The Complainant is PicMonkey, Inc. of Washington, United States of America ("USA"), represented by K & L Gates LLP, USA.
The Respondent is Edmunds Gaidis - sia gogle of Rezekne, Latvia, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland ("UK").
The disputed domain name <pickmonkey.com> is registered with Moniker Online Services, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 5, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. The Response was filed with the Center on April 6, 2015.
The Center appointed Mr. Christopher Pibus as the sole panelist in this matter on April 22, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant provides photograph editing services and programs throughout the U.S. and internationally. The Complainant has used the trademark PICMONKEY in association with its software and services since September, 2012. The Complainant owns 3 trademark registrations in the U.S. for the trademark PICMONKEY, as follows:
U.S. Trademark Registration for PICMONKEY No. 4,347,801 dated June 4, 2013;
U.S. Trademark Registration for PICMONKEY No. 4,347,794 dated June 4, 2013;
U.S. Trademark Registration for PICMONKEY ROYALE No. 4,347,795 dated June 4, 2013.
The Complainant also owns and operates a website at <picmonkey.com> which prominently features the PICMONKEY trademarks.
The Respondent registered the disputed domain name <pickmonkey.com> on May 20, 2004 and at the time the complaint was filed the disputed domain name reverted to a parking page, that provided click-through links to websites of third parties which provided services of photo and picture editing, and image photo editing. Subsequent to the Complaint being filed, the Respondent changed the content of the website to resolve to a blog site displaying pictures of monkeys.
The Complainant relies on 3 trademark registrations for the trademark PICMONKEY in the U.S., as listed in paragraph 4 above.
The Complainant contends that the disputed domain name <pickmonkey.com> is confusingly similar to the PICMONKEY trademark, except for the addition of the letter "k". The addition of the letter "k" to the word "pic" does not serve to distinguish the disputed domain name from the Complainant's registered trademark PICMONKEY.
The Complainant contends that the Respondent is not commonly known by the Pickmonkey name, and that the disputed domain name is not being used in association with a bona fide offering of goods and services. The domain name <pickmonkey.com> resolves to a web page which contains links to third party websites, functioning as pay-per-click advertisements, including websites for photographic imaging services.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent registered and is using the disputed domain name to interfere with the Complainant's business and is attempting to trade on the goodwill of the Complainant's reputation. The disputed domain name reverted to a website which generated pay-per-click revenue and specifically references services in the same field as the Complainant. The Respondent has offered to sell the disputed domain name to the Complainant for an amount exceeding the Respondent's out of pocket expenses, namely USD 50,000.
The Respondent submits that the word "pic" is an abreviation of the word "picture", and accordingly has a very different meaning from the word "pick", which connotes the act of choosing. This difference is alleged to be sufficient to avoid a finding of a confusing similarity. The Respondent submits that the disputed domain name was registered 9 years before the Complainant registered its trademarks, and 8 years before the Complainant was incorporated. The Respondent also submits that the Complainant is not the registered owner of the trademarks submitted in the Complaint. The Respondent submits that he did not have any knowledge of the Complainant or the Complainant's services when the disputed domain name was registered in 2004, and notes that Respondent was located in Bangladesh and subsequently, Latvia, whereas the Complainant's business was located in the U.S. The Respondent further contends that the disputed domain name has always reverted to a website that provides links to third party websites, and those links are automatically generated. Until recently those links have not related to photo editing services. Accordingly, the Respondent contends that (1) when he registered the disputed domain name in 2004, he had no knowledge of the Complainant and the Complainant's trademark rights, (2) the Respondent had a legitimate right and interest in registering the disputed domain name, and (3) has used the disputed domain name in a bona fide offering of goods and services by providing links to third party websites.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant owns registered trademark rights in the trademark PICMONKEY by virtue of the U.S. trademark registrations noted in section 4 above. The Panel notes that the trademark registrations listed in section 4, were assigned from Justin Huff to the Complainant Picmonkey, Inc. on September 12, 2014, and have been duly recorded with the U.S. Trademarks Office.
The Panel further finds that the disputed domain name <pickmonkey.com> is confusingly similar to the Complainant's registered trademark PICMONKEY. The addition of the letter "k" does not serve to distinguish the disputed domain name from the Complainant's registered trademark PICMONKEY, for purposes of a confusion analysis.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Panel notes that the Respondent registered the disputed domain name <pickmonkey.com> on May 20, 2004, which was 9 years prior to the registration of Complainant's trademarks. At the time the disputed domain name was registered, the Complainant did not yet exist and no trademark registrations of the Complainant were in existence. Accordingly, the Respondent could not have been aware of the Complainant or the Complainant's rights. These circumstances are consistent with the claim that Respondent originally had a legitimate interest and right in registering the disputed domain name.
Furthermore, the Panel agrees with the Respondent's submission that the word "pick" has a different meaning from "pic". It is understandable that the Complainant has chosen "pic" as the prefix to its trademark as it is suggestive of its field of business – the editing of "pictures". This is one of those rare situations where the addition of a single letter ("k" to the word "pic") does in fact transform the word in a meaningful way. This difference in spelling and meaning is consistent with the Respondent's statement that he was unaware of the Complainant and its business. For many years after 2004, it appears the Respondent used the disputed domain name to provide links to third party websites which were not related to the Complainant's business. More recently, it appears from the evidence submitted by the Complainant that the links to the third party websites were related to "photo" "and "picture editing". As noted above, after the filing of the Complaint, the Respondent then changed the content of the website to display pictures of monkeys. The Respondent's recent conduct is problematic, but in view of its finding under the third element, it is not necessary for this Panel to make a finding under paragraph 4(a)(ii) of the Policy.
The Panel reiterates the particular circumstances in this case, specifically that the Respondent registered the disputed domain name <pickmonkey.com> on May 20, 2004, which was 9 years prior to the registration of Complainant's trademarks. At the time the disputed domain name was registered, the Complainant did not yet exist and no trademark registrations were in existence. Accordingly, the Respondent could not have been aware of the Complainant or the Complainant's rights. Therefore, the Respondent could not have acted in bad faith in the registration of the disputed domain name.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: May 11, 2015