WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises v. Movie Name Company
Case No. D2001-1201
1. The Parties
The Complainant is Playboy Enterprises International, Inc., a United States company incorporated under the laws of the State of Delaware, with its principal place of business at 680 North Lakeshore Drive, Chicago, Illinois (the "Complainant").
The respondent is Saeid Yomtobian dba Movie Name Company with a mailing address of Post Office Box 260604, Encino, California.The Respondent is represented by Mark A. Raimondo, Esq. of 22900 Ventura Boulevard, Suite 150, Woodland Hills, California (the "Respondent").
2. The Domain Name and Registrar
The disputed domain names, all registered with Network Solutions, Inc. of 505 Huntman Park Drive, Herndon, Virginia 20170 (the "Registrar") are as follows:
<playboycartoon.com> registered on March 16, 2001;
<playboycartoons.com> registered on March 16, 2001;
<playbochannel.com> registered on March 18, 2001;
<playbychannel.com> registered on March 18, 2001;
<playbouchannel.com> registered on March 18, 2001;
<playbou.com> registered on March 18, 2001;
<playbos.com> registered on March 18, 2001;
<playboe.com> registered on March 18, 2001;
<playbooy.com> registered on March 18, 2001;
<playbooys.com> registered on March 19, 2001;
<pelayboy.com> registered on March 16, 2001;
<playboydream.com> registered on March 16, 2001;
<callplayboy.com> registered on March 15, 2001;
<dreamplayboy.com> registered on March 15, 2001;
<channelplayboy.com> registered on March 15, 2001;
<plauboy.com> registered on March 16, 2001;
<plauboys.com> registered on March 16, 2001; and
<playpoys.com> registered on March 18, 2001
(collectively, the "Disputed Domain Names").
3. Procedural History
Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 3, 2001. The initial fixed fee was paid to the Center and the Center sent an Acknowledgment of Receipt of Complaint on October 4, 2001.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with Paragraph 4(a) of the Rules, and Paragraph 5 of the Supplemental Rules. The Administrative Panelists (the "Panel") are satisfied that the Complaint satisfied the Rules and Supplemental Rules.
The Center issued a Request for Verification to Network Solutions, Inc. on October 5, 2001, and received the Registrarís response on October 9, 2001. The Registrarís response stated that the Disputed Domain Names were of active status and registered to Movie Name Company, Encino, California, with administrative contact Yomtobian Enterprises, Inc. of the same address.
On October 24, 2001, the Center communicated a Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") and a copy of the Complaint (without attachments) to the Complainant via email and to the Respondent via email and via post (with enclosures). The Panel is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.
On November 12, 2001, the Center received a Response to Complaint (the "Response") from Respondent requesting that Complainantís request be denied. On November 15, 2001, the Center issued an Acknowledgement of Receipt of Response.
Complainant has elected to designate a Three Member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Rules. In accordance with Paragraph 7 of the Rules, the three members of the Panel have each signed a Statement of Acceptance and Declaration of Impartiality and Independence. The Center issued a Notification of Panelist Appointment regarding two members of the Panel on December 18, 2001, which was communicated to both Complainant and Respondent via email on that date. A Notification of Appointment of the Panel and Projected Decision Date, which included the appointment of the presiding panelist, was communicated by the Center to Complainant via post (without attachments) and via email (with attachments) and to Respondent via email (with attachments) on January 22, 2002. The date scheduled for the issuance of the Panelís decision was February 5, 2002. The scheduled date for issuance of the Panelís decision was extended to February 26, 2002, at the request of the Presiding Panelist.
4. Factual Background
(i) Complainant is owner of the federally-registered PLAYBOY, <http://www.playboy.com> and THE PLAYBOY CHANNEL trade and service marks (the "Marks"), and has used the PLAYBOY mark in connection with goods and services since as early as 1953. Complainant has used the Marks in connection with multimedia adult entertainment goods and services including printed magazines, apparel, videotapes, cable television programming and online services. Complainant has spent substantial time, effort and money in the promotion of the Marks with the result that the public has come to associate the Marks with the goods and services provided by Complainant.
