WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International Inc. v. Joao Melancia
Case No. D2006-1106
1. The Parties
The Complainant is Playboy Enterprises International Inc., of Chicago, Illinois, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Joao Melancia, of Lisbon, Portugal.
2. The Domain Name and Registrar
The disputed domain name <playboyportugal.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006. On August 30, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 31, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2006.
The Center appointed Fleur Hinton, Peter L. Michaelson and Erica Aoki as panelists in this matter on November 7, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Center set November 21, 2006, as the deadline for the Panel’s decision.
Due to exceptional circumstances which necessitated an extension of the deadline, the Center, upon request of the Panel, extended the deadline until December 5, 2006.
4. Factual Background
The Complainant is an international media entertainment company of world renown. It is best known for its magazine ‘Playboy’. This publication is described as a ‘men’s magazine’ which would be generally taken to mean that its subject matter is young, beautiful and sexy women and that it contains both photographs and articles directed to men on this subject. Nevertheless, the trademark PLAYBOY is so famous internationally that it is likely to be recognized by most people regardless of whether they have ever read a copy of it.
Apart from the magazine itself, the Complainant also offers a range of movie, dvd, video and wireless entertainment services, all targeted to an adult market. In addition it licenses consumer goods such as clothing and sunglasses.
The Respondent is Mr. Joao Melancia of Lisbon in Portugal. He registered the domain name on October 18, 2005, and uses it to sell adult videos and services such as escort services and phone sex.
5. Parties’ Contentions
The Complainant is the owner of a world famous trademark and has many registrations for the trademark PLAYBOY in its home country, the United States of America and in many other countries. It alleges that the Respondent’s domain name <playboyportugal.com> is functionally identical with its trademark PLAYBOY. This is based on the assertion that the geographical indicator ‘Portugal’ would not be considered by people seeing the domain name <playboyportugal.com> as being something which would distinguish the Complainant’s PLAYBOY trademark and various websites from that of the Respondent.
In support of this contention the Complainant has cited a number of decisions made by previous panels in relation to complaints by the Complainant and in respect of domain name registrations held by third parties for domain names including expressions such as “africanplayboy”, “japaneseplayboy”, “britishplayboy”, “europeanplayboy.com” and “canadianplayboy”.
The Complainant alleges that the Respondent cannot have any rights or legitimate interests to the domain name. In view of the fame of the Complainant’s trademark, the Respondent could only have any legitimate right by virtue of a license granted by the Complainant and the Respondent has no such license. The Respondent is in no other way known by the name. Further, the fact that the Respondent’s website is so close in content to that of the Complainant’s is itself proof that the reason for the choice of the domain name <playboyportugal.com> was made with the sole reason of causing users of the website to assume a connection in the course of trade with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the trademark PLAYBOY is a famous mark and one which has been in use since 1954 when the first edition of the PLAYBOY magazine was published. The Panel finds further that the domain name <playboyportugal.com> is confusingly similar to the Complainant’s famous trademark PLAYBOY and agrees with the Complainant and with previous WIPO UDRP decisions that the addition of a geographical indicator to a domain name cannot suffice to prevent the respective trademarks from being ‘functionally’ identical. That is because most potential users of the Internet are familiar with the practice of well known businesses using geographical indicators in domain names to direct certain of their goods or services to consumers in particular locations around the world.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the domain name <playboyportugal.com>. When the domain name complained of includes a famous trademark there is an initial assumption that only the owner of that trademark has the right to use it or to license others so to do. The onus then passes to the Respondent to displace that assumption. Since the Respondent has not chosen to present any argument in this matter or to attempt to prove any right, he has not discharged that onus.
C. Registered and Used in Bad Faith
The Panel refers to Playboy Enterprises International Limited v Pitts, WIPO Case No. D2006-0675 (August 3, 2006) in which the finding was made that ‘the Panel agrees with the Complainant that the Respondent’s registration of a domain name incorporating a very famous mark of which she is clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith’.
The Panel finds that the domain name <playboyportugal.com> has been both registered and used in bad faith. It is clear that the Respondent is using his domain name to offer services which are identical with some of the Complainant’s services and closely related to others of the Complainant. The only reason which the Respondent could have for doing this is to trade on the Complainant’s very extensive international reputation in these types of services and to encourage potential customers to believe that there is a connection between the Complainant and the Respondent when no such connection exists.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <playboyportugal.com> be transferred to the Complainant.
Peter L. Michaelson
Dated: December 1, 2006