Nominet UK Dispute Resolution Service
DRS Number 03847
Parties Playboy Enterprises International, Inc. v JML
Decision of Independent Expert
Complainant: Playboy Enterprises International, Inc.
Country: US
Respondent: JML
UK
Playboyenterprises.co.uk
This domain name is referred to below as the "Domain Name".
The Complaint was lodged with Nominet on 19 July 2006. Nominet validated the Complaint on 20 July and notified the Respondent on the same date. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 21 August 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 11 August 2006. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
It is the view of the Expert that there are no exceptional circumstances relevant to this matter.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consist of the Complaint and supporting documents) and the Policy and the Procedure.
The Complainant
The Complainant is Playboy Enterprises, International, Inc., its licensees, subsidiaries and affiliated companies and their predecessors in interest.
The Complaint describes the Complainant as a "brand driven international multi-media entertainment company". The PLAYBOY mark has been used by the Complainant for over 50 years. The first edition of Playboy magazine was published in the US in 1953 and the magazine has been published continuously since. The Complainant now publishes editions of Playboy magazine around the world (there are currently locally produced editions of Playboy magazine published in 20 countries), operates Playboy television networks and distributes programming globally via home video and DVD. It also operates "playboy.com", which the Complainant describes as "a men's lifestyle and entertainment web destination".
The Complainant registered the domain names www.playboy.com in February 1994 and www.playboyenterprises.com in July 1997. This latter domain name is used to host the corporate homepage of the Complainant.
The Complainant owns approximately 1,700 trade mark registrations and applications across the world for or incorporating the PLAYBOY mark, of which over 100 are UK and Community trade mark (CTM) registrations and applications. The UK registrations include marks which date from the late 1950's and cover a wide range of goods and services. Copies of a sample of the UK and CTM registrations are annexed to the Complaint at Annex 1 (the annex consists of 23 registrations).
By way of example CTM 60,434 is for the word mark PLAYBOY. The mark was applied for on 1 April 1996 and registered on 28 October 2004. It is registered in respect of goods and services in the following classes; 3, 5-6, 8-12, 14-16, 18, 20-21, 23, 26,-36, 38-42. These classes cover a wide range of goods and services, including entertainment (in class 41).
The Complaint makes no mention of any trade mark registrations or applications for the mark PLAYBOY ENTERPRISES (the Domain Name being www.playboyenterprises.co.uk).
The Complainant's commercial activities extend beyond the media output sector. It licenses the PLAYBOY trade marks internationally for a wide range of consumer goods.
In addition to its portfolio of trade mark registrations and applications the Complainant asserts common law passing off rights in the PLAYBOY and PLAYBOY ENTERPRISES marks. In support it relies on the substantial reputation it claims that it has acquired in the PLAYBOY brand in consequence of the commercial activities referred to above.
The Respondent
The Expert has very little information about the Respondent. A Nominet Whois search states that it is a non-trading UK individual. It also states that the Domain Name was registered by the Respondent on 18 May 2006. The Complaint states that the Respondent is not connected with the Complainant.
The Complaint asserts that the Respondent is using the Domain Name to direct the viewer's browser to the Complainant's corporate homepage at www.playboyenterprises.com. In addition to the above redirection the Complainant states that the Respondent has set up at least 1 email address which makes use of the Domain Name. This email address is mark.klein@playboyenterprises.co.uk ("the Email Address"). The Complaint asserts that the Email Address has been used to pass the Respondent off as a representative of the Complainant. On 18 May 2006 (the date that the Domain Name was registered), E! Entertainment, a business which was arranging a promotional event for the Complainant, received an email from the Email Address. A copy of the email is annexed to the Complaint at Annex 3. The email requested 7 tickets to the promotional event and purported to be sent by "Mark Klein, EU Brand Licenses VP, Playboy Enterprises UK". The documents at Annex 3 show that E! Entertainment were initially under the impression that the sender of the email was connected with the Complainant. By way of email dated 18 May 2006 from E! Entertainment to the Complainant the promoter wrote "FYI- I'll send him the invites unless you let me know otherwise". In this way the Complainant became aware of the use of the Domain Name and informed E! Entertainment that the Email Address was not known to it.