(ii) Complainant has not authorized Respondent to use Complainantís Marks, and Respondent is not affiliated with Complainant in any way.
(iii) Complainant registered the domain name <playboy.com> on February 14, 1994, with Network Solutions as registrar.
(iv) On November 28, 2000, Complainant sent a cease and desist letter to Respondent via email to Respondent, requesting that respondent "deactivate and dismantle" the domain names <playboymovie.com>, <plauboys.com>, <playpoys.com> and <playbos.com>. The letter requested that Respondent either delete these domain names by submitting a deletion request to the Registrar, or transfer these domain names to Complainant.
(v) On November 28, 2000, Respondent replied to Complainant, stating that the only registration which it believed potentially infringed Complainantís mark was <playboymovies.com>. Respondent further stated that it did not see that Complainant owned a trademark in <playboys.com>."
(vi) On January 5, 2001, Complainant sent an email to Respondent acknowledging that <playboymovie.com> was no longer registered to Respondent, requesting proof that Respondent had requested the domain name be deleted and requesting that Respondent deactivate the <plauboys.com>, <playpoys.com>, and <playbos.com> domain name registrations.
(vii) On January 5, 2001, Respondent replied to Complainantís email, stating that the contested domain names ended in "s" and requesting proof of the connection between these three domain names and <playboy.com>.
(viii) On January 23, 2001, Complainant sent another email to Respondent requesting proof that Respondent had requested <playboymovie.com> be deleted, and recommending that Respondent seek trademark counsel.
(ix) On January 25, 2001, Respondent sent written acknowledgement via email that it had deleted the domain name <playboymovie.com> and did not own it.
(x) On February 14, 2001, Complainant again sent a cease and desist letter via email to Respondent regarding the <plauboys.com>, <playpoys.com> and <playbos.com> domain names.
(xi) On February 14, 2001, Respondent sent email stating that counsel for Respondent would be in contact with Complainant.
(xii) On February 15, 2001, Respondent sent email to Complainant requesting Complainantís mailing address.
(xiii) On February 23, 2001, Complainant forwarded its mailing address to Respondent via email.
(xiv) In a letter dated March 6, 2001, sent to Complainant, counsel for Respondent stated that Respondent denied infringement and would not cease and desist the use of the three domain names, claiming that: (i) the domain names were registered in 1997 and had been used by Respondent in his business since; (ii) Respondent was not in competition with Complainantís adult entertainment business as the names were used for general goods and services, not in the adult entertainment business; and (iii) that the doctrine of laches applied to bar this claim as Complainant had waited too long to make the claim.
(xv) On March 15, 2001, Respondent registered the domain names <callplayboy.com>, <dreamplayboy.com>, and <channelplayboy.com> with Network Solutions as registrar.
(xvi) On March 16, 2001, Respondent registered the domain names <playboycartoon.com>, <playboycartoons.com>, <pelayboy.com>, <playboydream.com>, <plauboy.com> and<plauboys.com> with Network Solutions as registrar.
(xvii) On March 18, 2001, Respondent registered the domain names <playbochannel.com>, <playbychannel.com>, <playbouchannel.com>, <playbou. com>, <playbos.com>, <playboe.com>, <playbooy.com>, and <playpoys.com> with Network Solutions as registrar.
(xviii) On March 19, 2001, Respondent registered the domain name <playbooys.com> with Network Solutions as registrar.
(xix) On April 10, 2001, Complainant sent email to Respondent which stated: "It appears that you have the facts wrong. According to our records, the domain names <plauboys.com>, <playpoys.com> and <playbos.com> were registered by your client in April of 2000. Your client had also registered the domain name, <playboymovie.com> in June of 2000. We first contacted your client regarding these particular domain names in November of 2000. Mr. Yomtobian has complied with our request to delete the <playboymovie.com> domain name, but not the other names aforementioned." The Panel notes that the dates set forth in Complainantís email do not correspond with the Network Solutionsí information provided above. This discrepancy, however, does not factor into the outcome of this decision.
