WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International, Inc., v. Andre McGann
Case No. DBIZ2002-00163
1. The Parties
The Complainant is Playboy Enterprises International, Inc., ("PEII"), 680 North Lake Shore Drive, Chicago, Illinois 60611, United States of America. Complainant is represented in this administrative proceeding by David J. Stewart of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, Georgia 30309, United States of America.
The Respondent is the Registrant, Andre McGann, who acknowledged his contact address to be P.O. Box 94, Montego Bay, Jamaica. Complainant believes that Respondent also has the address 210 Amelia Street, Orangeville, Ontario L9W 4T1, Canada.
2. The Domain Name and Registrar
The Domain Name subject to complaint is <centerfold.biz>. The registrar is DomainDiscover, P.O. Box 502010, San Diego, California 92150-2010, United States of America.
3. Procedural History
3.1.The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") by email on April 27, 2002, and in hard copy on April 30, 2002. The Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("the STOP"), the Rules for Start-up Trademark Opposition Policy ("the STOP Rules"), both as adopted by NeuLevel, Inc., and approved by ICANN; and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy ("the Supplemental Rules"). There are no further IP Claims in respect of the disputed Domain Name.
3.2.Complainant states that on the date of execution of the Complaint, a copy was sent to the Respondent in accordance with the STOP Rules and a copy was sent to the concerned Registrar by email and overnight express mail.
3.3.On May 23, 2002, the Registrar, DomainDiscover, confirmed the Registrant to be Andre McGann, P.O. Box 94, Montego Bay, Jamaica.
3.4.On June 12, 2002, Formal Notification of STOP Complaint and Commencement of Administrative Proceeding was sent by Center to the Respondent and Complainant.
3.5.On July 5, 2002, Notification of Respondent Default was sent by Center to Respondent and Complainant.
3.6.On July 5, 2002, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent to Complainant, Respondent and the Panel. An electronic copy of the Case File was sent by email to the Panel on July 5, 2002, and the complete Case File was sent by courier.
4. Factual Background
4.1.According to Complainant, Playboy Enterprises International, Inc., is an international multimedia entertainment company that has published the menís magazine Playboy since 1953. Playboy magazine is published in eighteen international editions and read by approximately fifteen million people each month.
4.2.A well known feature of Playboy magazine is the CENTERFOLD, a fold-out photograph of a featured model accompanied by editorial material. PEII owns rights in the trademark CENTERFOLD. These include United States Reg. Nos. 1,442,822; 2,114,146; and 2,275,173; and Canadian Reg. No. TMA540257.
4.3.PEII licenses others to use marks comprised in whole or in part of the CENTERFOLD mark on products including Special Edition magazines, pre-recorded video cassettes, digital video disks, laser disks and collectors' cards.
4.4.CENTERFOLD branded merchandise is also sold through PEIIís "Playboy Store," on the Internet "www.playboystore.com", through the Playboy Catalog, and through various Playboy licensees.
4.5.The disputed Domain Name <centerfold.biz> was registered by Respondent Andre McGann with Registrar DomainDiscover on March 28, 2002, and has been placed on hold by NeuLevel, Inc. pending resolution of Complainant's IP Claim.
4.6.According to information supplied by Complainant, the Respondent owns and operates commercial adult websites and owns and operates websites for the sale of Domain Names.
5. Partiesí Contentions
A. Contentions of Complainant
5.1.The contentions of Complainant include (paragraphs 5.2-5.9 below) that:
5.2.The dispute is properly within the scope of the STOP. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates this Policy by reference.
5.3.The disputed Domain Name <centerfold.biz> is identical to the mark CENTERFOLD in which Complainant has rights.
5.4.Respondent has not been authorized by Complainant to use the latter's trademark and does not have and cannot have any rights or legitimate interests in the disputed Domain Name.
5.5.Respondent has acted in bad faith within the terms of Paragraph 4(b) of the STOP. Respondent is among other things a domain broker who has a history of registering Domain Names to sell for profit, and is probably intending to do so in this case.
5.6.Respondent can be inferred to have registered the Domain Name as a competitor of Complainant in order to prevent Complainant from reflecting its mark in a corresponding Domain Name.
5.7.Respondent has registered the Domain Name primarily for the purpose of disrupting the business of Complainant who is a direct competitor.
5.8.Respondent intends to use the Domain Name to compete for and attract customers to his own website by confusing users into thinking the website is legitimately associated with Complainant, within the terms of Paragraph 4(b)(iv) of the STOP.
5.9.The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.
