Complainant and
Appellant: Playboy Enterprises International Inc
Country: US
Respondent: Mr Trevor Hodges (previously referred to as Trevor Hughes)
Country: UK
playboyracing.co.uk (the "Domain Name")
20/10/2006 Complaint hardcopies received in full
24/10/2006 Dispute entered into system
24/10/2006 Complaint validated
03/11/2006 Electronic Response entered into system
06/11/2006 Response hardcopies received
06/11/2006 Response forwarded to Complainant
12/11/2006 Reply hardcopies received
13/11/2006 Electronic Reply entered into system
11/12/2006 Fees for Expert Decision received from Complainant
12/12/2006 Mr Adam Taylor selected as expert
12/01/2007 Complainant advised how to appeal
15/01/2007 Notice of intent to appeal and deposit received from Complainant
31/01/2007 Full appeal and fee received
01/02/2007 Appeal confirmation sent to Complainant and full appeal sent to Respondent
07/02/2007 Appeal response received from Respondent and copy sent to Complainant
14/02/2007 Ms Anna Carboni and Mr Steve Ormand selected for the appeal panel
22/02/2007 Mr Philip Roberts selected as chairman of the appeal panel3.1 Each of Messrs. Philip Roberts, Steve Ormand and Ms Anna Carboni (the undersigned, the "Panel") have individually confirmed to the Nominet Dispute Resolution Service that:
"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of such a nature as to call in to question my independence in the eyes of one or both of the parties."3.2 The Panel for this Appeal was appointed as from 26th February 2007 to respond on or before 11th April 2007. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service - Version 2, September 2004 (the "Procedure") and the Dispute Resolution Service Policy - Version 2, September 2004 (the "Policy"). Both of these documents are available for inspection on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).
4.1 The Panel has considered the nature of this appeal process and the manner in which it should be conducted. Paragraph 10a of the Policy provides that: "the appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters".
4.2 We understand this to mean that we must consider the facts from scratch and apply the Policy and Procedure to these in order to reach our own conclusion (i.e. a re-determination on the merits), which may differ from that of the original Expert even if his approach was a reasonable one. We therefore adopt the same approach that we would have done had we been considering the case at first instance, but with the added benefit of the arguments presented by both Parties in the appeal notice and the appeal notice response.
4.3 Accordingly, the Panel does not propose to undertake a detailed analysis of the decision at first instance and will only refer to it where the Panel feels it would be helpful to explain any difference in approach.
5.1 The Parties will be referred to in this decision, for simplicity's sake, by their original designations of Complainant and Respondent. The Respondent's name has been corrected to 'Trevor Hodges' in Section 1 of this decision, since the name 'Trevor Hughes' resulted from a mistake that was made by the Complainant at the outset, as recognised by the Expert. However, the name in the heading remains as 'Trevor Hughes' to maintain consistency for cross referencing purposes with the decision at first instance.
5.2 In its Appeal Notice the Complainant has introduced an additional fact that was not before the Expert at first instance, as follows:
"The Complainant notes that since the Complaint was filed, the Respondent's website now contains banner advertisements for William Hill and Coral."5.3 The Respondent made no reply to this statement.
5.4 Paragraph 18(b) of the Procedure provides that an appeal notice should not contain new evidence, and paragraph 18(h) states that the appeal panel should not normally take any new evidence into account unless they believe that it is in the interests of justice to do so. As a further example of use by the Respondent of the Domain Name, this evidence is directly relevant to the issue to be decided. Since it could not have been presented to the original Expert, and since the Respondent had the opportunity to respond to it in the appeal notice response (though he chose not to), we do consider that it is in the interests of justice to take this additional evidence into account. However, we add that our decision would not have been different without it.
6.1 The Domain Name was registered by the Respondent on 24 November 2005.
6.2 The Panel accepts the following as facts:
6.3 That the Complainant and its associated companies have built up a reputation in the name PLAYBOY as a result of over 50 years' continuous use of the mark. The first issue of Playboy magazine was launched in the US in December 1953 and has been published continuously ever since. Although the "Playboy brand" is significantly bigger in the US than in the UK, it still enjoys a considerable reputation in the UK.