On 8 June 2006 solicitors for the Complainant wrote to Mark Klein (who had supposedly sent the email from the Email Address) informing him that his conduct amounted to both a passing off and the tort of deceit. The letter required him to give a written assurance that he would refrain from any similar behaviour in the future. The letter also required Mr Klein to transfer the Domain Name to the Complainant. The letter is reproduced at Annex 4 to the Complaint. No response was received.
There is nothing before the Expert to indicate that the Respondent disputes any of the above matters.
Complainant
The Complaint makes the submissions set out below. On occasions the Complainant refers to previous decisions that have been made by Experts under the Policy. Whilst not disregarding these, the Expert is mindful that these decisions do not have the status of binding precedent in the same way as case law would operate in a court of law. It is important that the DRS system does not become inaccessible to lay persons who may lack the necessary knowledge and understanding to make out their case on the basis of existing authorities. For this reason the Expert has omitted references to existing decisions when setting out the content of the Complainant's submissions.
Rights
The Complainant states that it owns registered and unregistered Rights in a name or mark which is identical or similar to the Domain Name. It relies on its trade mark registrations and the possession of unregistered rights in the PLAYBOY and PLAYBOY ENTERPRISES marks to establish its Rights.
It also states that the Domain Name prominently incorporates the Complainant's PLAYBOY trade mark and that this trade mark will be recognised by internet users as a well-known brand distinctive of the Complainant's business. The Domain Name also incorporates the Complainant's full corporate name, Playboy Enterprises and the Domain Name is (in substance) identical to the Complainant's www.playboyenterprises.com domain name which is used by Complainant as its global corporate home page.
Abusive Registration
The Complainant asserts that the Respondent's conduct unfairly takes advantage of and/or is unfairly detrimental to the Complainant's Rights and is therefore an Abusive Registration under the terms of the Policy. In its submissions the Complainant distinguishes between the Respondent's use of the Domain Name and its registration of the Domain Name- both of which it contends are abusive.
For the Complainant the Respondent's use of the Domain Name confuses people or businesses into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with Complainant. This is for the following reasons:
• The Domain Name is used to point to Respondent's corporate web page (at playboyenterprises.com).
• In addition, it is used as the basis of an email address.
• It is clear from the way that the Domain Name is used that it is the Respondent's intention to use the Domain Name to pass himself off as being in some way connected to Complainant. It is also clear that confusion is inevitable under these circumstances. The Complaint submits that a person who receives an email consisting of the words "Playboy Enterprises" will assume that the sender of the email is an employee or officer of the Complainant. If for any reason they wish to verify this they will type "Playboyenterprises.co.uk" into a web browser. The fact that this will result in them seeing the Complainant's corporate web page will confirm the deception in their minds.
The Complainant submits that these circumstances, combined with what it sees as a clear intent on the part of Respondent to deceive, will lead to the inevitable conclusion that, on the balance of probabilities, confusion has occurred. Even if confusion cannot be deemed to have occurred the likelihood of confusion combined with the potential for disruption or detriment is capable of amounting to an Abusive Registration under the terms of the Policy.
In addition the Complainant contends that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business. In support of this assertion it relies on the following factors:
The Domain Name is used:
- to point to Complainant's corporate website, and
- to host an email address.
Each of these elements, according to the Complainant's submissions, enables the Domain Name to be used deceptively and misleadingly to allow the Respondent to give the impression that he is in some way authorised by or connected with Complainant. Anyone viewing the website or receiving an email from the Email Address will assume that Respondent is authorised by Complainant. These circumstances will inevitably lead to Complainant's business being unfairly obstructed. Not only will this be the inevitable outcome, it is clear that Respondent's primary purpose in registering Domain Name was to achieve such an obstruction in the hope that Respondent may in some way benefit from this. The Respondent has no legitimate reason for its conduct.