B. Contentions of Respondent
5.10.Respondent has not offered any Response, except to confirm his address.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. The "STOP" Paragraph 4(a) states:
"You are required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to the applicable Provider, in compliance with the Rules, that:
i) Your domain name is identical to a trademark or service mark in which the Complainant has rights; and
ii) You have no rights or legitimate interests in respect of the domain name; and
iii) Your domain name has been registered or is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the "STOP" and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical to a Trademark or Service Mark in which Complainant has Rights
6.3. Complainant has clearly established rights in the trademark CENTERFOLD, a representative list (Complainant Annex C Exhibit 1) showing registrations in 26 countries for the word CENTERFOLD standing alone and others for the word in combination. The disputed Domain Name is <centerfold.biz> of which the gTLD extension <.biz> is of no consequence. The remainder of the Domain Name is identical to Complainant's trademark and the Panel finds for Complainant under Paragraph 4(a)(i) of the STOP.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.4.Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has made out a prima facie case to the effect that, as the registered owner of the trademark over a number of years in many countries, it has never licensed the trademark to Respondent or entered into any relationship with Respondent, and therefore Respondent cannot have any rights or legitimate interests in the trademark.
6.5.Respondent has not replied with any rebuttal in the terms of STOP Paragraph 4(c). There is no evidence that Respondent is the owner or beneficiary of a trade or service mark identical to the Domain Name; or that he has used a name corresponding to the Domain Name for a bona fide purpose; or that he has (as an individual, business, or other organization) commonly been known by the Domain Name. The Panel finds for Complainant under Paragraph 4(a)(ii).
Whether Domain Name Has Been Registered or Is Being Used in Bad Faith
6.6.The Panel must determine whether the Domain Name has been registered or is being used in bad faith. The STOP Paragraph 4(b) provides for a finding of bad faith particularly in the following circumstances, which are illustrative and without limitation:
"i.Circumstances indicating that you [Respondent] have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the 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 Complainant from reflecting the mark in a corresponding domain name; 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 Complainant's 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."
6.7.The circumstances illustrated in Paragraphs 4(b) (i) - (iv) may be mutually exclusive, for instance a hypothetical Respondent who registered a Domain Name solely for the purpose contemplated in Paragraph 4(b)(i) would seem not to have done so under Paragraph 4(b)(iv). Alternatively they may be synergistic, for instance a Domain Name may be used to attract a clientele in the terms of Paragraph 4(b)(iv) with the dominant intention of selling later as a going concern for a profit in terms of Paragraph 4(b)(i). In the present case the Complainant has advanced claims under all four circumstances of Paragraph 4(b) (Complaint at Section 30). Respondent has offered no response or denial.
6.8.Respondent is evidently a competitor of Complainant to the extent of operating at least three adult websites. On the totality of the evidence, the Panel finds that the Respondent registered the Domain Name in the first instance for the purpose of adding it to his stable of adult sites in order to use it and to compete with Complainant. The Internet is international. Respondent ought to have known of Complainant's trademark and should have taken reasonable steps to verify it MGM Mirage & the Primadonna Company, LLC v. Young Joon Choi, WIPO Case No. DBIZ2001-00036 (February 14, 2002). Furthermore Respondent was sent notification of Complainant's IP Claim during the registration process and had actual or constructive knowledge of it Ford Motor Company and Land Rover Ltd. v. Institution, WIPO Case No. DBIZ2001-00045 (March 26, 2002). It can reasonably be concluded that Respondent registered the Domain Name with intent to attract Internet users to the corresponding website through confusion with the Complainant's mark and with intent to benefit from the valuable goodwill and reputation of Complainant's trademark. Complainant has made out a convincing case of bad faith under Paragraph 4(b)(iv). The Panel finds that registration was made in bad faith in terms of Paragraph 4(a)(iii) of the STOP.
6.9.According to the evidence Respondent owns adult websites having Domain Names easily recognizable as such, and he trades as a broker offering for sale Domain Names, many of which do not evoke adult goods or services. The disputed Domain Name corresponds to the first category being a trademark of Complainant in the context of adult goods and services. The Panel finds on the facts that Respondent, having actual or constructive knowledge of Complainant's trademark CENTERFOLD, registered the corresponding Domain Name when it became available in order to prevent Complainant from doing so. Bad faith is found in terms of Paragraph 4(b)(ii) of the STOP.
6.10.As concluded in 6.3 above, the disputed Domain Name is identical to Complainant's trademark. As concluded in 6.5 above, Respondent does not have rights or legitimate interests in the Domain Name. As concluded in 6.8 and 6.9 above, the disputed Domain Name was registered in bad faith. The Panel gives its decision for Complainant and against Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name <centerfold.biz> is identical to Complainant's marks, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered in bad faith. The disputed Domain Name <centerfold.biz> shall be transferred to Complainant.
Dr. Clive N. A. Trotman
Dated: July 30, 2002