Playboy Enterprises International, Inc. -v- ewca.org

Nominet UK Dispute Resolution Service

DRS 3409

Playboy Enterprises International, Inc. and ewca.org

Decision of Independent Expert

1.	PARTIES:

	Complainant:			Playboy Enterprises International, Inc.
	Country			US	

	Respondent:			ewca.org
Country			VC

2.	DOMAIN NAME:

playboyaccesories.co.uk (the “Domain Name”).

3.	PROCEDURAL BACKGROUND:

3.1.	The dispute was entered in to the Nominet Dispute Resolution Service (DRS) on 6 February 2006.  Hard copies of the Complaint were received in full by Nominet on 7 February 2006 and on the same day the Complaint was validated by Nominet and a copy of the Complaint sent to the Respondent.

3.2.	On 9 February 2006, the Respondent filed a response.  The electronic response was entered in to the DRS system on 13 February 2006 and on 17 February 2006 a copy of the response was sent to the Complainant.

3.3.	On 23 February 2006 the Reply was entered in to the DRS system and a copy sent to the Respondent the same day.

3.4.	Informal mediation failed to achieve a resolution of the dispute and on 24 March 2006, the Complainant paid the fee to obtain an Expert Decision.

3.5.	On 31 March 2006, Veronica Bailey, the undersigned Expert (“the Expert”) having confirmed to Nominet that she was independent of each of the parties and that she knew of no matter which ought to be drawn to the attention of the parties which might appear to call in to question her independence and/or impartiality, was appointed Expert.

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES

4.1.	None.

5.	FACTS

5.1	The Domain Name, playboyaccesories.co.uk was registered in the Respondent’s name on 15 February 2005.

5.2	The Complainant has UK trade mark registrations as well as community trade mark registrations for and incorporating the word “PLAYBOY” in respect of a wide variety of goods and services, including jewellery in class 14.

5.3	The Complainant has been using the PLAYBOY mark for over 50 years and publishes the Playboy magazine which was launched in the US and the UK in 1953.

5.4	The Complainant registered the domain names playboy.com in February 1994 and playboyaccessories.co.uk in August 2003.  The domain name playboyaccessories.co.uk is used to host a website under licence from the Complainant.

6.	THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1		The Complainant has registered and unregistered Rights in respect of a name or mark which is identical or similar to the Domain Name:

6.1.1	The Complainant owns approximately 1,716 trade mark registrations and applications worldwide for or incorporating PLAYBOY, of which over 100 are UK and Community trade mark registrations and applications.  These registrations cover a wide variety of goods and services, including jewellery in Class 14;
6.1.2	The Complainant has a substantial global reputation in the PLAYBOY mark which it has been using for over 50 years.  The Complainant uses the PLAYBOY mark not only in connection with Playboy magazine that it publishes in the UK and internationally but also in connection with Playboy television network and a wide range of consumer products including jewellery of the type featured on the website reached via the disputed Domain Name;
6.1.3	The Complainant registered domain names playboy.com in February 1994 and playboyaccessories.co.uk in August 2003. The domain name playboyaccessories.co.uk is used to host a website operated by a third party under licence from the Complainant.  The Complainant also markets a range of accessories and jewellery on its www.playboystore.com and playboy.co.uk websites;
6.1.4	In addition to its trade mark registrations, the Complainant has common law passing off rights in the PLAYBOY mark by virtue of the substantial reputation it has acquired in this brand which extends to the sale of jewellery and these unregistered rights in the name is sufficient to establish Rights for the purposes of a Complaint;
6.1.5	The Domain Name predominantly incorporates the Complainant’s PLAYBOY trademark.  The addition of generic suffix “accesories” (sic) does not detract from the emphasis on the PLAYBOY mark which is the distinctive element of the Domain Name.  “PLAYBOY” will be recognised by internet users as a well known brand distinctive of the Complainant’s business and the suffix “accessories” will be understood by internet users to describe the nature of the goods offered for sale under the PLAYBOY brand.
6.1.6	The Domain Name is substantially similar to the Complainant’s domain name playboyaccessories.co.uk used by the Complainant’s authorised UK licensee.  The sole difference between the two domain names is the omission of an “s” in the word “accessories”.  The Complainant contends that this spelling error is too minor to be noticed by the vast majority of Internet users and is not sufficient to distinguish the two domain names in a meaningful way.

