ARBITRATIONANDMEDIATION CENTER

PANEL DETERMINATION LEGAL RIGHTS OBJECTION
Pinterest, Inc. v. Amazon EU S.à.r.l
Case No. LRO2013-0050

1. The Parties
The Objector/Complainant is Pinterest, Inc. of San Francisco, United States of America, represented by
Harvey Siskind LLP, United States.
The Applicant /Respondent is Amazon EU S.à.r.l of Luxembourg, Luxembourg, represented by Covington &Burling LLP, United States.

2. The applied-for gTLD string
The applied-for gTLD string is <.pin>.

3. Procedural History
The Legal Rights Objection (“LRO”) was filed with the WIPO Arbitration and Mediation Center (the “WIPO
Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the “Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center completed the review of the Objection on
March 25, 2013 and has determined that the Objection complies with the requirements of the Procedure andthe World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”).
On April 10, 2013, the Objector sent an email communication to the Center. The Center acknowledged
receipt of the Objector’s email communication on the same day.
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Applicant of the
Objection, and the proceedings commenced on April 18, 2013. On April 19, 2013, the Applicant and the
Objector each sent an email communication to the Center. The Center acknowledged receipt of such emailcommunications on April 19, 2013. On May 17, 2013, the Applicant sent a further email communication to
the Center, receipt of which was acknowledged on the same day. In accordance with Article 11(b) andrelevant communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 18, 2013.
The WIPO Center appointed Alan L. Limbury as the Panel in this matter on June 17, 2013. The Panel finds

page 2that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of
Impartiality and Independence, as required by the WIPO Center to ensure compliance with Article 13(c) of
the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

4. Factual Background
According to Bloomberg, the Applicant, with its related entities (“Amazon”), founded in 1994, is “the world’s
largest online retailer.” Objection, Annex SS. It has over 150 million active accounts and generated about
USD 62 billion in revenue last year. Its vision apparently is to be the earth’s most customer-centric company– a place where people can come to find and discover anything they might want to buy online.
In its new gTLD application submitted to ICANN for the proposed <.pin> gTLD, Amazon described themission and operation of the <.pin> registry. Response, Annex 2. The following is an abbreviated summary.
Amazon’s mission is to provide a unique and dedicated platform for Amazon while simultaneously protecting
the integrity of its brand and reputation. A <.pin> registry will provide Amazon with additional controls overits technical architecture, offering a stable and secure foundation for online communication and interaction;
provide Amazon a further platform for innovation; and enable Amazon to protect its several thousand
registered intellectual property assets of all types including trademarks, designs and domain names.
<.pin> will be a single-entity registry, in which Amazon and its subsidiaries will be the only eligible registrants,
through a single registrar, for use in pursuit of Amazon’s business goals. There will be no re-sellers in <.pin>
and there will be no market in <.pin> domains. Amazon will strictly control the use of <.pin> domains. All
domains in the <.pin> registry will remain the property of Amazon. The <.pin> registry will respect third-party
intellectual property rights.
Amazon’s Intellectual Property group will be responsible for the development, maintenance and enforcementof a Domain Management Policy, which will define the rules associated with eligibility and domain nameallocation; the license terms governing the use of a <.pin> domain name; and the dispute resolution policies
for the <.pin> gTLD.
Amazon has applied for numerous new gTLDs. They are predominantly common dictionary words.
The Objector (“Pinterest”) has produced documentation showing that it is the owner of the registeredtrademark PINTEREST, registered in the United States as a service mark on May 22, 2012, No. 4145087, inclasses 42 and 45, and that it is the applicant to register PIN as a trademark in the United States (serial
number 85698998).
Through its website at “www.pinterest.com”, Pinterest provides an online tool to help users gather images
and other content and organize it into themed collections for other users to browse and discover. In its own
words:“Each piece of content posted on Pinterest is known as a PIN. Users are known as ‘PINNERS.’ They
post content to Pinterest from their own collections or other websites by ‘PINNING’ it to a themedcollection called a ‘PINBOARD.’ As users browse the millions of PINBOARDS available on Pinterest,
they can PIN the content they find onto their own PINBOARDS, and follow the PINNERS andPINBOARDS they find most useful or inspiring. PINS link the sources from which they were PINNED.
Pinterest therefore provides a way for people to express themselves, discover new things, and engage
with the people who create them. It is an immersive, creative, and social experience, and becomes
more and more personal over time as PINNERS follow the boards and the PINNERS that appeal tothem... ‘When you open up Pinterest,’ says Co-Founder Ben Silbermann, ’you should feel like you’ve
walked into a building full of stuff that only you are interested in.”“[M]any retailers use [Pinterest] in their own marketing campaigns… Still more are encouraging

