WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises, Inc., Playboy Enterprises International, Inc. v. FS1 a/k/a Carlton Crider
Case No. D2012-0181
1. The Parties
Complainant is Playboy Enterprises, Inc., Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America, represented by Venable, LLP, United States of America.
Respondent is FS1 a/k/a Carlton Crider of Clifton, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <playboysocial.com> (the “Domain Name”) is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 2, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On February 3, 2012, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 23, 2012. The Panel finds that it was properly constituted. 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
Complainant owns trademarks in the United States and internationally for the trademark/service mark PLAYBOY and other PLAYBOY variation marks in connection with a myriad of international classes. Complainant owns more than 40 trademarks/service marks in the United States alone in International Classes 38 (telecommunications), 41 (entertainment services), and 42 (computer and online subscription services and social networking). As of January 11, 2012, Complainant held over 3,000 active registrations for PLAYBOY and PLAYBOY variation marks in more than 200 countries.
Complainant is a brand-driven, international multimedia entertainment company, perhaps best known as the publisher of Playboy magazine, the world’s best-selling men’s magazine. Since 1954, Complainant has been a worldwide leader in the development and distribution of multimedia lifestyle entertainment for adult audiences.
Complainant operates the men’s lifestyle and entertainment website, “www.playboy.com”.
In 2006, Complainant introduced on-line forums for transmission of messages, images, photographs and videos among users for social networking, using its PLAYBOY marks, both directly and under license. Complainant’s entry into the field of social networking was widely publicized and reported in many major media outlets, including “www.foxnews.com”, “www.msnbc.com”, and “www.usatoday.com”. In 2011, Complainant expanded its online social networking services via Facebook, the highly popular social networking site, by providing online journals, namely, blogs featuring model search contest winners to Facebook users using its PLAYBOY marks.
Respondent registered the Domain Name on May 8, 2009.
5. Parties’ Contentions
The Domain Name is Confusingly Similar to the PLAYBOY Marks
Complainant asserts that the Domain Name is clearly similar - in appearance, sound, connotation, and commercial impression- to the PLAYBOY mark. The Domain Name incorporates the world-famous PLAYBOY mark exactly, adding only the generic, descriptive term “social.”
Complainant urges that the PLAYBOY marks are absolutely critical to its success and potential growth as a company. In recognition of this fact, Complainant has expended many millions of dollars advertising, promoting, developing, and protecting the PLAYBOY marks. Complainant’s extensive efforts, however, would be effectively nullified if others were permitted incorporate the PLAYBOY marks in their non-Playboy-affiliated domain names, unfairly exploiting the value of the PLAYBOY brand. However, in registering the Domain Name, Respondent has attempted to do precisely this.
Complainant alleges that Respondent most likely registered the Domain Name intending to trade on Complainant’s reputation as a provider, inter alia, of unique, online adult content and unfairly divert Complainant’s existing and potential consumers. As it appears that Respondent is deliberately trying to create confusion as to the relationship of its website and business to Complainant, the confusing similarity of the names should be presumed.
Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name
Complainant states that in contrast to itself - whose rights to the PLAYBOY marks are nearly universally recognized - Respondent has absolutely no rights or legitimate interests in respect of the Domain Name. Complainant has not authorized or licensed Respondent to use any of the PLAYBOY marks in connection with any venture in the United States or elsewhere. To the best of Complainant’s knowledge, Respondent has no independent rights to any trademark or service mark consisting of the term “playboy”, or any variations thereof, in any country.