6.2		The Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration and specifically refers to paragraphs of the Policy to support its contention of Abusive Registration as follows:

6.2.1	3(a)(i)(B)  Policy

(i)	The Domain Name was registered primarily as a blocking registration against the Complainant’s well known PLAYBOY mark and “playboyaccessories” name in which the Complainant has Rights.
(ii)	The Complainant registered the Domain Name on 15 February 2005, significantly after the Complainant launched its website at www.playboyaccessories.com in 2003.  In light of the Complainant’s global reputation in the PLAYBOY name and use of the playboyaccessories.com domain name the Complainant cannot maintain that he was unaware of the Complainant’s rights at the time of registration of the Domain Name.
(iii)	The Respondent does not offer or otherwise deal in any Playboy related products and its site is no more than a portal to third party sites and products.  The Respondent has no cause to use the Complainant’s PLAYBOY mark or “playboyaccesories” name.
(iv)	Many internet users will misspell the word “accessories”.  The Respondent is typo-squatting and has registered the Domain Name to prevent the Complainant from using it for the legitimate reason of redirecting users who have made an inadvertent spelling error.

6.2.2	3(a)(i)(C) Policy
(i)	The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant’s business;
(ii)	The Respondent’s site is a portal advertising and linking to other websites supplying goods and services the same or similar to those provided by the Complainant, none of which have any apparent connection with the Complainant or Complainant’s PLAYBOY brand;
(iii)	The Respondent is typo-squatting with the intention of diverting users away from the Complainant’s site to websites selling products which compete with the Complainant’s products.
(iv)	The Respondent’s primary purpose in registering the Domain Name was to target the Complainant’s actual and potential customers and divert them from the www.playboyaccessories.co.uk website by unfairly exploiting the Complainant’s Rights in the PLAYBOY mark and the “playboyaccessories” name.

6.2.3	3(a)(ii)  Policy	
(i)	The Respondent’s use of the Domain Name which is similar to the PLAYBOY mark and essentially  identical to the “playboyaccessories” domain name confuses people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
(ii)	The likelihood of confusion combined with the potential for disruption or detriment is capable of amounting to Abusive Registration.

6.2.4	3(a)(i)(A) Policy
	
(i)	The Respondent registered the Domain Name for the purpose of selling it to the Complainant for valuable consideration in excess of the respondents documented out of pocket expenses directly associated with acquiring or using the Domain Name;
(ii)	At the top right hand corner of the website to which the Domain name resolves is a prominent link labelled “THIS DOMAIN IS FOR SALE”.  The link opens a form to enable a message to be sent to the Respondent.  The prominence of the link and the fact that the site is only a portal linking to other sites suggests that that the primary reason for registering the Domain Names was to solicit offers to purchase the Domain Name from the Complainant or a competitor.