page 3
consumers to PIN branded products on their PINBOARDS... Last year, Rakuten – dubbed the‘Amazon of Japan’ (and a fierce Amazon competitor) – led a $100 million investment in Pinterest...”In his Declaration in support of the Objection, Mr. Anthony Falzone, Pinterest’s Deputy General Counsel,
says:“Pinterest provides a PIN IT button that website owners can incorporate into their websites. Website
owners place the PIN IT button next to images or other pieces of content they want to encourage
people to PIN. The PIN IT button appears on hundreds of thousands of unique domains on theInternet, and many domains place the PIN IT button next to hundreds of thousands of different
images. The PIN IT button is featured on some of the most widely viewed websites on the Internet,
from Amazon to eBay to Zappos. Accordingly, it is likely that more than a hundred million people haveseen the PIN IT button, likely billions of times.”
Pinterest launched in March 2010. It was recently declared the third most popular social website in theworld, after Facebook and Twitter, and was recently valued at USD 2.5 billion.
The following appears at its website at <pinterest.com>:
Pinning 101. Here are the basics of getting started on Pinterest.
Pin A pin starts with an image or video you add to Pinterest. You can add a pin from a website using
the Pin It bookmarklet or upload an image right from your computer. Any pin on Pinterest can be
repinned, and all pins link back to their source.
Board A board is where you organize your pins by topic. You could pin ideas for remodeling yourbathroom to your House Projects board, for example. Boards can be secret or public, and you caninvite other people to pin with you on any of your boards.
Pin It Bookmarklet The Pin It bookmarklet lets you easily pin things you see on websites and blogs. To
get the bookmarklet or learn more, check out our Goodies page.
Follow When you follow someone, their pins show up in your Pinterest home feed. You can follow allof someone's boards or just the ones you like best. To manage who you're following, go to your profileand click Following.
Home Feed Your home feed is a collection of pins from pinners and boards you follow. It's updated
every time someone you follow adds a pin.
The <pinterest.com> “Goodies” webpage contains the following:
The Pin It Button Pin things you find on the web
Pin It ← Drag this button to your toolbar. The Pin It button (a bookmarklet) lets you easily pin things
you find on websites and blogs. Drag the red button above to your toolbar—then click it when you see
an image or video you want to pin!
The “Pin It” button appears on the <pinterest.com> Goodies page as a small red rectangle with white writing.
The “Pin It” button also appears on some retailers’ sites as a white rectangle with red stylized writing,including the letter P. Objection Annexes MM and PP.

