WIPO Arbitration and Mediation Center
Playboy Enterprises International Inc. v. Roger Banning
Case No. D2006-1542
1. The Parties
The Complainant is Playboy Enterprises International Inc., a Delaware corporation, with its principal place of business in Chicago, Illinois, United States of America, represented by Cody W. Zumwalt of Howard, Phillips & Andersen, United States of America.
The Respondent is Roger Banning, of Woodland Hills, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names:
are registered with Dotster, Inc. The disputed domain name:
is registered with Melbourne IT, trading as Internet Names Worldwide. The forgoing domain names are herein collectively referred to as the Disputed Domain Names.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2006. On December 10, 2006, the Center transmitted by email to Dotster, Inc. and Melbourne IT a request for registrar verification in connection with the domain names at issue. On December 11, 2006, Dotster, Inc. and Melbourne IT each transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant for each of the disputed domain names 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 December 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Respondent’s default on January 16, 2007.
The Center appointed Maxim H. Waldbaum, James A. Barker and Steven L. Snyder as panelists in this matter on February 14, 2007. 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.
4. Factual Background
The following uncontested facts are summarized from the Complaint.
Complainant is a brand-driven, international multimedia entertainment company, perhaps best known as the publisher of Playboy magazine. Complainant also operates Playboy television and cable networks worldwide; distributes programming via home video, DVD, and wireless networks; licenses its trademarks internationally for a wide range of consumer goods and services; and operates several men’s lifestyle and entertainment websites, including “www.playboy.com”, “www.playboymobile.com”, “www.playboystore.com”, and “www.playboytv.com”. Complainant’s websites receive extensive Internet visits. “www.playboy.com” receives over 2.5 million visitors each month.
Complainant first obtained a United States Trademark Registration for PLAYBOY in 1954, and has since acquired many additional trademark registrations for PLAYBOY and PLAYBOY combined with other relevant words. Complainant holds at least 1,716 registrations for PLAYBOY in 163 countries. In particular, Complainant has since 2003 sold wireless or mobile phone content, including still images, games, videos, and video clips, in 18 countries in Europe and Asia. In the United States and numerous other jurisdictions, Complainant has registered trademarks for PLAYBOY, PLAYBOY MOBILE, and related marks covering entertainment in the form of adult programming via wireless services.
The Disputed Domain Names were registered over a 10-day period between April 9, 2006 and April 19, 2006. On August 17, 2006 (via email), and August 31, 2006 (via First Class Mail), Complainant sent demand letters to Respondent. Respondent did not respond to either communication. The letter was received by the company that occupies the premises located at the address shown on the WhoIs reports for the Disputed Domain Names. Upon receipt, its representative contacted Complainant and advised that the company did not have an employee named “Roger Banning” or know of anyone by that name. The company subsequently returned the letter to Complainant.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant contends that each of the eight Disputed Domain Names is confusingly similar to the Playboy Marks. Seven of the Disputed Domain Names consist of PLAYBOY MOBILE combined with a word or term that is descriptive of the mobile-related goods and services sold by Playboy, namely “clips,” “content,” “sex clips,” video,” “celebrities,” “coeds,” and “lifestyle.” The eighth, <playboysexclips.com>, consists of PLAYBOY combined with the descriptive phrase “sex clips.”
Rights or legitimate interests
Complainant contends that Respondent has neither rights nor legitimate interests in the Disputed Domain Names because Respondent is not known by the Disputed Domain Names, has not been authorized by Playboy to use the Playboy Marks in any connection, and has never made any bona fide use of the Disputed Domain Names.
As of August 2, 2006, Respondent used the domain names to host websites displaying links to commercial websites that were unrelated to the Disputed Domain Names. By November 13, 2006, Respondent used five of the Disputed Domain Names to resolve to “www.cheapsexclips.com”, a subscription, adult content website. Respondent also commenced use of <playboymobilecoeds.com> to host a website displaying commercial links to mobile-related goods and services, such as ringtones and cell phones; <playboymobilecelebrities.com> to display commercial links to adult entertainment, movies, and videos; and <playboymobilelifestyle.com> to display commercial links to subscription magazines. The commercial links on these websites resolve to third-party websites unrelated to Playboy which offer goods and services for sale in competition with Playboy.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the Disputed Domain Names in bad faith. Given the strength and fame of the Playboy Marks, Respondent’s bad faith is established by the fact of registration alone. PLAYBOY falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he or she was unaware of Playboy’s prior rights or has a legitimate interests in domain names that incorporate the mark.
Bad faith is also demonstrated by Respondent’s failure to maintain valid WhoIs contact information. By virtue of the fact that the letter sent to Respondent at the mailing address provided was undeliverable, an inference of bad faith is warranted.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
In referring to authorities, the Panel is also conscious that it is not necessarily appropriate to use the same criteria when comparing a domain name as are used when comparing two trademarks.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of its rights in the PLAYBOY trademark. The Playboy brand, as numerous authorities have held ‘is one of the most recognized in the world.’ Playboy Enters. Inter’l, Inc. v. Asia Sun, WIPO Case No. D2005-0767 (September 6, 2005) (quoting Playboy Enters. Inter’l, Inc. v. Concas, WIPO Case No. D2001-0745 (August 5, 2001)). See also Playboy Enters. Inter’l, Inc. v. Pitts, WIPO Case No. D2006-0675 (August 3, 2006) (“It is uncontested that the PLAYBOY mark is famous and well-established, as acknowledged in numerous judicial and UDRP decisions.”); Playboy Enters. Inter’l, Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 1274 (9th Cir. 1982) (finding that “PLAYBOY and RABBIT HEAD design trademarks are strong and distinctive and have acquired great fame”); Playboy Enters. Inter’l, Inc. v. Chucklebery Pub., Inc., 687 F.2d 563, 566-67 (2d Cir. 1982) (upholding the “district court’s finding that the ‘PLAYBOY’ mark was distinctive and enjoyed wide recognition” as indisputable and finding PLAYBOY is a mark of great value, due in large part to the long standing success of “Playboy” magazine).
