Amazon has beaten Pinterest in a battle over .pin, one of the many new generic top-level domains (gTLDs) that are in the process of joining existing domains like .com, .net and .org.
In a decision issued this week, a World Intellectual Property Organization mediator rejected Pinterest’s objection to Amazon’s application to own .pin.
Pinterest filed its objection in March, and based its argument on the fact that it’s applying for a trademark on the word “pin” in the U.S. and more than 60 other countries. It also explained to WIPO that content posted on its site are called “pins,” users are called “pinners,” content is arranged into “pinboards” and the site offers “Pin it” buttons for use on other websites.
But panelist Alan Limbury rejected the notion (PDF download) that “pin,” a common and generic word, has risen to the level of having a secondary meaning that associates it with Pinterest.
… 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., as primary significance) identifying Pinterest as the source of its goods or services.
Pinterest references its 63 pending trademark applications relating to the word “pin,” but, as Limbury points out in his decision, only two of those — in the European Union and the Russian Federation — were filed before Amazon applied for the .pin domain.
For these reasons and because the word PIN is a common, descriptive word, the Panel finds that, on the evidence provided by Pinterest in this proceeding, Amazon’s intended use would not create a likelihood of confusion with Pinterest’s P, PINTEREST or PIN IT marks as to the source, sponsorship, affiliation, or endorsement of the gTLD.
In its application, Amazon announced that it would not operate .pin as a public gTLD — i.e., Amazon and its subsidiaries will be the only entities using it, and the public won’t be able to register domains with that extension.
The ruling doesn’t automatically mean Amazon will get the .pin, but it does clear one potential hurdle.
(tip via Domain Name Wire)
The .Amazon Domain Application
Amazon is also in the news this week for its .amazon gTLD application.
ICANN’s Governmental Advisory Committee agreed with several Latin American countries and recommended that ICANN reject the application because “Amazon” is a geographic name of great important in the region.
But, as The Domains is reporting, the International Trademark Association is urging ICANN to ignore the committee recommendation and follow international law, which “establish that nation states do not possess exclusive rights to geographic terms and the rights of trademark owners as established under international frameworks, including binding international treaties, must be recognized.”
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