WIPO Arbitration and Mediation Center


Playboy Enterprises International, Inc. v. Jonathan Marsh

Case No. D2020-0949

1. The Parties

Complainant is Playboy Enterprises International, Inc., United States of America (“United States”), represented by Venable, LLP, United States.

Respondent is Jonathan Marsh, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <playboycannabis.com> (the “Domain Name”) 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 April 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 28, 2020, the Center send an email communication to Complainant requesting for clarification of mutual jurisdiction. On April 28, 2020, the Center received Complainant’s clarification on its choice of mutual jurisdiction.

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 Respondent of the Complaint, and the proceedings commenced on May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. On May 25, 2020, Respondent requested an extension to Response due date. The Response due date was automatically extended to May 29, 2020, in accordance with Rules, paragraph 5(b). The Response was filed with the Center on May 30, 2020.

The Center appointed Robert A. Badgley as the sole panelist in this matter on June 11, 2020. 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 June 11 and 12, 2020, the Center received informal email communications from Respondent. The Center replied to Respondent and informed the Panel on June 12, 2020.

4. Factual Background

According to Complainant, it is “world-renowned as an international entertainment and multi-media licensing company, and the owner of the world-famous PLAYBOY trademarks, which include the term “PLAYBOY” in a myriad of international classes in over 100 countries.” Complainant holds more than 2,000 trademark registrations for the mark PLAYBOY, including dozens in the United States, where Respondent resides. One such registration of PLAYBOY is United States Patent & Trademark Office Reg. No. 600018, registered April 21, 1954.

Complainant states that it is best known “as the publisher of Playboy magazine, one of the world’s best-selling men’s lifestyle magazines.” That magazine was launched more than 60 years ago.

Complainant licenses the PLAYBOY mark “for a wide range of consumer products” sold in more than 100 countries. Complainant’s main website is at “www.playboy.com”, a domain name Complainant has owned since 1994. Complainant’s website features various media to provide news, entertainment features, event information, and other features. The website also links to Complainant’s shopping website, at “www.playboyshop.com”, at which various PLAYBOY-branded merchandise (including but not limited to clothing, jewelry, and fashion accessories) is offered for sale.

The Domain Name was registered in March 2015. The Domain Name resolves to a webpage displaying “website coming soon”, and has not been used for any active website.

On February 6, 2020, Complainant’s counsel sent a cease-and-desist letter to Respondent. That day, Respondent replied by email, stating that he had been in a promotional video on Playboy TV in 2015 in connection with the healing properties of cannabis extracts. He asked Complainant if it would be willing to work with him on another project. Respondent also wrote:

“Despite ‘Playboy' being best known as an adult magazine, the word isn’t covered by trademark protection in the Cannabis realm, and in no way insinuates ‘Playboy Cannabis’ has any relation to the magazine. In fact, I wouldn’t want the connection made once I decide to implement the website for a future business venture. A playboy is simply, as defined by Merriam-Webster, ‘a man who lives a life devoted chiefly to the pursuit of pleasure’ and the name predates the magazine.

I purchased the domain on my birthday [in] 2015. If Playboy was interested in the domain, they had more than a decade to acquire it through any domain purchasing service. If Playboy is interested in the web domain, please feel free to make an offer, but if you honestly believe you have the right to demand it based on the irrelevant fact Playboy is in the name of my domain, you’re definitely wasting my time and your employers, because I am definitely not parting ways with any of my 650 Cannabis domains for less than [USD]10,000 and [‘]www.PlayboyCannabis.com[’] is apparently worth more than the average web domain in my possession.

Please let me know if Playboy the adult magazine is interested in ‘Playboy Cannabis’ and using the Playboy logo(s) to promote a brand of Cannabis. I had no intention of using anything referencing a rabbit or naked women to promote ‘Playboy Cannabis’ so again, I won’t be giving it away nor refraining from implementing it once I decide to do so.”

On February 18, 2020, Complainant’s counsel responded to Respondent, stating that a domain name appraisal service valued the Domain Name at USD 1,167, and offering Respondent USD 1,500 for the Domain Name. On February 21, 2020, Respondent rejected the offer. In that email, Respondent also observed that Complainant’s (late) founder Hugh Hefner might have been interested in marketing cannabis in view of his supposed decades-long support of cannabis.

On April 10, 2020, Respondent sent an email to Complainant, offering to sell the Domain Name for USD 15,000. In his Response, Respondent states that he appraises the value of the Domain Name at USD 8,000.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent disputes that the Domain Name is confusingly similar to Complainant’s mark, that he has a legitimate interest in the Domain Name, and that he did not register or use the Domain Name in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which 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.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark PLAYBOY through widespread registration and longstanding use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the PLAYBOY mark, and adds the generic term “cannabis.” The mark is clearly recognizable within the Domain Name, and is the dominant element of the Domain Name.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, and noting that the burden ultimately falls on Complainant (but that once a prima facie case is made in its favor, the burden of production shifts to Respondent), Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Other than saying that he owns numerous domain names including the term “cannabis,” Respondent does not assert, much less provide evidence of, any actual purpose he had vis-à-vis the Domain Name, which incorporates a world-famous trademark. Respondent observes that the PLAYBOY trademark is not registered in connection with the sale of cannabis or cannabis-related products, and that it is possible to construct a website that clearly disclaims any affiliation with Complainant and its goods and services associated with the PLAYBOY mark.

The problem with these arguments is manifold. First, based on the record evidence, Respondent has not in fact attempted to develop a website selling cannabis or related products, and has not explained why “playboy” would be a suitable denomination for such a venture (especially noting Complainant’s global fame). Second, the passage of five years between the registration of the Domain Name and the exchange between the Parties in February 2020 does not lead easily to the inference that Respondent had some legitimate purpose for the Domain Name. Third, the PLAYBOY mark is famous, and has been registered and used in association with various goods and services. It is not inconceivable that Complainant could expand its activities into the area of cannabis (as Respondent apparently conceded in his comment about Complainant founder Hugh Hefner). Given the fame of Complainant’s mark, it is difficult to conceive of anyone other than Complainant (or a licensee) using the Domain Name legitimately in connection with a website offering cannabis products. Finally, Respondent’s offers to sell the Domain Name for USD 10,000, and later USD 15,000, seem to undermine any claim that the Domain Name was registered for a legitimate purpose independent of an intent to target Complainant.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel finds it clear that Respondent had Complainant’s famous PLAYBOY family of marks in mind when registering the Domain Name. Respondent had by his own admission appeared on a Playboy TV program, was well aware of Playboy magazine, and was aware of Hugh Hefner. The Panel finds bad faith use of the Domain Name under the above-quoted Policy paragraph 4(b)(i). The record contains two offers by Respondent to sell the Domain Name for amounts well in excess of any documented out-of-pocket costs directly associated with the Domain Name. Indeed, despite asserting that the Domain Name’s true value was USD 8,000, Respondent demanded nearly twice that amount, USD 15,000, to sell the Domain Name. Further, and in the alternative, it is not legitimate to register a Domain Name containing a famous trademark, and then leverage that Domain Name in the hopes of entering into a business relationship of some sort with the trademark holder.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

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 <playboycannabis.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: June 25, 2020