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5. Parties’ Contentions
A. Objector
Pinterest helps people discover the things they love. Amazon helps people buy them. Many people use
Pinterest as an online catalog. Amazon is an online store. They coexist in common streams of commerce,
but they cannot remain distinct with a common name. PIN is a core brand for Pinterest and the foundation of
its online identity. Amazon should not be allowed to co-opt PIN by adopting the exact same string as agTLD.
Pinterest asserts that it is the owner of the following registered trademarks:
P (stylised/logo), registered in Australia on September 10, 2012, No. 1473126, in classes 09, 35, 42
and 45 and in the European Union on August 23, 2012, No. 010634021, in classes 09, 35, 42 and 45.
PIN IT (figurative), registered in the European Union on August 23, 2012, No. 010634046, in classes
09, 35, 38, 42 and 45.
PINTEREST, registered in Australia on November 1, 2012, No. 1473124, in classes 09, 35 and 42; in
New Zealand on August 14, 2012, No. 953746, in class 45; in Norway on June 11, 2012, No. 265844,
in class 45; in the Philippines on June 14, 2012, No. 42012001767, in class 45; in Switzerland on
November 13, 2012, No. 636315, in class 45; and in the United States as a service mark on May 22,
2012, No. 4145087, in classes 42 and 45.
Pinterest has also made many presently pending applications to register these marks, as well as PIN, inmany countries, including the application to register PIN in the United States (serial number 85698998).
Pinterest claims ownership of the trademark PIN based on common-law use and its many worldwide
registration applications. It also claims trademark rights in several PIN-formative marks, including
PINTEREST, PIN IT and P, based on common law use, its registrations and its applications.
According to Fast Company, Pinterest solved one of the biggest problems Amazon and other online retailers
face: how to help consumers discover new things they want. Pinterest's solutions to that problem arealready driving greater and greater volumes of referral traffic and commerce. This makes Pinterest apotential partner to Amazon as a referral source, and a potential threat to Amazon as a referral source toother online retailers.
On a typical day, on average: 50,000 Pinterest users PIN or RE-PIN content from Amazon; over 3 million
Pinterest users see 16 million PINS from Amazon; and Pinterest users click through from Pinterest to
Amazon more than 50,000 times. People who click through from Pinterest to Amazon are all potential
purchasers. They see an item on Pinterest, click it, then head to Amazon, where they can buy it. Amazon
also maintains a branded PINBOARD at “www.pinterest.com” and prominently features the PIN IT button
next to a huge array of products on its website, “www.amazon.com”.
The potential use of <.pin> as a gTLD by Amazon:(i)creates an impermissible likelihood of confusion between the applied-for gTLD and the PIN and other
PIN family marks; and(ii)takes unfair advantage of the distinctive character and reputation of the PIN and other PIN familymarks; and(iii)

unjustifiably impairs the distinctive character and reputation of the PIN and other PIN family marks.

page 5
Pinterest and Amazon are both subject to the jurisdiction of the United States Court of Appeals for the Ninth
Circuit, which hears appeals from United States District Courts throughout the Western United States,
including those in the State of Washington, where Amazon has its principal place of business, and the Stateof California, where Pinterest has its principal place of business. According to that court, the following
factors govern “likelihood of confusion”: (1) the similarity of the marks; (2) the relatedness of the underlying
goods or services; (3) the marketing channels used; (4) the strength of the senior mark; (5) the degree ofconsumer care; (6) the likelihood of expansion of the goods or services; (7) evidence of actual confusion,and (8) the intent of the junior user. See Rearden LLC v. Rearden Commerce, 683 F.3d 1190, 1209-10 (9thCir. 2012) (citing AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)). These factors overlap
the non-exclusive factors published by ICANN for consideration in a LRO. See Applicant Guidebook,
Section 3.5.2; Procedure, Article 8(a)(iii)(bb).
In this case all these factors favor the Objector, so Amazon should not be allowed to register the <.pin>
gTLD.
B. Applicant
Amazon applied in good faith for the <.pin> gTLD, which it seeks for its legitimate, non-infringing businessobjectives. Pinterest objects to Amazon’s <.pin> gTLD application on the basis of alleged trademark rights inthe dictionary word “pin” and in other so-called “PIN-formative marks.” Through its LRO against Amazon’s<.pin> gTLD application, Pinterest effectively seeks to appropriate worldwide exclusive rights to use thedictionary word “pin” for one of its dictionary meanings.
Pinterest has failed to prove that it owns rights in a PIN trademark; that Amazon’s <.pin> gTLD creates animpermissible likelihood of confusion with any PIN mark Pinterest claims to own; that Amazon’s applied-for<.pin> gTLD “unjustifiably impairs the distinctive character and reputation of” the alleged PIN mark; and that
Amazon’s applied-for <.pin> gTLD “takes unfair advantage of the distinctive character and reputation of” thealleged PIN mark. The Panel should dismiss Pinterest’s LRO.
An important factor behind Amazon’s applications for new gTLDs is to find new and innovative ways,
mechanisms, and platforms to surprise and delight its customers. Amazon identified the mission of the<.pin> registry as “to provide a unique and dedicated platform for Amazon while simultaneously protecting
the integrity of its brand and reputation.” Amazon’s <.pin> registry will fulfill this mission by “provid[ing]Amazon with additional controls over its technical architecture, offering a stable and secure foundation for
online communication and interaction,” “provid[ing] Amazon a further platform for innovation,” and “enabl[ing]Amazon to protect its intellectual property rights.”
None of the trademark registrations or applications on which Pinterest relies cover “registry services,” which
are the services for which Amazon intends to use the <.pin> gTLD.
Of the 233 applications and registrations on which Pinterest relies, there are:• 3 P Stylized and P Logo registrations and applications, which are irrelevant as neither contains“pin” and Pinterest has not shown that the letter P and the word “pin” are legal equivalents.
• 63 pending PIN registration applications, only two of which (European Union and the RussianFederation) were filed before Amazon applied for the <.pin> gTLD and before June 13, 2012, thedate on which ICANN’s “Reveal Day” disclosed that Amazon had applied for the <.pin> gTLD. The
European Union application is being opposed by two different third parties.
• 0 PIN registrations anywhere (including the United States).
• 6 registrations and 159 pending registration applications for PINTEREST marks. 92 of the pending
registration applications were filed after June 13, 2012, the date on which ICANN’s “Reveal Day”
disclosed that Amazon had applied for the <.pin> gTLD.