Finally, Respondent has not made any bona fide use of the Domain Name. Respondent used the Domain Name to host a website featuring sexually explicit images of women and an online forum for the transmission of messages and images. Later, Respondent used the Domain Name to host a website attacking Complainant and its legal counsel’s trademark objections to the Domain Name and purporting to assert free speech rights. Notwithstanding these “uses” of the Domain Name, Respondent cannot claim that he used the Domain Name in connection with a bona fide offering of goods or services, inasmuch as the content of the websites hosted on the Domain Name featured content similar to the forms of adult entertainment offered by Complainant using the PLAYBOY marks. As any commercial use of the website at the Domain Name to offer social networking services would infringe Complainant’s rights in the PLAYBOY marks, an infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent. Even assuming for the sake of argument that the website at the Domain Name could be accurately characterized as a noncommercial, social networking website, Respondent clearly intended both to divert Complainant’s existing and potential customers and to tarnish the PLAYBOY marks. The use of domain names incorporating famous trademarks to operate social networking sites, like the Domain Name, is not a bona fide use under the Policy. Respondent’s later use of the Domain Name to criticize Complainant also does not constitute bona fide use under the Policy.
Respondent Registered the Domain Name in Bad Faith
Complainant contends that not only did Respondent register the Domain Name in direct contravention of Complainant’s well-established rights to the PLAYBOY marks, Respondent did so knowingly and/or in bad faith, as evidenced by Respondent’s continued refusal to comply with Complainant’s multiple demand letters, continued use of the Domain Name to operate a website featuring adult content similar to that offered by Complainant using the PLAYBOY marks, and offers to sell the Domain Name to Complainant at an exorbitant, artificially inflated price.
In or around July 2010, after viewing the website hosted on the Domain Name, Complainant’s counsel began corresponding with Respondent regarding the Domain Name and the alleged infringement on the PLAYBOY marks. On September 17, 2010, Respondent replied:
“We Are Glad to see we have your attention, Are you interested in buying the site (PlayBoySocial.com) with content on it. Your competitor penthouse purchased the adult friend Finder network for a little over 500 million. we develop sites online and have hundreds of domains, online marketing and Brand Name Reputation Management , software application , social network design and implementation is our specialty we have SEO & Viral methods that can't be stopped. Our team is extremely creative and Very resourceful we can bring down a competitors online reputation or build up a start-ups online reputation with surgical precision. Are you interested in buying us out?
iNTernet Entrepreneur z Yours Truly: Lil Barbie”
On September 21, 2010, Complainant’s counsel replied to Respondent’s offer, rejecting it. In the same e-mail, Complainant’s counsel informed Respondent that the Domain Name infringed Complainant’s rights in the PLAYBOY marks and that Respondent’s prior communications including, but not limited to the offer to sell, indicated an awareness of the value ascribed to trademarks, as well as bad faith. Complainant’s counsel demanded that Respondent transfer the Domain Name no later than September 19, 2010, together with any other domain names that Respondent owned or controlled that incorporated the PLAYBOY marks.
Additional communications took place between the parties. The Respondent threatened to sell the Domain Name, acted in a deceptive manner, and was non-cooperative. Shortly after receiving Complainant’s notice of trademark objections, Respondent removed the sexually-explicit, adult images previously displayed on the website at the Domain Name and began using the website to decry Complainant’s efforts to enforce its trademark rights and assert free speech rights. Without their consent or authorization, Respondent prominently posted the names, home addresses, and telephone numbers of both of Complainant’s legal counsel on the website linked to the Domain Name.
On January 13, 2012, trademark counsel for Complainant, e-mailed and mailed a third demand to Respondent, copying the Domain Name’s Registrar, Melbourne IT Ltd. The letter reiterated that the Domain Name was likely to cause confusion and/or deception and diluted the PLAYBOY marks’ distinctive quality. The letter also advised Respondent that Complainant had reason to believe Respondent registered and thereafter used the Domain Name in bad faith, exposing Respondent to liability for, e.g., trademark infringement, unfair competition, false designation of origin, and/or dilution. The letter demanded that Respondent immediately and permanently deactivate, dismantle, and transfer the Domain Name to Complainant and cease any and all use of the PLAYBOY marks. The letter gave Respondent until January 19, 2012, to confirm compliance with these demands, but Respondent failed to respond.