6.2.5	1(i) and (ii) Policy

In addition to the non exhaustive list of factors in paragraph 3 of the Policy, the Complainant submits that the Domain name is an Abusive Registration because:
(i)	The Complainant has not authorised the Respondent to use the PLAYBOY mark or the “playboyaccessories” name and the Respondent’s conduct in registering the Domain Name unfairly took advantage of and is unfairly detrimental to the Complainant’s established reputation in the PLAYBOY mark and the “playboyaccessories” name. 
(ii)	The Respondent registered the Domain Name after the Complainant had already built up a substantial reputation in the PLAYBOY mark, has no legitimate reason for registering the Domain Name and made the registration in a manner that unfairly took advantage of and is unfairly detrimental to the Complainant’s Rights;
(iii)	 The Respondent uses the Domain Name to attract users looking for Playboy products and is capitalising on the accidental misspelling of the Complainant’s “playboyaccessories” name by free-riding on the Complainant’s rights to obtain unjustified commercial advantage for itself.
(iv)	Permitting the Domain Name will encourage others to engage in similarly unfair behaviour. This and other aspects of the Respondent’s behaviour may serve to erode the distinctiveness of the PLAYBOY brand and “playboyaccessories” name to the Complainant’s detriment.
(v)	The Domain Name incorporating the famous PLAYBOY mark and “playboyaccessories” linked to portal sites which offer non-Complainant goods may confuse consumers into wrongly believing that links on the Respondent’s website are in some way affiliated, endorsed or sponsored by the Complainant.  

Respondent

6.3	 The Respondent’s submissions in its Response are as follows: 

“Dear Sirs, The domain playboyaccesories.co.uk was bought because it is combined of two generic words "Playboy Accesories". There is no trademark on the term "Playboy Accesories". The fact that the complainant has a trademark on the term "Playboy" doesn't mean it has rights on "Playboy Accesories". For example, there is an US trademark on "THE LOUISIANA PLAYBOY" (Registration Number 2176926) which does not belong to the complainant. Therefore, we do not believe the complainant has rights on our domain name. Best regards, ewca.org”

Complainant’s Reply

6.4		In addition to the original contentions set out in its Complaint, the Complainant:
(i)	denies that the Domain Name consists of two generic words;
(ii)	contends that the word PLAYBOY is not a generic word as it does not describe a class or type of goods or services but is capable of distinguishing the goods of one business from those of another.
(iii)	The word “playboy” is a noun describing a type of person and is not a descriptor of any type of goods or services and even if the word has an ordinary meaning does not prevent someone acquiring rights in it by use or registration;
(iv)	The use of the Domain Name linked to a website which sells jewellery and body piercing is likely to cause confusion and is an infringement and is of the Complainant’s trade mark registrations for the PLAYBOY mark;
(v)	THE LOUISIANNA PLAYBOY trade mark registration is irrelevant as it as it relates to fresh vegetables in Class 31 which is very different from the Complainant’s business and does not go to show that the Complainant does not have rights in respect of the PLAYBOY mark in respect of a wide range of other goods. 
(vi)	By not providing any argumentation, evidence or denial of the Complainant’s allegation that the Domain Name is an Abusive Registration, the Respondent accepts that to the extent that the Complainant has rights in the Domain Name, the Domain Name is an Abusive Registration.

7.	DISCUSSION AND FINDINGS

Burden of Proof 

7.1.	Paragraph 2 of the Policy requires the Complainant to prove on the balance of probabilities that:

i	It has rights on a name or mark that is identical or similar to the Domain Name;
ii	The Domain Name in the hands of the Respondent, is an abusive registration (as the capitalised terms are defined in paragraph 1 of the Policy).

Rights

7.2.	Rights are defined in Paragraph 1 of the Policy as follows:  “includes, but is not limited to, rights enforceable under English law.  However, the Complainant would be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.

7.3.	The Complainant is the registered proprietor of a number of registered UK and community trade marks for the word mark PLAYBOY and has been using the mark for over 50 years.  Copies of the trade mark registrations submitted with the Complaint show that the mark is registered in respect of a wide variety of goods and services including jewellery in class 14.  The Complainant has established significant reputation in the PLAYBOY brand in the UK and internationally in connection with “Playboy” magazine which it publishes and also in connection with consumer products, including jewellery items of the type featured on the website to which the disputed Domain Name resolves.  The Complainant is the registrant of the domain name, playboyaccessories.co.uk.