(xx) On May 4, 2001, Complainant sent another cease and desist letter to Respondent, via email and facsimile, extending the scope of the request to cease and desist to include the <callplayboy.com>; <dreamplayboy.com>; <playboycartoon.com>; <playboycartoons.com>; <playboydream.com>; <channelplayboy.com>; <playbychannel.com>; <playbochannel.com>; <playbooy.com>; <playbooys.com>; and <playboe.com> domain name registrations.
5. Partiesí Contentions
A. Complainant asserts:
(i) The Disputed Domain Names are identical or confusingly similar to Complainantís world-famous PLAYBOY trademark and Complainantís THE PLAYBOY CHANNEL service mark.
(a) The domain names <playboycartoon.com>, <playboycartoons.com>, <callplayboy.com>, <playboydream.com>, <dreamplayboy.com> and <channelplayboy.com> all contain the world famous PLAYBOY mark. The addition of a generic word or modifier to a famous trademark or domain name does not eliminate confusion. The addition of the words "cartoon," "cartoons," and "channel" are even more likely to cause consumer confusion as the words are identical to services offered by Complainant under Complainantís Marks.
(b) The domain names <playbochannel.com>, <playbychannel.com>, <playbouchannel.com>, <playbou.com>, <playbooy.com>, <playbooys.com>, <pelayboy.com>, <plauboy.com>, <plauboys.com>, <playpoys>, <playboe.com> and <playbos> are all misspellings of Complaintís Marks.
(ii) Respondent has no legitimate interest in the Disputed Domain Names. There is no evidence that Respondent or Respondentís Company are known by any of these names. Respondent does not own trademark registrations for any of the Disputed Domain Names and could not obtain such registrations because the PLAYBOY marks are owned and registered to Complainant. Respondent is not connected or affiliated with Complainant and has not received a license or any form of consent from Complainant to use its marks in any manner.
(iii) Respondent has registered and used the Disputed Domain Names in bad faith.
(a) Respondent has registered thousands of domain names, many of which are not actual words, but misspellings of trademarks. Respondent has not created websites which could constitute a legitimate use of the misspelled marks and instead uses the domains to redirect to and link to its other commercial sites.
(b) Respondent has stated that it is aware of Complainantís rights in the PLAYBOY.COM mark and that Respondentís argument that the use of PLAYBOYS with an "s" is not infringement is wrong as the addition of an "s" to a famous mark does not allow unauthorized third parties to use the mark for their own goods and services.
(c) Respondentís history of cybersquatting, its registration of the domain names with knowledge of Complainantís Marks, and prior decisions against Respondent involving substantially similar facts, i.e., AltaVista Company v. Saeid Yomtobian WIPO Case No. D2000-0937, Fox Group Legal v. Saeid Yomtobian NAF Case No. FA0010000095839, Lauren Thibodeau v. Saeid Yomtobian NAF Case No. FA94868, and Bank of America Corporation v. Saeid Yomtobian NAF Case No. FA0005000094889, all indicate bad faith.
Complainant requested as its remedy that all of the Disputed Domain Names be cancelled.
B. Respondent asserts:
(i) The request to transfer the domain names should be denied because Complainant has not met its burden of proof as it does not have an exclusive monopoly over the words "play" or "boy" and while Complainant may own trademarks that begin with the words "play" and "boy," Complainant does not own any and all words, phrases or marks that begin with these words. A mere similarity of letters is not enough evidence to establish the element of being confusingly similar, and the letter coincidence is too low an evidentiary threshold to disallow Respondent from conducting his legitimate service with the domain names. The Disputed Domain Names and their corresponding websites are not identical or confusingly similar to any trademarks in which Complainant has rights. The connection between the disputed domain names and Complainantís marks is mere coincidence. Complainant is really asking the Panel to grant it a monopoly over the letters P-L-A-Y-B-O and U.
(ii) Complainant has not met the burden of demonstrating bad faith and Respondent has not acted with bad faith. The disputed domain names do not seek to interfere with or tarnish the goodwill of Complainant. Respondent has not attempted to intentionally attract unsuspecting Internet users to its website for commercial gain by creating a likelihood of confusion with plaintiffís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service. Respondent has not registered the Disputed Domain Names in order to prevent Complainant from reflecting its trade or service marks in the corresponding domain names and receiving or collecting upon their good-name or goodwill. Respondent has never attempted to offer, and Complainant does not allege that Respondent has offered, the Disputed Domain Names for sale for a price above Respondentís actual cost.