Complainant contends it is clear that Respondent acted in bad faith when he registered and thereafter used the Domain Name, particularly given the strength of the PLAYBOY marks in the United States and internationally. As prior WIPO panels have recognized, 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 Complainant’s prior rights or has a legitimate interest in domain names that incorporate the mark. Moreover, any claim by Respondent that he registered the Domain Name in good faith is expressly belied by Respondent’s use of the Domain Name in connection with online adult entertainment featuring photographs of naked women - similar to the services offered by Complainant using the PLAYBOY marks. Respondent’s bad faith is further established by his attempts to sell the Domain Name and leverage the PLAYBOY marks against Complainant to generate revenues for Respondent in excess of his actual costs. Finally, Respondent’s bad faith is demonstrated by the fact that he altered the information appearing in the WHOIS database for the Domain Name to remove his name and physical address, presumably to frustrate Complainant’s attempts to enforce its trademark rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) the Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on Complainant.
A. Identical or Confusingly Similar
To prove this element, Complainant must have rights in a trademark or service mark, and the Domain Name must be identical or confusingly similar to Complainant's trademark or service mark.
Complainant has numerous registered trademarks for its PLAYBOY mark. The Panel is therefore satisfied that the Complainant has registered trademark rights in PLAYBOY.
Respondent has used Complainant's trademark in its entirety and added the word “social”. Prior UDRP decisions have held that a domain name is confusingly similar to a trademark when a respondent uses the complainant's trademark and adds a neutral or generic word that fails to distinguish the disputed domain name from the trademark (see, for example, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102). Moreover, “[p]revious [WIPO] panels have had no hesitation, in light of the undoubted worldwide 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. Banning, WIPO Case No. D2006-1542 (WIPO Feb. 26, 2007) (transferring eight domain names, including, e.g., playboymobilecontent.com, playboymobileclips.com, and playboymobilevideos.com, and holding that “the Disputed Domain Names incorporate Complainant’s PLAYBOY and/or PLAYBOY MOBILE trademarks in their entirety and add a generic word or phrase afterwards. The addition of such generic terms does nothing to diminish the resultant confusing similarity.”).
In the present case, the word “social” can be considered a generic word that does not effectively distinguish the Domain Name from Complainant's famous PLAYBOY trademark.
The Panel therefore finds that, in the circumstances of this case, the Domain Name is identical or confusingly similar to Complainant's PLAYBOY trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name, nor has Complainant authorized or licensed Respondent to use any of the PLAYBOY marks. Moreover, from the evidence submitted it is clear that Respondent is not commonly known by the name “playboy” or by the Domain Name.
Complainant has provided evidence that Respondent used the Domain Name to host a website featuring sexually explicit images of women and an online forum for the transmission of messages and images. This infringing use of the Domain Name, which is confusingly similar to Complainant’s PLAYBOY mark, cannot give rise to a legitimate right or interest on the part of Respondent. Later, after being contacted by Complainant’s legal counsel, Respondent used the Domain Name to host a website attacking Complainant and its legal counsel and purporting to assert free speech rights. This retaliatory use of the Domain Name is not a bona fide use.
The Panel is satisfied that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent did not use the Domain Name in connection with a bona fide offering of goods or services, inasmuch as the content of the website linked to the Domain Name featured content similar to the forms of adult entertainment offered by Complainant using its PLAYBOY marks. Respondent, by failing to provide a response, has failed to demonstrate any rights or legitimate interests.
Accordingly, Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant has submitted undisputed evidence that Respondent registered the Domain Name with full knowledge of Complainant, as evidenced by use of the Domain Name to operate a website featuring adult content similar to that offered by Complainant using its PLAYBOY marks, Respondent’s continued refusal to comply with Complainant’s multiple demand letters, and Respondent’s offers to sell the Domain Name to Complainant at an exorbitant price.
The Panel finds that Respondent registered the Domain Name intending to trade on Complainant’s reputation as a provider of online adult content and to unfairly divert Complainant’s existing and potential consumers.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <playboysocial.com>, be transferred to the Complainant.
Christopher S. Gibson
Dated: April 22, 2012