Each of the Disputed Domain Names incorporates Complainant’s PLAYBOY and/or PLAYBOY MOBILE trademarks in their entirety and adds a generic word or phrase afterwards. The addition of such generic terms does nothing to diminish the resultant confusing similarity. Indeed, this point is well established without having to look beyond cases involving Complainant. See e.g., Playboy Enters. Inter’l, Inc. v. Asia Sun, supra (finding playboymobile.com to be confusingly similar); Playboy Enters. Inter’l, Inc. v. Concas, supra <playboy-photographer.com>; Playboy Enters. Inter’l, Inc. v. Sastre, WIPO Case No. D2005-0332 (August 2, 2005) <playboy-movies.com>; Playboy Enters. Inter’l, Inc. v. Pitts, supra <playboyclulasvegas.com>; Playboy Enters. Inter’l, Inc. v. Vileshome, WIPO Case No. D2001-1082 (October 30, 2001) <playboymarket.com> and <playboymarket.net>).
Previous panels have had “no hesitation,” in light of the “undoubted world-wide reputation of the trademarks PLAYBOY and PLAYMATE,” in finding that similar domain names are confusingly similar to the Playboy Marks. Playboy Enters. Inter’l, Inc. v. Domain Active Pty. Ltd., WIPO Case No. D2002-1156 (February 13, 2003) (ordering transfer of 73 domain names incorporating PLAYBOY, including <playboy-celebrities.com>, <playboy-celebritys.com>, <playboycelebrities.com>, <playboycelebritys.com>, <tv-playboy.com>, <virtual-playboy.com>, and <online-playboy.com>).
Accordingly, the Panel finds that Complainant has rights in the PLAYBOY and PLAYBOY MOBILE marks and the Disputed Domain Names are confusingly similar to these Marks.
B. Rights or Legitimate Interests
After a complainant has established a prima facie case, the burden of producing evidence of rights or legitimate interests has consistently been found to rest with the respondent. See Playboy Enters. Inter’l, Inc. v. Asia Sun, supra (citing Cassava Enters. Ltd. v. Victor Chandler Inter’l Ltd., WIPO Case No. D2004-0753 (November 11, 2004)).
Complainant has established a prima facie case: Complainant has no relationship with Respondent; Complainant has never authorized Respondent to use the domain names; Complainant’s PLAYBOY marks are well-known throughout the world; and there is no indication in the file that Respondent is known under the Disputed Domain Names.
Furthermore, Complainant has provided ample evidence that the Disputed Domain Names host websites that either directly reroute the user to the commercial website “www.cheapsexclips.com” or otherwise provide links to websites that are not related to Complainant. “Use of a popular mark to host websites that have no connection to the mark suggests the respondent is attempting to profit from the stream of visitors who seek the complainant’s website.” Playboy Enters. Inter’l, Inc. v. Asia Sun, supra (citing Microsoft Corp. v. MindKind, WIPO Case No. D2001-0193 (April 20, 2001)).
Similarly, the use of a domain name that consists of a search engine and links to other websites is not in itself a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. See e.g., Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004). Respondent has failed to rebut Complainant’s prima facie case. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003).
C. Registered and Used in Bad Faith
Use of a domain name that is confusingly similar to a complainant’s mark to host a website offering competing goods and services for sale, and in which a respondent has no right or legitimate interest, is classic cyberpiracy and constitutes “compelling evidence of bad faith in the registration and use of the disputed domain name” pursuant to paragraph 4(b)(iv) of the Policy. The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346 (June 12, 2000). See also Playboy Enters. Inter’l, Inc. v. Pitts, supra (“the Respondent’s registration of [playboyclublasvegas.com] incorporating a very famous mark of which she was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith”).
Further, Respondent’s failure to provide or maintain accurate contact information is evidence of bad faith. See e.g. Spice Entertainment, Inc. v. Fleming, WIPO Case No. D2006-0114 (April 21, 2006) (“[T]hose who incorporate the marks of others in domain names must be prepared to address inferences that arise from using methods to hide their identities from complainants who seek to protect their interests in such marks”); Playboy Enters. Inter’l, Inc. v. Pitts, supra (“The Respondent’s failure to maintain current contact information with the Registrar also suggests an effort to avoid accountability for misusing a famous trademark, supporting the inference of bad faith”). Thus, the Panel finds that Respondent has registered and used the Disputed Domain Names in bad faith
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 names, <playboymobilecelebrities.com>, <playboymobileclips.com>, <playboymobilecoeds.com>, <playboymobilecontent.com>, <playboymobilelifestyle.com>, <playboymobilesexclips.com>, <playboymobilevideos.com>, and <playboysexclips.com> be transferred to the Complainant.
Maxim H. Waldbaum
James A. Barker
Steven L. Snyder
Dated : February 26, 2007