(iii) Respondent has a legitimate purpose for the use of its websites which is not connected to or suggestive of any service or product of the Complainant. Complainant has failed to show an intent to defraud, mislead or take advantage of Complainantís good-name or goodwill and fairness dictates that these domain names should remain in the possession of Respondent. Respondent has several websites and many projects currently underway, and the fact that Respondent has taken the time and expended the money to provide these websites cannot be viewed as bad faith.
Respondent requested that the Panel deny the remedy requested by Complainant.
6. Discussion and Findings
(i) The Disputed Domain Names are identical or confusingly similar to the trade and service marks in which Complainant has rights
There are two categories into which the Disputed Domain Names fall (one falls into both):
(a) Domain names which incorporate the PLAYBOY trademark in an unaltered form and combine it with another word or letter. The following domain names fall into this category: <playboycartoon.com>, <playboycartoons.com>, <callplayboy.com>, <playboydream.com>, <dreamplayboy.com> and <channelplayboy.com>
(b) Domain names which appear to have been intended to be typographical permutations, probable misspellings, or inversions of the PLAYBOY trademark and THE PLAYBOY CHANNEL service mark. The following domain names fall into this category: <playbochannel.com>, <playbychannel.com>, <playbouchannel.com>, <playbou.com>, <playbooy.com>, <playbooys.com>, <pelayboy.com>, <plauboy.com>, < plauboys.com>, <playpoys.com>, <playboe.com>, <playbos.com> and <channelplayboy.com>.
Respondent claims that any similarity of the Disputed Domain Names to the Marks is mere coincidence. Respondent contends that Complainant does not have a monopoly on the terms "play" and "boy" and all typographical errors which may result from combinations of the two. This is undoubtedly true. However, the Disputed Domain Names actually contain, or are likely misspellings of, Complainantís PLAYBOY and THE PLAYBOY CHANNEL marks -- they are not simply random combinations of the words PLAY and BOY, or every possible misspelling.
Complainant sells its adult entertainment goods and services under its Marks, and with respect to the criteria established by 15 USC 1125(c)(1) the PLAYBOY mark appears to be distinctive and famous. It is well-established that the mere use of a famous mark, even with the addition of a letter or a generic word, for similar goods and/or services dilutes the goodwill associated with the mark (see, for example, Cable News Network L.P., L.L.L.P v. CNNEWS.COM 61 U.S.P.Q.2d 1331, stating that the addition of the generic word "news" does nothing to distinguish the domain name from the CNN mark). Given that all of the Disputed Domain Names resolve to a website that offers multimedia adult entertainment services, we find that the inclusion of the PLAYBOY mark with other words such as "dream" and "cartoon" dilutes the PLAYBOY mark and we confusingly similar.
It is also well-established that domain names which are misspellings of a trade or service mark may qualify as confusingly similar (see, for example, Geobra Brandstatter GmbH & Co KG v. Only Kids Inc. WIPO Case No. D2001-0841, noting that there are numerous prior Panel decisions where minor differences of spelling and punctuation have nonetheless been held to make a domain name confusingly similar to a trade or service mark, see also AltaVista Company v. Saeid Yomtobian WIPO Case No. D2000-0937, stating: "the panel finds that the close misspellings at issue here, <altabista.com> and <altaista.com>, are confusingly similar to the AltaVista mark"). The Panel notes that this decision involves the same Respondent and substantially similar facts. Here, the Disputed Domain Names are clearly misspelled versions of the Marks and we find them to be confusingly similar to those Marks. To the extent that Respondent implies that nobody could arrive at its website due to a typographical error, it should be noted that even Respondent could not avoid such error in its own Response. We note that in the heading of the Response, the domain name <playboos.com> was transposed to <playbooys.com> and <playboydream> was transposed to <playbodydream.com>. We believe that such typographical errors speak for themselves and form the very heart of this dispute.
