WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International, Inc. v. Michael Ross
Case No. D2014-2077
1. The Parties
The Complainant is Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America ("United States"), represented by Venable, LLP, United States.
The Respondent is Michael Ross of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") represented by Jane Lambert of Counsel, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <playboy.london> (the "Domain Name") is registered with Webfusion Ltd trading as 123-reg (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2014, the Center received a pre-commencement communication from the Respondent. On December 8, 2014, the Registrar transmitted by email 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" 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 the Respondent of the Complaint, and the proceedings commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2014. The Respondent sent informal communications to the Center on January 3, 2015, and on January 7, 2015 requesting an extension of time to file a Response.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 12, 2015. 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. On January 14, 2015, the Panel issued a panel order, extending the due date for a Response to January 19, 2015. The Response was filed with the Center on January 19, 2015.
4. Factual Background
The Complainant is an entertainment and multi-media company based in the United States, best known as the publisher of Playboy Magazine, a men's magazine. The Complainant also operates a series of nightclubs, known as "Playboy Club" including the Playboy Club London, which first opened in 1966. It has been trading in its industry since its founding in 1953. It owns a large number of domain names including <playboy.com> and <playboylondon.com>. Presently Playboy licenses its trade marks for a wide range of consumer products sold in over 180 countries.
The Complainant has held trade mark registrations for PLAYBOY (the "PLAYBOY Mark") since at least 1954 when the PLAYBOY Mark was first registered in the United States. The PLAYBOY Mark has also been registered in the United Kingdom.
The Domain Name <playboy.london> was created on August 27, 2014. The Domain Name is currently inactive.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's PLAYBOY Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii)that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PLAYBOY Mark having obtained registrations for the PLAYBOY Mark around the world. The Domain Name consists of the PLAYBOY Mark and the generic Top-Level Domain ("gTLD") ".london". Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never authorized the Respondent to register or use the PLAYBOY Mark in any manner. Nor is the Respondent commonly known by the Domain Name. Furthermore, the Respondent is not making a noncommercial or fair use of the Domain Name, since it is not used in relation with an operational website. The Respondent has made, in correspondence with the Complainant and in newspaper articles, a series of statements about his proposed use of the Domain Name but none of them amount to bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name. Rather the Respondent admits that he is not planning to use the Domain Name in connection with any goods and services. The Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) of the Policy.
The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering the Domain Name is to trade off the goodwill of the Complainant's well-known PLAYBOY Mark. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent does not admit that the Domain Name is identical or confusingly similar to the PLAYBOY Mark and states that the Complainant has failed to prove such a point. It notes that the Complainant has not identified which particular PLAYBOY Mark it has infringed and that the noun "playboy" is a common noun and adjective in everyday use.
The Respondent has rights and legitimate interests in the Domain Name as the Respondent is commonly known by the Domain Name. The term "playboy" is descriptive of "a wealthy man who spends his time enjoying himself, especially one who behaves irresponsibly or is sexually promiscuous…" As the Respondent is a wealthy man and has visited the Playboy Mansion he satisfies that description. The Respondent's wife is pregnant and if he has a son he plans to use the Domain Name for a website that traces the boy's childhood and adolescence and limit access to the site to family and friends. Such use will be noncommercial and will not divert consumers from the Complainant's site.
For the reasons set out in respect to the Respondent's legitimate interest in the Domain Name, the Respondent has not registered or used the Domain Name in bad faith. The Panel is also invited to declare that the Complaint was brought in bad faith and amounts to Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the PLAYBOY Mark, having registrations for PLAYBOY as a trade mark in numerous jurisdictions including the United Kingdom. As the gTLD (such as ".london") may be discarded in considering the similarity between a domain name and a mark, the Domain Name is identical to the PLAYBOY Mark. The fact that the term "playboy" may be a common noun does not prevent a finding that the Domain Name is identical to the PLAYBOY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PLAYBOY Mark. There is no evidence that the Domain Name, or a name corresponding to the Domain Name is being used in connection with a bona fide offering of goods and services; the Domain Name has at all times been inactive.
The Respondent's submissions as to legitimate interest fall into two grounds, being:
a) that he plans to use the Domain Name for a site documenting his child's adolescence and limit access to the site to family and friends and hence will make a legitimate noncommercial or fair use of the Domain Name; and
b) that he is a "playboy" and hence commonly known by the Domain Name.
In order to succeed under paragraph 4(c)(iii) of the Policy the Respondent must show that it is "making legitimate noncommercial or fair use of the domain name". The Response contains no evidence of use of the Domain Name, let alone non-commercial use. As such the Respondent's argument as to legitimate non-commercial use cannot succeed.
Even if the Respondent's future intentions were relevant in establishing non-commercial use, the Response contains no evidence in support of the Respondent's plan to use the Domain Name for a site for his son, or even that the Respondent has a son (indeed all that the record reveals is that the Respondent's wife is allegedly pregnant). While the burden of proof under each element of the Policy rests with the Complainant, the Complainant's evidence, and the lack of any use of the Domain Name is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is then up to the Respondent to make submissions supported by evidence that it has rights or legitimate interests. In this case the Respondent has made submissions that it has a legitimate interest by reason of its intention to create a site for his child, but its submissions amount a series of assertions of intent that are entirely unsupported by evidence.
