WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Playboy Enterprises International Inc. v. SAND WebNames - For Sale

Case No. D2001-0094

 

1. The Parties

The Complainant is Playboy Enterprises International Inc., a United States corporation with its principal place of business at Chicago, Illinois, U.S.A. The Complainant is represented by Attorney Silvije Hraste, Zagreb, Croatia.

The Respondent is SAND WebNames - For Sale, of Vukovarska 43, 21 000 Split, Croatia. The Respondent is not represented and has filed no response.

 

2. The Domain Name and Registrar

The domain name at issue is <plaboy.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").

 

3. Procedural History

The Complaint submitted by Playboy Enterprises International Inc. was received on January 18, 2001 (electronic version) and January 22, 2001 (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). An Amended Complaint was filed on January 26, 2001.

On January 24, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with NSI.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current status of the domain name.

By email dated January 24, 2001, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the domain name registration <plaboy.com>.

- SAND WebNames - For Sale is shown as the "current registrant" of the domain name at the above address.

- The administrative technical and billing contact is HK Net Co. Ltd. of 15/F, Tower 2, Ever Gain Plaza, 88 Container Port Road, Kwa Chung, NT, Hong Kong.

- NSIís 5.0 Service Agreement is in effect.

- The domain name registration <plaboy.com> is currently in "Active" status.

- The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

- The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Amended Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on

January 20, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a three-person panel: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No Response was filed by the Respondent. A Notice of Respondent Default was sent to the Respondent on February 15, 2001.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Professor F.M. Abbott, Visiting Professor of Law at the University of California, Berkeley, U.S.A. and Mr Jonas Gulliksson, President of Ström & Gulliksson AB of Malmö, Sweden, to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.

All Panelists duly advised acceptance and forwarded to the WIPO Center a statement of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On March 22, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by April 4, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is a well-known company which publishes various editions of "Playboy" magazine in 16 different countries. It operates Playboy television networks and distributes home videos and DVD globally. The Complainant holds numerous trademark registrations for the name "Playboy", inter alia, in the United States and Croatia. Some of the marks go back to 1954. It also operates a network of Internet sites with various domain names including <playboy.com>. The various websites attract over 23 million visits per month.

The Respondentís website displays a transfer list to explicit pornography sites. Additional windows are generated when the user is redirected, each displaying further pornographic sites.

The Respondent did not reply to a "cease and desist" letter of September 18, 2000.

 

5. Partiesí Contentions

The Complainant submits:

(a) The domain name is identical or confusingly similar to its numerous marks, only one letter being omitted;

(b) The Respondent has no rights or legitimate interests in respect of the domain name, but is using it to capitalize on the Complainantís mark and goodwill;

(c) Registration and use in bad faith is shown by:

(i) The registration of the domain name by the Respondent, years after the Complainantís first use of the mark "Playboy";

(ii) The worldwide fame of the Complainantís mark which must have been known to the Respondent at the date of registration;

(iii) The Complainantís mark directs potential customers away from the Complainant;

(iv) Persons seeking the Complainantís website could easily be deflected into the Respondentís.

The Respondent made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no legitimate interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

The domain name <plaboy.com> is, in the judgment of the Panel, confusingly similar to the Complainantís mark "Playboy".

This is a typical case of "typo-squatting" where the infringing name is one letter less than or different from the Complainantís mark. These attempts have been disapproved of by various WIPO Panelists. E.g. D2000-1293 Telstra Corporation Ltd. v Warren Bolton Consulting Pty. Ltd. (There the mark was "big pond" and the disputed domain name <bigpons.com>).

Nor does the Panel consider that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant gave it none.

It is hard to see that the Respondentís registration and use of the domain name could possibly be bona fide, given the Complainantís pervasiveness in the world IT market.

The very similarity between the disputed name and the mark indicates a deliberate strategy by the Complainant to register something very similar but a bit different.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name <plaboy.com> in "bad faith" for the reasons set out in its summary of the Complainantís submissions and in particular:

(a) <plaboy.com> gives the appearance of a connection with services provided worldwide by the Complainant.

(b) The Respondent must have known of the Complainantís mark and reputation when he registered the name.

(c) The domain name seeks to take advantage of typographical errors made by Internet users who are seeking the Complainantís commercial website. It intentionally diverts those users to Respondentís website for purposes of commercial gain by creating confusion as to Complainantís affiliation with or sponsorship of Respondentís website.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name <plaboy.com> has been registered and is being used by the Respondent in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <plaboy.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Professor F M Abbott
Panelist

Mr Jonas Gulliksson
Panelist

Dated: April 3, 2001