WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy Enterprises International, Inc. v. junhan huang
Case No. D2021-1886
1. The Parties
The Complainant is Playboy Enterprises International, Inc., United States of America (“United States”), represented by Venable, LLP, United States.
The Respondent is junhan huang, United States.1
2. The Domain Name and Registrar
The disputed domain name <playboychinabrand.com> (the “Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 7, 2021.
The Center verified that the Complaint together with the amendment to 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response.2 Accordingly, the Center notified the Respondent’s default on August 12, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 15, 2021. 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 a world-renowned international entertainment and multi-media licensing company. The Complainant is known as the publisher of the “Playboy” magazine, one of the world’s best-selling men’s lifestyle magazines, which was launched more than 60 years ago. The Complainant is the owner of the PLAYBOY trademarks, which include the term “playboy” in numerous international classes in over 100 jurisdictions worldwide.3 The Complainant owns more than 2,000 trademark registrations for the mark PLAYBOY, including dozens in the United States, where the Respondent purportedly resides. One such registration is PLAYBOY in the United States Patent and Trademark Office, United States Trademark Registration No. 600,018, registered on December 28, 1954 (hereinafter collectively referred to as the “PLAYBOY Mark”).
The Complainant markets and licenses the PLAYBOY Mark for a wide range of consumer products, which are sold in more than 100 countries, as well as retail stores and entertainment venues. The Complainant’s licensing business in Asia generally, and China in particular, is very popular, and is responsible for a majority of the Complainant’s licensing income.
The Complainant owns thousands of domain names containing the PLAYBOY Mark. The Complainant has owned the domain name <playboy.com> since 1994, which resolves to the Complainant’s official website at “www.playboy.com”. The Complainant’s official website provides news, entertainment, event information, and other features. The website also links to the Complainant’s shopping website, at “www.playboyshop.com”, where PLAYBOY-branded merchandise is offered for sale.
The Disputed Domain Name was registered on May 20, 2021 and resolves to a website at “www.playboychinabrand.com”, which the Respondent uses to impersonate and pass itself off as the Complainant. The website offers services and seeks licensing agreements not authorized by the Complainant. The Respondent’s website is nearly identical to that of the Complainant, with a near identical layout, the same or similar headers and tabs, as well as the use of the PLAYBOY Mark. In addition, the homepage for the website displays a work of art that was created by Andy Warhol for the Complainant.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s PLAYBOY Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s PLAYBOY Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the PLAYBOY Mark based on its decades of use as well as its numerous registered trademarks for the PLAYBOY Mark in the United States and other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015‑1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the PLAYBOY Mark.
The Disputed Domain Name consists of the PLAYBOY Mark in its entirety followed by the geographic term “china” and the dictionary term “brand”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term or terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term to a disputed domain name does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Further, the addition of the geographic term “china” to the Complainant’s PLAYBOY Mark does not prevent a finding of confusing similarity. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographic term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikeakorea.com> does not prevent the domain name from being confusingly similar to the complainant’s trademark).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s PLAYBOY Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its PLAYBOY Mark. Nor does the Complainant have any type of business relationship with the Respondent and there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Although the sender of the two communications received on July 7, 2021, alleges that “our client had the business license of PLAYBOY ENTERPRISES INTERNATIONAL,INC”, no evidence has been submitted in this regard. The Panel finds that nothing on the record before it would support a finding that the Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name.
Based on the use made of the Disputed Domain Name to resolve to a website that impersonates the Complainant’s official website in an attempt to deceive consumers into believing that they have reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See MasterCard International Incorporated v. Dhe Jonathan Firm, WIPOCase No. D2007-0831 (finding that the act of linking the respondent’s impersonating website to the complainant’s official website was not a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name).
Finally, the composition of the Disputed Domain Name, comprising the entirety of the PLAYBOY Mark followed by the geographic term “china” and the dictionary term “brand”, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below.
First, based on the circumstances here, the Panel concludes that the Respondent registered and has used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s PLAYBOY Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. See Policy, paragraph 4(b)(iv). The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its PLAYBOY Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). By reproducing the Complainant’s PLAYBOY Mark in the Disputed Domain Name and on the Respondent’s website, it creates the false impression that the Complainant is the source of the website or that the Respondent is one of the Complainant’s official distributors, which it is not.
Second, the registration of a domain name that reproduces a widely-known trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Third, the website to which the Disputed Domain Name resolves is a near reproduction and impersonation of the Complainant’s official website and has numerous indicia demonstrating how the Respondent is passing itself off as the Complainant to further its illegitimate enterprise. For instance, the Respondent attempts to pass itself off as the Complainant by using: (i) the Complainant’s PLAYBOY Mark on the Respondent’s website; (ii) the verbatim reproduction of portions of the Complainant’s website; (iii) the copying of the format and content of the Complainant’s official website; and (iv) the Complainant’s company name and United States address as its own with the Registrar (except for listing Zimbabwe instead of the United States). The foregoing is evidence of the Respondent’s bad faith registration and use of the Disputed Domain Name.
Finally, the Complainant has promoted and sold its goods and services using the PLAYBOY Mark for many decades, long before the Respondent’s registration of the Disputed Domain Name. It is therefore implausible that the Respondent was not aware of the PLAYBOY Mark when it registered the Disputed Domain Name. Thus, the Panel finds that the Respondent had actual knowledge of the PLAYBOY Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <playboychinabrand.com> be transferred to the Complainant.
Lynda M. Braun
Date: September 28, 2021
1 The Respondent falsely lists its address with the Registrar as the same address as the Complainant, although instead of listing the country as the United States, the Respondent lists it as Zimbabwe.
2 On July 7, 2021, the Center received two communications from the Registrar-confirmed email address of Respondent in which someone identifying herself as “Gina from shenzhen hulian xianfeng,One of the registrar” alleged that “our client had the business license of PLAYBOY ENTERPRISES INTERNATIONAL,INC”. On July 8, 2021, the Center requested the sender to clarify her relationship (if any) to Respondent, and to provide information sufficient to verify such relationship. No further communications were received from the sender of these two email communications.
3 The Complainant is the successor-in-interest to all trademarks and related goodwill formerly owned by Playboy Enterprises, Inc.