”

Use of in a domain name by Amazon, Pinterest alleged, would:

  1. create a likelihood of confusion with PIN and other “PIN family marks”;
  2. take unfair advantage of the character and reputation of these marks; and
  3. unjustifiably impair the distinctive character and reputation of these marks.

Amazon, which had applied for numerous other gTLDs for common dictionary words, defended its application for the gTLD, asserting that it had legitimate, non-infringing business objectives to use to operate a single-entity domain name registry.

Amazon moreover asserted that Pinterest’s trademark applications for PIN did not bestow rights to exclusive use of the descriptive term “pin,” and that there was no likelihood of confusion between the gTLD and Pinterest’s PIN IT, PINTEREST, or P marks. As an initial matter, the Panel held that Pinterest’s applications for registration of the mark PIN did not confer upon it actionable rights:

[I]n the absence of evidence of registered trademark rights, it is necessary for Pinterest to establish that, through use, PIN, P and PIN IT have come to identify Pinterest and its goods or services, such as to entitle Pinterest to exercise the right at common law to prevent passing off. … [PIN] has not been shown to have been used otherwise than in its common ordinary English meaning…[t]he fact that the connection is made online, i.e. virtually rather than physically, does not alter this conclusion. Because Pinterest and others use this dictionary term for its dictionary meaning and not as a trademark, the Panel is not satisfied that PIN functions as a mark to identify Pinterest or its goods or services.

Turning next to Pinterest’s claims, the Panel examined, among several other factors:

  1. the similarities between the gTLD and Pinterest’s PIN IT, P, and PINTEREST marks;
  2. the bona fide nature of Pinterest’s rights in these marks;
  3. the fact that PIN was not generally recognized by the public as an indicator of Pinterest’s business;
  4. Amazon’s legitimate interest in applying for the gTLD; and
  5. the lack of likelihood of confusion between the gTLD and Pinterest’s marks.

Accordingly, the Panel dismissed Pinterest’s objection and rule din Amazon’s favor. Given the recent nature of ICANN’s new gTLDs and the rules governing them, companies seeking to apply for registration of, or object to an application for, a new gTLD should make sure they have legitimate, enforceable trademark rights to the domain in question before taking action.

Justin Haddock (justin.haddock@nortonrosefulbright.com / +1 416 216 2317) a trademark lawyer in Norton Rose Fulbright Austin’s intellectual property practice.