WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International, Inc. v. Alano Fernandez, E-Magine
Case No. D2018-1457
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 Alano Fernandez, E-Magine of Panama City,=, Panama.
2. The Domain Name and Registrar
The disputed domain name <centerfolds.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 7, 2018. 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 is an international entertainment and multi-media licensing company. According to the Complaint, it is the successor in title to the “Playboy” business of Playboy Enterprises Inc.
According to the Complaint, the first issue of the Playboy magazine was published in 1953. The business has expanded substantially since then. In addition to the magazine, there is merchandising, which started in 1955 with cufflinks. In 1982, the business launched a cable TV channel in North America. In 1994, the cable TV service expanded to 24 hour programming. Retail stores were added in 2002 and entertainment venues since then. The business began promoting its products and services from the website at <playboy.com> in 1994. Apparently, millions of fans follow “Playboy” on social media platforms including Facebook, Instagram and Twitter.
According to the Complaint, the term “centerfold” was coined in 1956 when the double page “pin-up” feature in the magazine was expanded to a triple page fold-out or “centerfold”. The cable TV channel has featured numerous programs since 1982 promoting the term “Centerfold” – including “Playmate of the Year 1982: Shannon Tweed – Celebrity Centerfold”, “1984 Playmate of the Year: Barbara Edwards – Video Centerfold”, “Annual Centerfold Peeks”, “Celebrity Centerfold: [insert name]”, “Centerfold”, “Centerfold Coeds: Girlfriends”, “Video Centerfold: [insert name]” and so on. Books featuring collections of “Centerfolds” such as “The Complete Centerfolds” have been published. The Complainant also owns and publishes content via numerous “centerfold”–formative domain names such as <centerfold.com>, <asiancenterfold.com>, <mycenterfold.com>, and numerous others.
The Complainant owns more than 40 registrations for CENTERFOLD or CENTERFOLD-formative marks around the world. The longest extant is an Iceland registration for VIDEO CENTERFOLD, which dates from 1990. The oldest extant registrations for CENTERFOLD alone date from November 1996.
The disputed domain name was registered on April 24, 1995. It is not clear if it was registered in the Respondent’s name at that time. So far as the record shows, it does not and has never resolved to any website.
The domain name component of the email contacts provided by the Respondent in his or its WhoIs records resolves to a webpage for “E-Magine S.A.”, a “Private Investment & Management Group” established in 2007.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for at least CENTERFOLD in its own right, in addition to numerous “Centerfold”–formative marks. The Complainant also claims that it has developed an extensive reputation in CENTERFOLD as an unregistered trademark around the world. On the record in this case, the Panel accepts that claim.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s trademark by the addition of the gTLD “.com” and the letter “s” at the end of the Complainant’s trademark.
Disregarding the “.com” gTLD, the Complainant’s trademark “CENTERFOLD” is clearly discernible within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. So far as the record in this case shows, the Respondent is not using and has never actually used the disputed domain name.
Although the disputed domain name may have been registered by the Respondent before any of the Complainant’s registered trademarks for the word “Centerfold” alone, the earliest such registration nonetheless took place long after the Complainant first started using the term and had developed a reputation in it.
The Respondent has not sought to rebut the Complainant’s allegations or otherwise justify his or its registration of the disputed domain name.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It seems highly unlikely that the Respondent was not aware of the Complainant’s (or is predecessor in title’s) adoption and use of “Centerfold” when he or it registered the disputed domain name in 1994 (assuming the Respondent was the original registrant of the disputed domain name). By that stage, the Complainant had been using and promoting the term for almost 20 years all round the world. The Respondent has not denied the Complainant’s allegations in that respect.
The “passive” holding of a domain name which is confusingly similar to another’s trademark, in circumstances where the registrant does not have any rights or a legitimate interest in the domain name as is the case here, qualifies as use in bad faith under the Policy: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, on the record in this administrative proceeding, the Panel finds the Complainant has established that the disputed domain name has been registered and used in bad faith under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <centerfolds.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: August 21, 2018