The Panel finds for the Complainant on the first element, that the Disputed Domain Names are identical or confusingly similar to Complainantís Marks.
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate that a Respondent has rights or legitimate interests in the use of a domain name: (a) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (b) the fact that the Respondent has commonly been known by the domain name; and (c) legitimate non-commercial or fair use of the domain name.
(a) Respondent alleges that it has invested money and effort in developing the websites located at the Disputed Domain Names and that these websites are evidence of legitimate use. We beg to differ. All of the websites located at the Disputed Domain Names resolve to the same search engine that provides adult entertainment services, amongst other information and services. While a search engine may in and of itself be a legitimate use, the "Popular Searches" links for "Adult Entertainment" and "Sex" on this search engine do not resolve to search results but to the website <sexhorse.com> for which Respondentís email address is listed as the administrative contact. Persons who erroneously end up at Respondentís website, instead of Complainantís, are clearly likely to select the "Adult Entertainment" or "Sex" searches and be redirected to <sexhorse.com> with which Respondent is affiliated. It is therefore clear that the Disputed Domain Names are rerouting traffic from Complainantís adult entertainment sites toward its own such sites, which are in competition with Complainant. The act of rerouting traffic to a competitive site using domain names that are confusingly similar to Complainantís Marks, without Complainantís authorization, does not constitute a bona fide offering of goods or services.
(b) Respondent is not, and does not allege that it is, or ever has been, known by any of the titles contained in the Disputed Domain Names.
(c) Respondent is making a visibly commercial use of the website to which the Disputed Domain Names resolve. Most of the websites "found" by Respondentís pay-for-placement search engine are commercial in nature. Many of the results displayed by the search engine located at Respondentís websites clearly display the cost to the advertiser of the placement. Furthermore, the "Adult Entertainment" and "Sex" links on the search engine resolve to <sexhorse.com>, which is a commercial site. These acts do not constitute a legitimate non-commercial or fair use of the Disputed Domain Names.
The Panel finds for the Complainant on the second element, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
(iii) The Disputed Domain Name has been registered and is being used in bad faith
Respondent claims that it did not register, and does not use, the Disputed Domain Names in bad faith. It is true that Respondent does not appear to have bad faith under Paragraphs 4(b)(i) or (ii) of the Policy as alleged by Respondent. However, Paragraph 4(b)(iv) of the Policy states that it is bad faith if "you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location." Here, if only one domain name were at issue, which incorporated Complainantís Marks or could be a typographical error thereof, there might be some plausibility to Respondentís contention that any similarity between Complainantís marks and the Disputed Domain Names was "mere coincidence." However, there are some 18 domain names at issue here, all of which clearly include or misspell Complainantís Marks. This is not "mere coincidence" and the sheer number of similar registrations here, alone, is sufficient evidence of bad faith under Policy Paragraph 4(b)(iv) as Respondent is clearly using these numerous registrations to re-route traffic to its commercial websites. Furthermore, the fact that the "Adult Entertainment" and "Sex" links at these sites redirect the user to a commercial adult entertainment site with which Respondent is affiliated, makes it difficult for us to imagine how Respondent can claim that it is not attracting users for commercial gain.
The Panel therefore finds that the Disputed Domain Names were registered and are being used in bad faith.
In light of the foregoing, the Panel hereby determines that the Disputed Domain Names are identical or confusingly similar to Complainantís well-known trade and service marks, that Respondent lacks rights to or a legitimate interest in the Disputed Domain Names, and that the Respondent registered the Disputed Domain Names in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel hereby orders that the Disputed Domain Names <playboycartoon.com>, <playboycartoons.com>, <playbochannel.com>, <playbychannel.com>, <playbouchannel.com>, <playbou.com>, <playbos.com>, <playboe.com>, <playbooy.com>, <playbooys.com>, <pelayboy.com>, <playboydream.com>, <callplayboy.com>, <dreamplayboy.com>, <channelplayboy.com>, <plauboy.com>, <plauboys.com>, and <playpoys.com> be cancelled by the Registrar.
Timothy D. Casey
David H. Bernstein
M. Scott Donahey
Dated: February 26, 2002