Pixabay GmbH v Privacy Administrator, Anonymize, Inc

WIPO Case No. D2022-2370

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pixabay GmbH v. Privacy Administrator, Anonymize, Inc.

Case No. D2022-2370

1. The Parties

The Complainant is Pixabay GmbH, Germany, represented by SafeNames Ltd., United Kingdom.

The Respondent is Privacy Administrator, Anonymize, Inc., United States of America.

2. The Domain Name and Registrar

The disputed domain name <pixabau.com> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2022.

On June 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the

contact details.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the the due date for Response was July 25, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 27, 2022.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 1, 2022. 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.

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4. Factual Background

The Complainant was founded in 2010 and runs an online platform that allows its customers to create and share copyright-free images, videos and music. In 2019, the Complainant was acquired by Canva Pty Ltd, a

global online graphic design platform. The Complainant’s main site is available in 26 languages and

currently permits the sharing of over 2.6 million images.

The Complainant owns several registered trademarks, including PIXABAY Australia Registration No. and Registration date September 20, 2019 in classes 9, 42, and 45.

2004679 and Registration date April 22,2019 in classes 9, 42, 45; PIXABAY India Registration No.4212079
and Registration date June 20,2019 in classes 9, 42, 45; PIXABAY Mexico Registration No. 2033884 and

The disputed domain name was registered on November 29, 2019, it used to resolve to random

redirectionsand pay-per-click site (“PPC”), when the Complaint was filed. Now it resolves to a PPC site with

links to unrelated web locations and services.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to its PIXABAY trademark. It

points out that the disputed domain name’s second level only differs from the Complainant’s PIXABAY mark

through the substitution of its final letter with a ‘u’. The Complainant points out that ‘y’ and ‘u’ are adjacent

on a QWERTY keyboard and cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”), section 1.9 in this regard: “A domain name which consists of a

common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar

to the relevant mark for purposes of the first element.” The Complainant says that this principle has been

consistently applied in typo-squatting domain name cases.

To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for

“pixabay”, “pixabau”, or anything similar. The Complainant also says it cannot locate any evidence to

suggest that the Respondent holds unregistered rights in any such term. The Complainant has not licensed

the Respondent to use the disputed domain name incorporating the Complainant’s mark.

The Complainant further submits that the Respondent has not used, nor prepared to use, the disputed
domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has
used the disputed domain name to redirect Internet users to various unrelated sites. The Complainant points

out that UDRP panels have held such conduct not to amount to a bona fide offering of goods or services and

have also decided that a respondent’s use of a domain name to redirect users to random sites is not a bona

fide offering.

The Complainant reiterates that the Respondent’s use of the disputed domain name is an example of a
typosquatting variation of the Complainant’s distinctive PIXABAY mark, to advertise PPC links. The

Complainant says that previous panels have found a respondent’s use of a confusingly similar disputed

domain name to redirect Internet users to unrelated sites, via PPC links, is not a bona fide offering of goods

or services.

The Complainant submits that the Respondent is not known, nor has ever been known, by the distinctive

PIXABAY mark, nor by “pixabau” or anything similar. The Respondent is not connected or affiliated with the

Complainant and has not received a license or consent to use the PIXABAY mark in any way.

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The Complainant maintains that it is clear that the Respondent is capitalizing on the renown of the PIXABAY

mark by directing Internet users who have mistyped the Complainant’s mark to unrelated and potentially

dangerous content. The Respondent evidently derives commercial gain when users are directed to

unrelated sites via the advertised PPC links, or so the Complainant says.

The Complainant has been operating since 2010 and its earliest PIXABAY trademark’s priority date

precedes the registration of the disputed domain name by more than seven months. The Complainant states that it also holds other trademarks for PIXABAY, covering a number of jurisdictions, which were similarly registered prior to the disputed domain name. The Complainant contends that its PIXABAY mark or

name has become synonymous with the provision of stock photography online.

The Complainant notes that anyone with access to the Internet can find the PIXABAY mark clearly on public trademark databases and that all top Google search results for the PIXABAY mark (both prior to November

29, 2019 and currently) pertain to the Complainant’s offerings. The simplest searches reveal the

Complainant. The Complainant contends that in view of these factors, the Respondent should have been

aware of the Complainant’s PIXABAY mark at the time of the disputed domain name’s registration.

The Complainant also submits that it sent a cease-and-desist letter to the Respondent on evidence that it knowingly acted in bad faith.

The Respondent is using a confusingly similar variation of the Complainant’s PIXABAY mark to attract and

divert Internet users inadvertently mistyping the mark in the hope of reaching the Complainant’s services, to

unconnected sites which the Respondent can commercially benefit from.

The Complainant points out that previous panels have found that a respondent’s use of a confusingly similar

domain name to misleadingly divert Internet users to unconnected third-party sites constitutes evidence of

bad faith. Finally, the Complainant submits that the Respondent’s use of the disputed domain name to

automatically download, presumably malicious, files on an unsuspecting user’s device is clear evidence of

bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the PIXABAY trademark of the Complainant. However, the

only difference is an almost unnoticeable substitution of the final ‘y’ with a ‘u’. This difference is immaterial

and the distinctive PIXABAY trademark of the Complainant remains immediately recognizable in the

disputed domain name. This constitutes an example of typosquatting where the whole intention is to register

an almost imperceptibly different domain name and rely on an Internet user’s mistake or inattention to attract

traffic to a connected website. See section 1.9 of the WIPO Overview 3.0.

Therefore, the Panel holds that the disputed domain name is confusingly similar to the PIXABAY trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not answered any of the contentions of the Complainant. There is nothing before the domain name or has ever conducted legitimate business with reference to this term. The Respondent has

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not been licensed or authorized to use the Complainant’s trademark in any way. It is difficult to envisage any

legitimate use the Respondent could put the disputed domain name to, that would not infringe the

Complainant’s rights, in the absence of express authorization to that effect. The disputed domain name

resolves to a website with PPC links, which does not represent a bona fide offering as the links capitalize on

the reputation and goodwill of the Complainant’s mark and mislead Internet users.

Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant started using the PIXABAY mark in trade in 2010. The trademark is highly distinctive and has also acquired considerable goodwill around the world through extensive use. The Complainant has a very substantial user base for its services offered under the PIXABAY mark. The disputed domain name itself is a perfect example of typosquatting, where an acquirer deliberately makes a small change to a known trademark, which implies their knowledge of the mark and the reputation that it has. This particular mark is for an Internet-based business which makes it even more improbable that the Respondent would he unaware of it when registering the disputed domain name.

The Respondent also did not reply to the Complainant’s communication or seek to make a case for good

faith use in the present forum. Acquiring a domain name which incorporates something very close to a
registered mark and then parking it on a website for the sake of generating PPC license payments is a bad

faith activity. This is because it relies on tricking or misleading Internet users into visiting a connected

website thinking they are engaging with the Complainant’s genuine web presence.

Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pixabau.com> be transferred to the Complainant.

/William A. Van Caenegem/

William A. Van Caenegem

Sole Panelist
Date: August 15, 2022