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), in response to the question "What is the standard of proof under the UDRP?" the WIPO Overview 2.0 states:
Consensus View: The general standard of proof under the UDRP is "on balance" – often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.
The Respondent's assertion of intent amounts to a statement unsupported by evidence. The Panel does not find that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to the Respondent's second argument, the evidence that suggests that the Respondent is "commonly known" as "Playboy" or "a playboy" amounts to:
a) a series of photos of the Respondent or taken by the Respondent during a visit to the Playboy Mansion;
b) press reports that refer to the fact that the Respondent dated a woman who posed in Playboy Magazine; and
c) an article from 2008 that suggests that the Respondent was one of Britain's most eligible bachelors.
In the case of Sanderling Pty Ltd trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385, the panel said:
The Panel is mindful of the need to take care when considering claims by respondents that they have "been commonly known" by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant's complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, where the Panel said:
"Since a 'legitimate interest' is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has 'been commonly known' by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been 'commonly known' by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname 'Red Bull' since childhood because Respondent did not provide any evidence to support contention. See also, e.g., DIMC Inc, & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname 'Krylon' due to absence of evidence when alleged nickname was adopted and how it was used.'"
In AST Sportswear, Inc. v. Steven R. Hyken, WIPO Case No. D2001–1324 the Panel said: "Mere casual nicknames or other unsubstantiated assertions of past use are insufficient. See, e.g., DIMC, Inc. v. Phan, WIPO Case No. D2000-1519 (February 20, 2001) (rejecting claim that Respondent was known by nickname "Krylon" given absence of evidence of when alleged nickname was adopted and how it was used); Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (September 21, 2000) (rejecting claim that Respondent was known by nickname "Red Bull" since childhood because Respondent did not provide any evidence to support contention); Gambro AB v. Family Health & Wellness Center, WIPO Case No. D2001-0447 (May 25, 2001) (Respondent did not submit any evidence to support suggestion that its employee was known by nickname "Gambro"); see also Sumner v. Urvan, WIPO Case No. D2000-0596 (July 24, 2000) (Respondent's evidence that his nickname is "Sting" is "at the weaker end of the spectrum of such evidence" and thus did "not establish that he has been 'commonly known' by the domain name as contemplated by" the Policy). Rather, particularly when there are not insubstantial allegations of bad faith, a Panel should require a persuasive showing of a bona fide use of the name."
Applying that "careful" approach in this case, the evidence falls well short of showing that the Respondent is commonly known by the Domain Name. Firstly the name of the Respondent is "Michael Ross." The Panel has been unable to identify, and the Respondent has not been able to refer to the Panel, any case in which it was found that a party had rights and legitimate interests because an individual Respondent was "commonly known" by a descriptive term, rather than their own name or business name.
Secondly, even if the Panel was to find that it was possible for a person to be "commonly known" within the meaning of paragraph 4(c)(ii) of the Policy by a descriptive term such as "playboy", there is insufficient evidence to persuade the Panel, on the balance of probabilities that the Respondent is "commonly known" as "playboy" or "a playboy." There is no evidence that the Respondent has ever been called "playboy".
The Panel accepts the Complaint's argument that, as a large number of people visit the Playboy Mansion, such a fact is insufficient to show that the Respondent is "commonly known" as "playboy." The fact that the Respondent once dated a woman who posed in the Complainant's Magazine is also insufficient to show that the Respondent is "a wealthy man who spends his time enjoying himself, especially one who behaves irresponsibly or is sexually promiscuous…". The Panel also places little emphasis on the article that refers to the Respondent as one of Britain's most eligible bachelors. This article is from 2008, and it appears from an article annexed to the Complainant that the Respondent is presently married and hopes to have a child. At best such evidence would suggest a mere casual nickname, which is insufficient to prove rights and legitimate interests, see DIMC, Inc. v. Phan, WIPO Case No. D2000-1519.
The Panel does not find that the Respondent is commonly known by the Domain Name or any similar name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name' registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel finds that the Respondent, at the time of registration of the Domain Name, knew of the existence of the PLAYBOY Mark, indeed the Respondent had visited the Playboy Mansion. The Panel, for the reasons set out in part 6.B above, does not accept the Respondent's explanation for why it registered the Domain Name. The Respondent's conduct in registering the Domain Name when it was aware of the Complainant's trade mark rights, whilst lacking rights and legitimate interests of its own, amounts to registration in bad faith.
The Domain Name is currently inactive and there is no evidence that the Domain Name has been used by the Respondent for any purpose. It is, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
a) The Respondent was aware of the Complainant at the time it registered the Domain Name;
b) The Domain Name reproduces a well-known mark in its entirety; and
c) The Respondent has provided no bona fide reason for the registration of the Domain Name.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
As the Complainant has been successful in proving all elements of its Complaint, no finding of Reverse Domain Name Hijacking is made.
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 <playboy.london> be transferred to the Complainant.
Date: January 21, 2015