page 6

• 2 PIN IT Logo registrations and applications, neither of which is in the United States. Even if thepending application matures to registration, its effective date is later than the <.pin> gTLD application
submission date and “Reveal Day.”• 0 registrations or applications for PINS, PINNING, PINBOARD, and PINNERS marks.
Although it is true that Pinterest owns the only pending U.S. application for a PIN mark in Classes 9, 38, or
42, Pinterest failed to disclose that its pending PIN registration application is the subject of a U.S. Patent andTrademark Office (“PTO”) Office Action and may not register. The PTO has referenced a third-party, earlierfiled PIN & Design registration application (now matured to registration) with which the PTO contends
Pinterest’s PIN mark may be likely to cause confusion. If (and only if) the PIN registration application
matures to registration can Pinterest claim that its rights in the PIN mark are exclusive – and then only to thegoods and services covered by that registration, 15 U.S.C. §1057(b), which does not cover “registry
services.”
Pinterest’s purported common law use of its alleged PIN mark contradicts and undermines its claim that
“PIN” is a “core brand.” Pinterest actually uses “pin,” “pins,” “pinning,” “pinboard,” and “pinners” descriptively,
even in its LRO.
Pinterest’s LRO lacks the usual facts used to prove secondary meaning such as advertising expenditures,
survey evidence and market research.
Pinterest’s United States trademark rights (if any) are the relevant rights for the LRO and Response because
Pinterest was founded in the United States; its principal place of business is in the United States; most of its
users are in the United States; its website is operated and controlled from the United States; California law
governs Pinterest’s Terms of Service; and Pinterest applies in its LRO the likelihood of confusion factors
used by the U.S. Court of Appeals for the Ninth Circuit.
If the PIN IT Logo mark has acquired secondary meaning, why has Pinterest not sought registration of it in
the United States, its primary market? Of the hundreds of registration applications Pinterest filed in nearly
100 countries over the past 18 months, why did it not file a United States PIN IT Logo registration
application? Given Pinterest’s numerous filings, resources are not an issue. The most logical explanation isthat Pinterest believes that the PTO would refuse registration of the PIN IT Logo because it is merely
descriptive and Pinterest cannot provide secondary meaning, or likely to cause confusion with an earlier
third-party registration. Regardless, without a United States Principal Register registration or proof of
secondary meaning, Pinterest has not proven that its PIN IT Logo mark is valid in the United States andcannot rely on it in the LRO.
Pinterest bases its ownership claims of the PIN mark on “worldwide applications to register.” None of those
applications has registered and 61 of them were filed after Amazon’s <.pin> gTLD application became publicknowledge. Only two PIN applications were filed before Pinterest could have known of Amazon’s <.pin>
gTLD application – one is the subject of two pending oppositions and the other is in the Russian Federation.
Accordingly, Pinterest’s “worldwide applications to register” the PIN mark afford it no meaningful trademark
rights – especially not in the United States, where trademark rights are based on use, not registration, andPinterest’s pending United States PIN application omits any claim of United States use.
“Pin” is descriptive because it “directly and immediately conveys some knowledge of the characteristics” ofPinterest’s services. “Pinterest is a pinboard for online photos,” to which “you pin things . . . .” Pinterest is avirtual version of a classic method of collecting and displaying objects, using pins to attach them to apinboard. The New York Times observes, “[u]nlike most start-up Web site names, ‘Pinterest’ actually makes
sense. You pin things based on your interests.” Pinterest merely replaces a physical pinboard and pin witha virtual pinboard and pin. That usage is descriptive, not distinctive.