6.4 That the Complainant (together with its licensees, subsidiaries and affiliated companies, and their predecessors in interest) owns a large portfolio of trade mark registrations featuring the word PLAYBOY for a wide range of goods and services, including over 100 UK and Community trade mark registrations / applications. None of them explicitly cover horse racing activities, but many of them cover general aspects of sporting and gaming. There are no registrations for PLAYBOY RACING per se.
6.5 That the Complainant had diversified beyond magazine publishing into other fields such as television, video, DVD and internet sites. The Complainant has some involvement in a motor racing team in the US which uses the marks PLAYBOY and PLAYBOY RACING and also licenses the use of the PLAYBOY brand to Ladbrokes, which makes at least some use of the mark in relation to the provision of online betting services (without any specific emphasis on the UK).
6.6 That the word 'playboy' is not an invented word in the sense that it is an English word with a potentially descriptive meaning.
6.7 That prior to the registration of the Domain Name the Respondent had made some use of the word PLAYBOY on a modest scale in the UK in relation to two partnerships ('Playboy Partnership' & 'Playboy Partnership II') which had owned and run racehorses in the UK with names such as Lowestoft Playboy, Eastern Playboy and Parisian Playboy.
6.8 That the Respondent has some involvement in the UK registered company PLAYBOY RACING LIMITED (Company No. 05639305) which was registered five days after the Domain Name, on 29 November 2005.
6.9 That the Respondent's website has never made any use of the 'Playboy bunny' logo or glamorous pictures of women; but that, during at least some of the period since the Complaint was filed, the Respondent's website has contained banner advertisements for the bookmakers William Hill and Coral.
The Complaint
7.1 The basis of the original Complaint, in which the Complainant requested that the Domain Name be transferred to it, can be summarised as follows:7.2 The Complainant (together with its licensees, subsidiaries and affiliated companies, and their predecessors in interest) own a large portfolio of trade mark registrations featuring the word PLAYBOY for a wide range of goods and services, including over 100 UK and Community trade mark registrations / applications.
7.3 One or more of the UK registrations for PLAYBOY marks specifies "sporting activities".
7.4 The Complainant and its associated companies have built up a reputation in the name PLAYBOY as a result of over 50 years' continuous use of the mark. The first issue of Playboy magazine was launched in the US in December 1953 and has been published continuously ever since.
7.5 From its origins in magazine publishing, the Complainant has diversified and is now a more general international multi-media entertainment company that publishes magazines; operates Playboy television networks and distributes programming via home video and DVD globally, licences the PLAYBOY trade marks internationally for a range of consumer products and services and operates playboy.com, a leading men's lifestyle and entertainment web site.
7.6 In addition, the Complainant operates (in partnership) a high profile motor racing team under the brand PLAYBOY RACING. This team makes prominent use of both the PLAYBOY RACING and the PLAYBOY brand on the internet, in advertising, and on the cars (as demonstrated in Annexes to the Complaint).
7.7 The Complainant also licenses the use of the PLAYBOY brand to Ladbrokes, which uses it to provide prominently-branded online betting services in respect of horse racing.
7.8 Consequently the PLAYBOY brand and the composite PLAYBOY RACING mark have become associated with the Complainant's goods and services.
7.9 Anyone trading under the title PLAYBOY RACING in relation to racing-orientated sports activities (both horse racing and motor racing), would be assumed to have a connection with the Complainant. The addition of the word RACING to the PLAYBOY mark will be understood by many viewers to indicate the activity being conducted under the PLAYBOY brand, rather than serving to distinguish it in some way from this brand (as is already the case with e.g. PLAYBOY TV).
7.10 The Complainant is therefore the beneficiary of 'Rights' within the meaning of the DRS Policy in both: (i) a name or mark which is identical to the Domain Name, and (ii) a name or mark which is similar to the Domain Name.
7.11 The Respondent's use of the Domain Name, to operate a "Racing Club" under the brand "Playboy Racing", is misleading and unauthorised by the Complainant.
7.12 The Respondent's response to a cease and desist-type letter was to threaten to purchase additional horses and call them PLAYBOY and PLAYMATE (marks which are used extensively by and are associated with Complainant).
7.13 The Respondent's use of the Domain Name will confuse people or businesses into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant.
7.14 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 making the registration and made the registration in a manner which took unfair advantage of and was unfairly detrimental to the Complainant's Rights.