The Complainant also asserts that the Domain Name is an Abusive Registration for the following additional reasons:
• The Complainant has not authorised the Respondent to use any of its marks including its well-known PLAYBOY mark or "Playboy Enterprises" name.
• The Respondent registered the Domain Name after the Complainant had already built up a substantial reputation in its PLAYBOY mark and corporate name. The Respondent had no legitimate reason for doing so and made the registration in a manner which took unfair advantage of and was unfairly detrimental to Complainant's Rights:
• Permitting the Domain Name to remain in the hands of Respondent will encourage others to engage in similarly unfair behaviour. This, and other aspects of the Respondent's conduct, may serve to erode the distinctiveness of the PLAYBOY brand and the Complainant's "Playboy Enterprises" corporate name, to the Complainant's further detriment.
Respondent
The Respondent has made no submissions.
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent's failure to submit a Response and the expert is accordingly able to draw such inferences as may be appropriate.
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law.
The Complainant's Rights
The Complainant asserts that it has rights in the PLAYBOY mark and that the mark is identical or similar to the Domain Name.
The Expert finds that the Complainant's trade mark registrations in the word mark PLAYBOY (for example CTM 60,434) confer rights in the PLAYBOY mark which are enforceable under English law.
However the Domain Name consists of the composite mark Playboy Enterprises. The Expert has not been made aware that the Complainant owns trade marks in the mark PLAYBOY ENTERPRISES. This raises the question whether the Domain Name is identical or similar to the Complainant's trade mark registrations. The Expert finds that it is. The most important component of the Domain Name is the word "Playboy". The insertion of the neutral word "Enterprises" into the Domain Name does not displace this overall impact. The Domain Name is therefore similar to the Complainant's registered trade marks for the purposes of the Policy.
Even if that were not the case, the Complainant has demonstrated that its corporate name Playboy Enterprises, whilst not a registered trade mark, has become well known and associated with the Complainant. It is, for example, used by the Complainant for its corporate website at www.playboyenterprises.com. The Expert therefore finds that the Complainant owns unregistered rights in the goodwill generated by use of its corporate name. The Domain Name is identical to the Complainant's corporate name (it being customary to disregard the suffix ".co.uk".)
The Complainant has therefore demonstrated that it has registered and unregistered rights in the PLAYBOY and PLAYBOY ENTERPRISES marks and that these marks are identical or similar to the Domain Name for the purposes of the Policy. The first criterion under the Policy has therefore been satisfied.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
A Domain Name which either:
i was registered or otherwise acquired in a manner, which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights,
OR
Ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Use of the Domain Name
Clause 3(a) of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant's Rights. These include the following ground which is most relevant to the Complaint:
(ii) Circumstances indicating that the Respondent is using the Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
The Complainant relies on 2 uses of the Domain Name by the Respondent- the redirection of the Domain Name to its own corporate website and the use of the Email Address (and also the 2 activities in conjunction with each other).
The Domain Name is currently redirected to the Complainant's own corporate webpage. Although it may be used in a confusing manner at a future date, the Expert finds this redirection is not in itself taking obvious unfair advantage of or causing detriment to the Complainant's Rights on the submissions before her. Whilst there may be a case to be made along the lines that the Respondent's activities are diluting the Complainant's control over its own marks, this line of argument has not been put forward by the Complainant and the Expert is not inclined to develop this aspect further on the submissions that are before her.
