Pinterest filed a complaint at the end of August in the Northern District of California against Qian Jin of Nanjing, China, for cyberpiracy, trademark infringement and false designation of origin, trademark dilution, and unfair competition. Specifically, Pinterest claims that Qian purchased dozens of “infringing” domain names that are nearly identical and confusingly similar to pinterest.com, and uses them purely for online advertisements. Pinterest also alleges that Qian applied to register PINTEREST and PINTERESTS as trademarks in the United States in bad faith, stating that he had full knowledge of Pinterest’s brand and services.
It appears as though this is not the first time that Qian has been accused of infringing the IP rights of an American startup company. In fact, in their complaint Pinterest’s attorneys labeled him a “serial cybersquatter who has registered and owns hundred of infringing domain names.” They point out that Qian has also applied to register marks such as FOURSQUARE, TWITTER, and INSTAGRAM in his native China. Moreover, earlier this year, the electronic payment company Square won an arbitration against Qian, with the panel concluding that he registered a total of twenty-six domain names in bad faith.
This pattern of cyber-squatting is not a new phenomenon. The Anti-Cybersquatting Consumer Protection Act (ACPA) was enacted to discourage people from purchasing domain names in bad faith with the intent to profit from another’s trademark. The ACPA makes it illegal to register, “traffic in,” or use a domain name that is identical or confusingly similar to famous trademark. Thus, under the ACPA, Qian may be found liable if Pinterest successfully shows that he had “bad faith intent to profit from the mark.” However, the legal consequences of Qian’s Chinese trademark filings are more difficult to predict.
Pinterest Fights Chinese Cyber-squatter, GigaOM, September 5, 2012
Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d)