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6. Discussion and Findings
To succeed in its Existing Legal Rights Objection to Amazon’s application, Pinterest must establish, on thebalance of probabilities, that the string comprising the potential new gTLD, namely <.pin>, infringes
Pinterest’s existing legal rights that are enforceable under generally accepted and internationally recognizedprinciples of law. Procedure, Article 2(e)(ii).
Under Module 3, Section 3.2.2.2 of the New gTLD Applicant Guidebook, to show that it has standing as arightsholder to file a legal rights objection, Pinterest must include in its filing the source and documentation of
the existing legal rights (which may include either registered or unregistered trademarks) which it claims are
infringed by the applied-for gTLD.
Pinterest relies on asserted trademark rights in PINTEREST, PIN, PIN IT and P.
Although it appears to be common ground between the Parties that the principles of law enunciated by theUnited States Court of Appeals for the Ninth Circuit apply in determining likely confusion between Amazon’s
proposed <.pin> gTLD and any trademark owned by Pinterest, the Panel does not accept Amazon’scontention that Pinterest’s United States trademark rights (if any) are “the relevant rights” for the LRO andResponse. This is because the Internet has global reach, so the use of gTLDs is not limited by geography.
Accordingly, in determining whether Pinterest has trademark rights for the purpose of considering its
objection, any such rights shown by Pinterest to exist, including outside the United States, must
appropriately be taken into account. In this respect the approach adopted by panelists under the Uniform
Domain Name Dispute Resolution Policy (the “UDRP”) is to be preferred.
Pinterest has provided (Objection, Annex G) a copy of the registration certificate of its United States
registered PINTEREST mark, No. 4,145,087, registered on May 22, 2012 for:“Providing a web site featuring technology that enables Internet users to create, bookmark, annotate,
and publicly share data, in Class 42”, claiming first use and first use in commerce on March 1, 2010,
and for:“Internet-based social networking services, in Class 45”, claiming first use and first use in commerceon March 10, 2010.
This certificate establishes Pinterest’s standing to make this objection so far as concerns the trademark
PINTEREST.
Pinterest has provided no documentation demonstrating its claimed registered trademark rights in P or PIN
IT. It claims common law trademark rights in those marks, as it does also in PIN, which is not registeredanywhere but is the subject of pending registration applications, including United States application No.
85698998 dated August 8, 2012. Objection, Annex E.
Both in the interests of consistency with the UDRP, which has led panelists to consider whether trademark
applications constitute rights, and to avoid panels having to anticipate the outcome of contested registration
applications, the Panel considers that in LRO proceedings, the approach to pending trademark registration
applications should be that they do not, in and of themselves, i.e. in the absence of evidence of actual as
distinct from constructive use, constitute trademark rights. Fxopen Investments Inc. v. Tong Tingyun, WIPO
Case No. D2009-1527, La Française des Jeux v. Tavenost Voyeurism Inc, WIPO Case No. D2002-0439 andsee the following discussion in HQUK Limited v. Head Quarters, WIPO Case No. D2003-0942:“7.11 As to the question whether a trade mark application is sufficient to constitute a trade mark for the
purposes of the Policy, yet again there is uncertainty. In Netdoktor A/S v. Jens Nielsen, WIPO Casepage 8
No. DBIZ2002-00109 the panel decided that the pending United Kingdom trade mark application for
NETDOCTOR.CO.UK was to be disregarded, on the grounds that a trade mark application did notgive the applicant any trade mark rights before a trade mark registration is granted. In contrast, in La
francaise des Jeux v. L Welsr, WIPO Case No. D2002-0305, the Complainant sought to rely on two
CTM applications and the Panel held that the applications for CTMs revealed no obvious grounds fordenying the registrations and as such the trade mark applications were considered sufficient for the
purposes of the Policy.
7.12 Again, looking at this question from first principles, in the United Kingdom, where a trade mark is
registered it is deemed to have been registered from the date of the filing of the application (see Ss
9(3) and 40(3) of the Trade Marks Act 1994). Therefore, an applicant for a UK trade mark has rights inthat trade mark from the date of application; albeit rights that are conditional upon a future event thathas retrospective effect. Are these sufficient rights for the Policy? Similarly, in the case of CTMs,
Article 9(3) of the Community Trade Marks Regulation grants certain rights of compensation from thedate of publication of the CTM if that mark should subsequently be granted.
7.13 However, if these are sufficient trade mark rights for the purposes of the Policy, how is a panel todecide complaints the validity of which depend upon whether or not a registration will subsequently
occur? So far as trade mark litigation in the United Kingdom is concerned, the problem is avoided bysection 9(3) of the Trade Marks Act 1994, which expressly provides that no proceedings can becommenced until the date of registration. Similarly, the Community Trade Mark Regulation provides
that no court may decide upon the merits of a claim for compensation until the registration is published(Article 9(3)). However, no equivalent provisions exist in the Policy.
7.14 The approach of the panel to this problem in La francaise des Jeux appears to have been that in
the absence of any argument or obvious reason why that the applications would not proceed to grant,
then it could be assumed that they would. However, the Panel finds this approach problematic. Evenif a respondent need only show an arguable case that the application will fail, a panel will still risk
being drawn into an argument as to the merits of the application that it is likely to be ill-placed to deal
with.
7.15 Indeed the difficulties and dangers of asking a panel to make a decision in such a case were
illustrated for the Panel when it conducted a cursory online trade mark registry search in respect of theTrade Mark Applications shortly prior to issuing this decision. The results of this search suggested
that two of the Trade Mark Applications either had been or were still subject to opposition proceedings,
a fact that had not been alluded to or mentioned in the Complainant’s Complaint.”
Regarding trademark applications as not by themselves constituting rights is also consistent with 15 U.S.C.
§1057(b) and (c).
Accordingly, in 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.
Trademarks “identify the source of one seller’s goods and distinguish that source from other sources.”
McCarthy on Trademarks and Unfair Competition § 3:1 (4th ed.) (2013). To establish common law rights in amark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public
associates the asserted mark with the complainant’s goods and services. See Australian Trade Commission
v. Matthew Reader, WIPO Case No. D2002-0786. ICANN Panels have found relevant evidence of
secondary meaning to include “length and amount of sales under the mark, the nature and extent ofadvertising, consumer surveys and media recognition”, Amsec Enterprises, L.C. v. Sharon McCall, WIPO
Case No. D2001-0083.
The word PIN is a common descriptive English word, used as a noun or as a verb (as are the nouns PINNER
and PINBOARD, in which Pinterest is not here claiming trademark rights).