The Response
7.15 The Electronic Response was rather terse, but was supplemented by a slightly fuller letter dated 30 October 2006. The Respondent's case in essence is as follows:7.16 The word 'playboy' is an ordinary English word in common use since at least the early 1900s.
7.17 The Respondent is entitled to use the Domain Name as he has incorporated a UK company under the name of Playboy Racing Limited.
7.18 In the past the Respondent has traded as 'Playboy Partnership' and 'Playboy Partnership II' (registered at Weatherbys and for V.A.T. purposes) and has owned and run race horses in the UK with names like Lowestoft Playboy, Eastern Playboy and Parisian Playboy.
7.19 The Respondent uses a logo which is a horse's head, which is quite different from the Complainant's bunny logo. There is no mention of girls or bunnies on the Respondent's website.
7.20 The Respondent only made the PLAYMATE threat in the heat of the moment and it was never intended to be taken seriously.
7.21 Prior to the registration of the Domain Name the Respondent searched the UK Trade Marks Registry website to check whether 'playboyracing' was registered for 'Horse Racing' or 'horse racing clubs' and drew a blank.
7.22 The Complainant's claims to operate under the mark "playboyracing" need to be treated with caution, as this is only in the USA and is motor car racing not horse racing. The cars in question are only marked PLAYBOY with the bunny logo, and not PLAYBOY RACING.
7.23 On close analysis the Complainant and Respondent are involved in quite disparate fields of activity.
The Reply
7.24 In its Reply the Complainant briefly reviewed the points raised by the Respondent and essentially commented "so what?" in relation to each - the Respondent's trading history, Company registration, the dictionary entries and the different logos did not render the Domain Name any less confusing with the Complainant's PLAYBOY and PLAYBOY RACING trade marks.
The Appeal Notice
7.25 In its Appeal Notice the Complainant made the following submissions in summary:7.26 Its very substantial reputation in the PLAYBOY name was undisputed.
7.27 Due to vigilant policing on the part of the Complainant, it enjoyed a legal and factual monopoly in the designation PLAYBOY, which was a trade mark with a highly distinctive character. The use of the Domain Name by the Respondent has the effect of blurring or diluting the distinctive character of the PLAYBOY name.
7.28 The Respondent's comments about the possible use of PLAYBOY as descriptor were beside the point, as the Domain Name used the term PLAYBOY as an indication of origin. The fact that the Respondent had previously traded or incorporated a company under the name "Playboy Racing" is no justification for registration of the Domain Name.
7.29 The Expert had seemingly required the Complainant to prove malice or intention to cause confusion on the part of the Respondent, whereas the Policy did not require this. In any even such intent could be inferred inter alia from the "Playmate" threats.
7.30 The Expert was wrong to draw a distinction between Rights in the name PLAYBOY and Rights in the name PLAYBOY RACING, given that the term "racing" is purely descriptive when used in relation to racing activities and the PLAYBOY element is clearly the distinctive and dominant component.
7.31 The Complainant noted that since the Complaint was filed, the Respondent's website now contains banner advertisements for William Hill and Coral.
7.32 The logos were a red herring as they had no bearing on the conflict between the Complainant's rights in the marks PLAYBOY / PLAYBOY RACING and the Domain Name.
7.33 Even if internet users realised upon reaching the Respondent's site that it was unrelated to the Complainant, the Domain Name was still likely to draw people to the website in the first place on the strength of the Complainant's reputation; thereby unjustly benefiting the Respondent and taking unfair advantage of the Complainant's Rights.
The Appeal Response
7.34 In its Appeal Response the Respondent reiterated that he had adopted the trading name 'Playboy Racing' honestly and innocently, as a natural extension of his previous Playboy Partnership and Playboy Partnership II ventures, and his Playboy Racing Limited company registration, which in turn had their origins in owning and running a racehorse by the name of 'Parisian Playboy'. He contended that there have been many racehorses with the name 'Playboy' and not one of them was owned or trained by the Complainant.7.35 He emphasised that the Complainant had little or no connection with horse racing, or any form of racing in the UK; either as a result of trade mark registration or actual use.
7.36 The Respondent had never sought to use or capitalise on the Playboy bunny logo or 'glamour' aspect of the PLAYBOY name and anyone seeing the website published under the Domain Name would be clear that there is absolutely no association with the Complainant.
