WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International, Inc. v. Tom Baert
Case No. D2007-0968
1. The Parties
The Complainant is Playboy Enterprises International Inc., Chicago, Illinois, United States of America represented by Howard Philips & Andersen, United States of America,.
The Respondent is Tom Baert, Genk, Belgium represented by himself.
2. The Disputed Domain Name and Registrar
The Disputed Domain Name <playboys.mobi> is registered with Go Daddy Software Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on July 2, 2007. On July 4, 2007, the Center transmitted by email to GoDaddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On July 5, 2007 GoDaddy Software Inc. transmitted by e-mail to the Center its verification response confirming that the 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”), 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 July 11, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 31, 2007. The Center granted, based on party agreement, an extension to the Response due date until August 6, 2007. The Response was filed with the Center on August 2, 2007.
The Center appointed Alistair Payne as the presiding panelist and David E. Sorkin and Maxim H. Waldbaum as panelists in this matter on August 22, 2007. 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
The Complainant, Playboy Enterprises International, Inc., is an international multimedia entertainment company, well known throughout the world. The Complainant specialises in the development and distribution of multimedia lifestyle entertainment for adults. The Complainant is the owner of many United States and European trade mark registrations for PLAYBOY and PLAYBOY combined with many other words. The Complainant also owns a Benelux mark for PLAYBOY and PLAYBOY MOBILE and a Community Trade Mark registration for PLAYBOY MOBILE TV. The Complainant registered the domain name <playboy.mobi> on June 12, 2006. The Complainant is seeking the transfer of the Respondent’s registration for the Disputed Domain Name <playboys.mobi>.
The Respondent registered the Disputed Domain Name <playboys.mobi> on September 26, 2006. The Respondent does not currently have a website at the Disputed Domain Name but it has expressed an intention to use the website.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Name is virtually identical to its pre-existing registered domain name for <playboy.mobi>. It suggests that the inclusion of an “s” in the domain name is of no consequence to this determination. It is well established that changing a domain name from singular to plural is not sufficient to avoid confusion for trade mark purposes according to i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164.
The Complainant asserts that <playboys.mobi> is confusingly similar to the PLAYBOY MOBILE and the other PLAYBOY family trade marks. It also claims that the .mobi tld has the same meaning as the word “mobile” in the PLAYBOY MOBILE trade mark. As a result, it contends that there is a likelihood of confusion between its PLAYBOY MOBILE mark and the Disputed Domain Name.
The Complainant has exclusive rights in the name and mark PLAYBOY and in several variants of this name. The Complainant has not provided the Respondent with any licence, permission or authorisation to use the PLAYBOY trade mark in the Disputed Domain Name. Furthermore, <playboys.mobi> is not in use. The Complainant asserts that there is a presumption that it has a right of first use, or licence, of the well known trade mark, PLAYBOY MOBILE, for domain name use. It contends that this presumption applies in particular when the domain name is being used for goods or services that are the same, or similar to, those offered under the trade mark heading. The Complainant contends that the Respondent intends to use the domain name for services which are the same as its own. It asserts that, as the Respondent is infringing the Complainant’s PLAYBOY MOBILE trade mark it cannot demonstrate any rights or legitimate interests in the Disputed Domain Name.
The Complainant believes that the Panel should not consider the Respondent’s assertion that <playboys.mobi> will be used for non-commercial or fair use. It maintains that this is nothing more than an expression of intent without any supporting evidence. It also contends that the Respondent has not provided any “demonstrable preparations to make a legitimate commercial use” of <playboys.mobi>.
The Complainant, finally, asserts that the Respondent has shown bad faith in registering <playboys.mobi>. This contention is based, firstly, on the fact that the PLAYBOY and the PLAYBOY MOBILE trade mark are so well known that it is, therefore, impossible for the Respondent to contend that it had not heard of them. Secondly, the Complainant asserts that there is evidence that the Respondent has been stockpiling domain names composed of well known trade marks. The Complainant asserts that the Respondent does not use any of these domain names in connection with a bona fide offering of goods and services.
The Respondent submits that the Complainant cannot rely upon the tld .mobi in the Disputed Domain Name to establish that <playboys.mobi> is confusingly similar to its trade marks for PLAYBOY MOBILE and PLAYBOY MOBILE TV. The Respondent asserts that the arguments based on the trade mark PLAYBOY MOBILE and PLAYBOY MOBILE TV should be disregarded.
The Respondent contends that the addition of an “s” to the word “playboy” differentiates the Disputed Domain Name. The Respondent asserts that the plural form of a trade mark can be registered as a domain name “as long as the word is not used for similar products, nor for tarnishing purposes”. It also asserts that the use of the plural form <playboys.mobi> ensures that there is no likelihood of confusion with the Complainant’s trade mark. The Respondent contends that the word “playboy” is a generic term that is distinguishable from the situation in i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164 where the domain was a non-generic distinctive name. The Respondent contends that there is no likelihood of confusion with the Complainant’s domain name, <playboy.mobi>. This is due to the fact that the domain name is currently not in use.