page 9“Descriptive names are capable of acquiring distinctiveness (e.g. BRITISH AIRWAYS and BRITISHPETROLEUM), but the more descriptive the name, the more by way of evidence that a court will
require to establish reputation and goodwill; moreover, the more descriptive the name, the narrower
the ambit of protection that a court will afford to the name.” UK Betting PLC v. Pam Oldfield, WIPO
Case No. D2005-0637.
“…in cases involving claimed common law or unregistered trademarks that are comprised ofdescriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus
on the [party seeking to establish such rights] to present compelling evidence of secondary meaningor distinctiveness.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second
Edition (“WIPO Overview 2.0”), paragraph 1.7.
“The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods
but the source of those goods. To establish secondary meaning, it must be shown that the primarysignificance of the term in the minds of the consuming public is not the product but the producer(citations omitted). This may be an anonymous producer, since consumers often buy goods without
knowing the personal identity or actual name of the manufacturer.” 8-12002007 [United States]
Trademark Manual of Examining Procedure (TMEP) 1212. Response, Annex 5.
On the material presented by Pinterest in support of its Objection, the Panel is not satisfied that the word PIN
has been used, either by Pinterest itself or by the very large number of Internet users, retailers and media
commentators since Pinterest started in 2010, in such a way as to give rise to secondary meaning (i.e., asprimary significance) identifying Pinterest as the source of its goods or services. Rather, that word has notbeen shown to have been used otherwise than in its common ordinary English meaning, as a verb todescribe the process of connecting things together or as a noun to describe the connection itself. The factthat 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, thePanel is not satisfied that PIN functions as a mark to identify Pinterest or its goods or services.
Pinterest’s website and the websites of retailers, including Amazon, depict the P (stylised/logo) and PIN IT(figurative) marks. Given the massive growth of Pinterest and the large number of Internet users exposed tothese marks, the Panel is prepared to accept that they have come to identify Pinterest in the public mind, inthe form in which they are displayed, such that Pinterest has common law rights in those marks.
Accordingly, in accordance with Module 3, Section 3.5.2 of the New gTLD Applicant Guidebook, the issue tobe determined is whether the potential use of <.pin> as a gTLD by Amazon:(i)creates an impermissible likelihood of confusion between the applied-for gTLD and Pinterest’s P(stylised/logo), PINTEREST (word) or PIN IT (figurative) marks; or(ii)takes unfair advantage of the distinctive character and reputation of any of those marks; or(iii)