8.1 Paragraph 2(a) of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
(i) it 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 (as defined in paragraph 1 of the Policy).
Complainant's Rights
8.2 Under paragraph 1 of the Policy:
"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".8.3 Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.
8.4 The Complainant has established the existence of registered trade mark rights in the UK and across the European Community in respect of the name PLAYBOY, the oldest of which is a UK trade mark registration dating back to 1958. Through its extensive use of the name PLAYBOY for many years, firstly in relation to its well-known "Playboy" magazine, which is published in 22 countries, and subsequently across a more diverse international business covering television networks, home videos and DVDs and internet entertainment services, the Complainant has built up a substantial reputation and goodwill in relation to the business carried on under the name, such that it has acquired passing off rights in the UK and unfair competition rights in other European jurisdictions.
8.5 As the Complainant points out, the word "playboy" appears in English dictionaries and has a recognised descriptive meaning. However, while the word may be said to allude to the tendencies of some of the men depicted in the Complainant's magazines and television and internet services, it cannot be said to be "wholly descriptive" of the Complainant's business. On the contrary, through its extensive use by the Complainant, the word PLAYBOY has acquired a distinctiveness such that members of the public who see or hear the term being used other than in an obviously descriptive way would be likely to associate its use with the Complainant.
8.6 The Complainant has not registered the composite term PLAYBOY RACING as a trade mark. Although there is evidence that this term has been used on the internet to promote a motor racing team operated by the Complainant (in partnership), both in text form, such as "the new Playboy Racing team", and in a logo comprising the words "PLAYBOY Racing" together with the Complainant's bunny head logo, the Panel does not have enough evidence to support a finding that the Complainant has Rights in the term PLAYBOY RACING as such. However, both this use and the Complainant's licensing of the PLAYBOY name to Ladbrokes for the provision of on-line betting services in respect of horse racing are examples of the type of use that members of the public would recognise as being connected with the Complainant simply by virtue of the use of the PLAYBOY name. Members of the public who see the term PLAYBOY RACING, whether in connection with cars, horses or other racing activities, would be likely to take the word RACING to be a description of the activity concerned and to understand the word PLAYBOY to refer to the Complainant.
8.7 Accordingly, the Panel finds that the Complainant has Rights in the name and mark PLAYBOY and that these are strong Rights.
8.8 The Domain Name comprises the word PLAYBOY combined with the word RACING, and no other matter, apart from the .co.uk suffix, which is to be ignored for the purpose of the comparison under the Policy. Given the descriptive nature of the word RACING, the word PLAYBOY is the distinctive and dominant component of the Domain Name. Accordingly the Panel finds that the Domain Name is similar to the name and mark PLAYBOY. Therefore, paragraph 2(a)(i) of the Policy is satisfied.
Abusive Registration
8.9 Paragraph 1 of the Policy defines an "Abusive Registration" as:
"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
8.10 The Panel must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
8.11 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. The only factor in the list which is specifically referred to by the Complainant is as follows:
"3(a)(ii) Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant".8.12 On the other side of the coin, paragraph 4 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. Those that are brought into play by the Respondent's arguments are as follows:
"4(a)(i) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
(A) used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
(B) been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
(C) made legitimate non-commercial or fair use of the Domain Name; or
8.13 It will be plain from the discussion above in relation to the Complainant's Rights that the Panel has been persuaded that the use by a person other than the Complainant of the term PLAYBOY RACING in connection with some sort of racing activities (whether horse racing, motor racing or race gambling activities) would be likely to cause members of the public to assume that the Complainant had a connection with those activities. Similarly, many internet users who come across the web address, www.playboyracing.co.uk, would be likely to assume that this would lead them to a website operated by or with the authority of the Complainant. The fact that, when s/he gets to the Respondent's website, it may quickly become clear that it is not in fact connected with the Complainant, does not detract from that initial confusion.(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it".
8.14 Further, the use of the Domain Name to promote a business that is not connected with the Complainant is likely to have the effect of blurring or diluting the distinctive character of the PLAYBOY name. Given the extensive investment by the Complainant in developing the distinctive power of its PLAYBOY brand, such blurring and dilution would devalue the brand and would thus be detrimental to the Complainant's Rights. It is also likely that, by virtue of the use of the PLAYBOY name in the Domain Name, the Respondent has received and will receive more visitors to his website than would be the case if he had chosen a name that was not associated with an existing well-known brand. The use of the Domain Name thereby takes advantage of the Complainant's Rights in the name.