The Respondent asserts that it has legitimate interest in the Disputed Domain Name as the Respondent intends to use it as “a network platform of people that think of their selves that they are a ‘playboy’ in the sense of a ‘pleasure seeking men or boys’.” The Respondent intends the network to be a web-based e-mail system. Secondly, it contends that “playboys” is a generic word that can be used by anyone without the intention to take advantage of the Complainant’s rights. Finally, the Respondent notes that it has registered a number of other generic domain names and it claims that it will use these for profit making purposes.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel notes the evidence of the Complainant in this case demonstrating numerous rights in its PLAYBOY, PLAYBOY MOBILE and PLAYBOY MOBILE TV marks. The PLAYBOY trade mark was first registered in 1954 in the United States. The Panel also accepts that the Complainant has registered rights in numerous domain names worldwide encompassing the PLAYBOY mark. This includes the domain name registered on June 12, 2006 for <playboy.mobi>. The Complainant has made significant use of its marks and the Panel accepts that it has developed significant reputation in these marks.
The Panel does not consider that the Disputed Domain Name is identical to the PLAYBOY, PLAYBOY MOBILE and PLAYBOY MOBILE TV marks. The Panel notes that the top level domain (tld) should not be taken into account when assessing similarity in these cases (see The Forward Association Inc. v Enterprises Unlimited, Case No. FA00080000095491 (Nat. Arb. Forum. 3 October, 2000) on this point and the UDRP WIPO decision in Empresa Brasileira de Compressores S.A - EMBRACO v. Artimidida Comunicação Visual Criação e Arte Ltda, WIPO Case No. D2000-0943. The Panel will not, therefore, consider the .mobi tld when assessing whether <playboys.mobi> is confusingly similar to the Complainant’s trade mark for “PLAYBOY”, “PLAYBOY MOBILE” and “PLAYBOY MOBILE TV”.
The Panel notes that the only difference between the Respondent’s Disputed Domain Name and the Complainant’s registered trade mark PLAYBOY is the inclusion of an “s” to create the plural “PLAYBOYS”. The Panel considers that “PLAYBOYS” is both visually and aurally similar to “playboy” and could easily be confused. The Panel also accepts the Complainant’s contention that the inclusion of an “s” does not eliminate confusion following i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As noted above, the Panel accepts that the Complainant has developed considerable reputation in the PLAYBOY family of marks listed above and owns several registered rights.
The Respondent has offered no evidence that it has any rights or legitimate interests in the Disputed Domain Name, except that it intends to use the website as a platform for people who think of themselves as “playboys”. The Respondent has offered no evidence of its preparations to do so except that it has discussed its .mobi projects with an IT consultant. This merely exemplifies the Respondent’s general interest in developing .mobi projects. It is clear that the Respondent has never actually used the Disputed Domain Name or the term “playboys” in commerce to date.
Furthermore, there is nothing to suggest that the Respondent is, or plans to, make a legitimate non-commercial or fair use of the domain name. The domain name is not currently being used by Respondent and is displayed as being “under construction”.
The Complainant has made out a case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent has failed to satisfy any of the three circumstances under Paragraph 4(c) of the Policy. In view of the fame and renown of the Complainant’s marks, the failure of the Respondent to make out any of the factors in Paragraph 4(c) and the likelihood, as noted under Paragraph C below, that the Respondent’s choice of Disputed Domain Name was motivated by the possibility of creating initial confusion, the Panel does not consider that the Respondent’s arguments concerning genericism are relevant. This approach is consistent with that of previous panels (see 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; and Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058).
Based on this analysis the Panel finds that the Complainant fulfils Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) of the Policy provides that evidence of registration and use in bad faith exists where the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct.
The Panel notes that the Respondent has not used the Disputed Domain Name since registering it in September 2006. The Respondent has also demonstrated its awareness of the Complainant’s rights in the PLAYBOY mark and associated marks by writing an unsolicited letter to the Complainant on April 13, 2007 informing them of its registration for <playboys.mobi>. The Respondent has also stated in this letter, that it intends to use the Domain Name for a mobile internet project. Although the Respondent provided some evidence of discussions with an IT consultant, there is no specific reference to the development of his plans for use of the Disputed Domain Name or even in general terms for the website that it is seeking to develop. Although the Respondent’s business plans may be confidential, in circumstances such as this, where the Disputed Domain Name is confusingly similar to one or more of the Complainant’s famous marks, then the Respondent necessarily needs to be able to point to some intended legitimate use. The Respondent argues that “playboys” is generic and that it should be entitled to use it. However, where the Complainant owns a confusingly similar famous mark, the onus must be upon the Respondent to explain the legitimacy of his use. The Respondent has not done so in this case and the Panel infers that the Respondent’s choice of domain name may well have been motivated by the likelihood of trading on initial confusion with the Complainant’s marks.
The Panel notes that the Respondent has previously registered several domain names incorporating well known trade marks including: <fordgm.net>, <ericssonglobalservices.net>, <nokia-siemens-networks.info>, <renaltnissangm.net>, <gruppobancario.com> and <veolia.mobi>. The Panel finds that these registrations constitute a pattern of conduct for the purposes of Paragraph 4(b)(ii).
On the balance of probabilities, the Panel finds therefore, that Paragraph 4(b)(ii) is fulfilled and that the Respondent has registered and used the Disputed Domain Name 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 Disputed Domain Names be transferred to the Complainant.
Maxim H. Waldbaum
David E. Sorkin
Date: September 5, 2007