unjustifiably impairs the distinctive character and reputation of any of those marks.

As stated by the learned panelist in Right At Home v. Johnson Shareholdings, Inc., WIPO Case No.
LRO2013-0030 (<.rightathome>), July 3, 2013:“The use of the terms ‘unfair,’ ‘unjustifiably,’ and ‘impermissible’ as modifiers, respectively, of‘advantage,’ ‘impairs,’ and ‘likelihood of confusion’ in Section 3.5.2 suggests that there must be
something more than mere advantage gained, or mere impairment, or mere likelihood of confusion for
an Objection to succeed under the Procedure. It seems, rather, that there must be something
untoward – even if not to the level of bad faith – in the conduct or motives of Respondent, or
something intolerable in the state of affairs which would obtain if the Respondent were permitted tokeep the String in dispute.”

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Under Section 3.5.2, relevant factors to be considered by the Panel in cases in which trade marks are relied
on include, without limitation, the following, with this Panel’s findings set out in relation to each of them:i.
Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
The <.pin> gTLD is not identical or similar to the P mark. It has some similarity to the PINTEREST mark,although, as in the case of HEAT and THEATRE, even if the proposed gTLD is wholly incorporated within
the trademark, the similarity is weak. It is similar in appearance, phonetic sound and meaning to the wordsof the figurative PIN IT mark. Because PIN and IT are descriptive words and because PINTEREST is a
blend of the two descriptive words PIN and INTEREST, the following passage from the Australian High Court
case of Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd (1978) 140
CLR 216 at 229 is apposite:“There is a price to be paid for the advantages flowing from the possession of an eloquently
descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind,its very descriptiveness ensures that it is not distinctive of any particular business and hence its
application to other like businesses will not ordinarily mislead the public. In cases of passing off,
where it is the wrongful appropriation of the reputation of another or that of his goods that is inquestion, a plaintiff which uses descriptive words in its trade name will find that quite small differences
in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v.
Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As
his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will
always be present when names consist of descriptive words – “So long as descriptive words are usedby two traders as part of their respective trade names, it is possible that some members of the public
will be confused whatever the differentiating words may be.” The risk of confusion must be accepted,
to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly inthose words and might even deter others from pursuing the occupation which the words describe.”ii.

Whether the objector’s acquisition and use of rights in the mark has been bona fide.

Pinterest’s acquisition of the P, PINTEREST and PIN IT marks has been bona fide, even though many of its
applications to register the marks were filed after it became known that Amazon had applied for the <.pin>
gTLD.
iii.
Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the objector, of the applicant or of a third party.
The P mark does not correspond to the gTLD. Nor does the PIN IT mark, given that its distinctiveness is in
its figurative element. The following assessment being confined to this administrative proceeding and not
implying any wider applicability, the Panel finds insufficient evidence in the record presented in this case that
PIN is primarily recognized by the public generally, by Internet users generally, by visitors to Pinterest’s
website, by visitors to the websites of retailers who use Pinterest in their own marketing campaigns, by the
media or by any other sector of the public as the mark of Pinterest. Nor is there any evidence before thePanel that PIN is recognized by any sector of the public as the mark of Amazon or anyone else. The
descriptive meaning of the word is universally recognized.
iv.
The applicant’s intent in applying for the gTLD, including whether the applicant, at the time of
application for the gTLD, had knowledge of the objector’s mark, or could not have reasonably been
unaware of that mark, and including whether the applicant has engaged in a pattern of conduct
whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly
similar to the marks of others.
Amazon intends to operate a domain name registry, engaging a single registrar who will issue to Amazon-