8.15 The next question is whether such detriment and advantage are "unfair". At the heart of the Respondent's arguments against such a conclusion is his contention that his registration and use of the Domain Name was simply a natural extension of his use of the term PLAYBOY RACING in connection with his horse racing club business, originating with his part-ownership of a racehorse called "Parisian Playboy" in 2004 and subsequent part ownership or running of horses called "Lowestoft Playboy" and "Eastern Playboy"; progressing through the use of a business name "Playboy Partnership" in 2004/5; through to the incorporation of the company "Playboy Racing Limited" in November 2005, under which he now operates his horse racing/ ownership club. The Respondent adds that he had absolutely no intention of referring to the Complainant, when registering and using the Domain Name.
8.16 The problem with this explanation is that it assumes that the adoption of the name PLAYBOY RACING to identify the Respondent's business was in itself a legitimate use of the PLAYBOY name. In the Panel's view, whilst the purchase of a share in a racehorse called "Parisian Playboy" and the offer of shares in similarly named horses may perhaps legitimately be characterised as descriptive uses of the word PLAYBOY, the adoption of the name PLAYBOY to identify a business partnership in the horse racing world and the use of the company name Playboy Racing Limited are in a different category, potentially capable of supporting a claim for trade mark infringement and/or passing off by the Complainant. The Complainant's trading and company names therefore cannot be said to be "legitimately connected with" the name PLAYBOY RACING; nor can his use be said to be "legitimate", "non-commercial" or "fair". Therefore none of the arguments raised under paragraph 4(a) of the Policy apply.
8.17 While the Panel is prepared to accept that the Respondent did not intend to trade off the Complainant's goodwill in any way, his intention is not a determinative issue. In the Panel's view, the Expert placed too much emphasis on the Respondent's lack of intention to target the Complainant in the first instance decision. Although evidence of what can conveniently be referred to as "abusive intent" can be helpful to demonstrate that a Domain Name is an Abusive Registration, it is not a necessary ingredient. The test is more objective than that, and can be summarised as follows: in the light of the strength of the Complainant's Rights and the similarity of the Domain Name to the name in respect of which those Rights exist, has the registration and/or use of the Domain Name by the Respondent taken unfair advantage of or been unfairly detrimental to those Rights? Since the burden of proof is "on the balance of probabilities", it is not necessary to find actual unfair advantage or unfair detriment; the likelihood that either or both of these ingredients will arise is sufficient.
8.18 The Panel does not regard the Respondent's early responses to the Complainant's letters of complaint, to the effect that he would buy more horses and call them "Playboy", "Playgirl" and "Playmate" and that he would arrange for negative publicity, as indicative of "abusive intent", in the light of his subsequent retraction and apology and in all the circumstances of the case. However, as indicated above, it is not necessary for us to find such intent.
8.19 The actual use that the Respondent has made of the Domain Name is of more interest. As at the date of the original Complaint, it was being used to promote a business selling shares in racehorses and involving participation in race-related activities. The Panel has already found such use to take unfair advantage of and to be unfairly detrimental to the Complainant's Rights. The Respondent has subsequently added to these activities the advertising of betting companies, with links to their websites. This use is in direct competition to the use for which the PLAYBOY name is licensed by the Complainant to Ladbrokes and, as such, takes further advantage of the Complainant's Rights in the PLAYBOY name and trade mark, which the Respondent has not even sought to justify by reference to his activities in relation to horses with "Playboy" in their names. This also adds to the risk of blurring and dilution of the mark, and consequential unfair detriment to the Complainant.
8.20 The Panel therefore concludes that paragraph 2(a)(ii) of the Policy is satisfied.
9.1 Taking all of the circumstances of the case into account, the Panel finds that the Complainant has Rights in respect of the name and mark PLAYBOY which is similar to the Domain Name, and that the Domain Name in the hands of the Respondent is an Abusive Registration.
9.2 Accordingly, the Appeal succeeds and the Panel reverses the decision of the Expert at first instance. The Panel directs that the Domain Name be transferred to the Complainant.
Anna Carboni Stephen Ormand