However, as the Complainant points out, the redirection of the Domain Name is not in isolation. It is being operated in conjunction with the use of Email Address which also incorporates the Domain Name. The Email Address was used to request tickets to a Playboy function under false pretences. This request was arguably unlawful and possibly illegal. Annex 3 to the Complaint indicates that E! Entertainment, the third party who received the Respondent's request, were initially under the impression that the Respondent was connected to the Complainant (as evidenced by their email to the Complainant dated 18 May 2006). This confusion was corrected by the Complainant on this occasion but might readily have gone unnoticed or not be picked up if the Respondent were to try something similar in the future. On the facts a measure of confusion has therefore occurred as a result of the Respondent's use of the Domain Name (E! Entertainment were confused). The confusion occurred because the Respondent's use of the Domain Name took unfair advantage of the Complainant's Rights. The use was accordingly an Abusive Registration under the Policy.
The Expert is also entitled to take account of the likelihood for future confusion should the Respondent's use of the Domain Name as an email address continue. The Expert agrees with the Complainant that any future use by the Respondent of the Email Address would inevitably generate confusion given that the Domain Name is identical to the Complainant's corporate name. The Expert agrees that the likelihood of confusion is heightened by the fact that a confirmatory check of the website address at the Domain Name would take the recipient of an email to the Complainant's own official website and would therefore appear to confirm the Respondent's connection to the Complainant. In these circumstances, and given the manner in which the Email Address has already been used by the Respondent, the Expert finds that the Complainant's Rights are in jeopardy so long as the Domain Name remains in the Respondent's hands.
The Expert finds that the Respondent's use of the Domain Name amounts to an Abusive Registration under the Policy.
Registration or Acquisition of the Domain Name
Clause 3 of the Policy sets out a list of non exhaustive factors which may be evidence that the Domain Name is an Abusive Registration. In relation to registration of the Domain Name clause 3(a) (i) (C.) states that an Abusive Registration may be found where there are circumstances indicating that the Respondent has acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
The Complainant submits that the Domain Name was registered primarily for the purposes of unfairly disrupting (or obstructing) the business of the Complainant and that this took unfair advantage of or was unfairly detrimental to the Complainant's Rights. It also refers to the Complainant's substantial goodwill at the time of registration and asserts that the Respondent had no legitimate reason for the registration. Unsurprisingly there is no direct evidence before the Expert to indicate that the Respondent intended to disrupt the Complainant's business or take unfair advantage of the Complainant's Rights when it registered the Domain Name. The Expert is accordingly invited to infer from the surrounding circumstances that the Domain Name was registered in a manner that was abusive.
The Expert finds that it is significant that the Respondent made use of the Email Address to request the Playboy function tickets on the same date as it was registered (18 May 2006). Given the almost simultaneous timing of the registration and the making of this request the Expert finds as a matter of fact that the Domain Name was registered by the Respondent for the purposes of making a misleading, but plausible, request for tickets. The Expert finds on the balance of probabilities that this request took unfair advantage of the Complainant's Rights. It follows from these findings that the Domain Name was in fact registered for the purposes of taking unfair advantage of the Complainant's Rights. In the view of the Expert this means that the registration itself was also an Abusive Registration under the Policy.
For completeness, although the registration of the Domain Name was abusive for the reasons set out above, the Expert does NOT find that the Domain Name was registered for the purpose of unfairly disrupting the Complainant's business. There is nothing to suggest that the Respondent has any plans to cause active disruption. No doubt the request for tickets caused a small amount of inconvenience and legal cost on the part of the Complainant but it would be stretching matters to claim that disruption to the Complainant's business activities was intended. It should also be noted that the Expert has no need to consider what her decision would be had the Complainant's submissions been based solely on the strength of the Complainant's Rights and the lack of any obvious legitimate reason for registration of the Domain Name. She has been able to make a finding of abuse on other grounds.
Finally the Complainant points to the damage that could be caused to it should the Domain Name be permitted to remain in the hands of Respondent as this will encourage others to engage in similar behaviour. The Expert has been able to make a finding based on other grounds. An argument based on deterrence could be made in almost every case brought under the Policy. It is a useful supplementary ground for argument but does not displace the need for a Complainant to show Abusive Registration as defined in the Policy.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
11 September 2006