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related entities domain names in the <.pin> gTLD space. Amazon must have been aware of the
PINTEREST trademark at the time of application for the gTLD, even though that mark had not then beenregistered. It is likely that Amazon was also then aware of the P and PIN IT marks, since it had engaged
with Pinterest in promoting the use of the Pinterest website and had encouraged its own visitors to pin items
of interest. Amazon has applied for numerous new gTLDs but they are predominantly common dictionary
words. There is no evidence before this Panel that any of them are identical or confusingly similar to themarks of others.
v.
Whether and to what extent the applicant has used, or has made demonstrable preparations touse, the sign corresponding to the gTLD in connection with a bona fide offering of goods or services ora bona fide provision of information in a way that does not interfere with the legitimate exercise by theobjector of its mark rights.
There is no evidence that Amazon has used PIN in any way, other than for the purpose mentioned above at
iv. In applying to register <.pin> as a gTLD, it has made demonstrable preparations to use that sign inconnection with a bona fide offering of registry services in a way that has not been shown to be likely tointerfere with the legitimate exercise by Pinterest of its P, PINTEREST and PIN IT trademark rights.
vi.
Whether the applicant has marks or other intellectual property rights in the sign corresponding
to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, hasbeen bona fide, and whether the purported or likely use of the gTLD by the applicant is consistent withsuch acquisition or use.
There is no evidence before the Panel that Amazon has marks or other intellectual property rights in the sign
PIN.
vii.
Whether and to what extent the applicant has been commonly known by the sign corresponding
to the gTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent
therewith and bona fide.
There is no evidence before the Panel that Amazon has been commonly known by the sign PIN.
viii. Whether the applicant’s intended use of the gTLD would create a likelihood of confusion withthe objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
Despite the similarities mentioned in answer to question i, there is a significant difference between Amazon’s
proposed <.pin> gTLD and Pinterest’s P mark; the difference between the gTLD and the PINTEREST markis less significant; and the difference between the gTLD and the word element of the PIN IT mark is small.
When the figurative element of the latter mark is taken into account, (as it must be, since that is the mark’s
distinctive element), the difference is greater. As explained above in Hornsby, where descriptive words areused in a trade name, quite small differences in a competitor's trade name will render the latter immune fromaction and the risk of confusion must be accepted.
Amazon’s intended use of the <.pin> gTLD is to operate registry services for entities within its ownership andcontrol, and also itself to register and use domain names in the <.pin> gTLD space, such as (perhaps)<amazonbooks.pin> and <specialthingsto.pin>. Further, Amazon has indicated in its application anawareness of the need to respect the trademark rights of others. Should a complaint be made about asecond level registration in the <.pin> gTLD space, Amazon itself would be the respondent. Accordingly, it isunlikely that Amazon’s Intellectual Property Group would permit registration of a domain name such as<pinterest.pin> and even if it were to do so, the confusion that would arise would spring primarily from theuse of the second-level registration rather than from the <.pin> gTLD.
For these reasons and because the word PIN is a common, descriptive word, the Panel finds that, on theevidence provided by Pinterest in this proceeding, Amazon’s intended use would not create a likelihood ofconfusion with Pinterest’s P, PINTEREST or PIN IT marks as to the source, sponsorship, affiliation, orpage 12endorsement of the <.pin> gTLD.
Finally, the Panel notes that any other legal issues that might arise as a consequence of Pinterest’s andAmazon’s respective activities, relationships and intentions involving the use of the word PIN on the Internet
would fall outside the scope of this administrative, trademark-based procedure.
7. Decision
The Panel concludes that the Response is valid and should be upheld because the potential use of <.pin> asa gTLD by Amazon:(i)does not create an impermissible likelihood of confusion between the applied-for gTLD and Pinterest’s
P (stylised/logo), PINTEREST (word) or PIN IT (figurative) marks; and(ii)does not take unfair advantage of the distinctive character and reputation of any of those marks; and(iii)

does not unjustifiably impair the distinctive character and reputation of any of those marks.

For the above reasons, the Objection is rejected.

[signed]Alan L. Limbury
Sole Expert Panel
Date: July 16, 2013