7.4.	It is clear that the Complainant has Rights in the name PLAYBOY by virtue of its numerous trade mark registrations for the PLAYBOY brand.  In addition the Complainant is the registrant of the domain name, playboyaccessories.co.uk.  The disputed Domain Name is similar to the Complainant’s registered trade mark PLAYBOY.  Further, the only difference between the disputed Domain Name and the Complainant’s domain name playboyaccessories.co.uk is the omission of the letter “s” in the word “accessories” in the Domain Name.  This is, in my view, clearly immaterial particularly given that the omission of the letter “s” could be a common and frequent typographical error made by Internet users when entering the Claimant’s domain name.  

7.5.	The Respondent submits the Domain Name is made up of two generic words “Playboy Accesories” for which there is no registered trade mark and refers to the US trade mark “THE LOUISIANA PLAYBOY”.   The Respondent’s argument has little merit.  The Complainant has numerous trade mark registrations for the name “PLAYBOY” which is the same name as used in the Domain Name and the word “Accesories” is a misspelling of a word used in connection with the Complainant’s registered .uk domain name, playboyaccessories.co.uk.  The Respondent has submitted no evidence as to the U.S. trade mark.  The Complainant in its Reply states that the trade mark is registered in class 31 for fresh vegetables.  Even if there is a registration for THE LOUISIANA PLAYBOY for fresh fruits in the U.S. this does not detract from the rights the Complainant has in its numerous trade mark registrations for “PLAYBOY”.    As stated by the Appeal Panel in DRS 00248 Seiko. UK Limited v Designer Time/Wanderweb the requirement to demonstrate Rights is not a particularly high threshold test and was satisfied by showing that that the Complainant was the owner of the trade mark forming part of the domain name.   

7.6.	Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.

7.7.	Having found that the Complainant has Rights as required by paragraph 2ai of the Policy, I must now go on to consider whether the Domain Name is in the hands of the Respondent an Abusive Registration.

Abusive Registration

7.8.	Abusive Registration is defined in Paragraph 1 of the Policy as a domain name which either:

i	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

7.9.	Paragraph 3 of the Policy sets out a non-exhaustive list of the factors which may be evidence that the Domain Name is an Abusive Registration. The  most relevant are set out below:

3	a  i 	Circumstances indicating that the Respondent has registered or has otherwise acquired the Domain Name primarily: 
A      for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the Domain Name;
B 	  as a blocking registration against a name or mark in which the Complainant has Rights; or
C	  for the purpose of unfairly disrupting business of the Complainant;

ii   	Circumstances indicating that the Respondent is using the Domain Name in a way which is confusing people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and

7.10.	The evidence produced by the Complainant shows that the Domain Name resolves to a website with the words “PLAYBOY ACCESSORIES” at the top left hand side at the right hand side the words “THIS DOMAIN IS FOR SALE and provides a portal linking to other websites supplying jewellery similar to that provided by the Complainant.

7.11.	There is no evidence of any prior relationship between the Complainant and the Respondent and there appears to be no legitimate reason why the Respondent should be using the Complainant’s PLAYBOY trade mark in connection with the website to which the Domain Name resolves.  Further, that website not only features the Complainant’s trade mark but also feature the Complainant’s name “PLAYBOY ACCESSORIES” (with the correct spelling) which is used by the Complainant’s in its domain name playboyaccessories.co.uk and provides links to other providers of jewellery in competition with the Complainant.  By using the Complainant’s mark and name in this manner without authority, it is clear that Respondent has intended to benefit from attracting additional traffic to the website by those looking for the PLAYBOY brand and PLAYBOY accessories.  The Domain Name has therefore been used in a manner that took advantage of and was unfairly detrimental to the Complainant’s Rights and that, on the balance of probabilities, the Domain Names was registered primarily for the purpose of disrupting the business of the Complainant.  Accordingly, the Expert finds that the requirements of 3 a i C of the Policy are satisfied.

7.12.	The Domain Name registration relates to the misspelled name “playboyaccesories.”  Whilst this registration will prevent registration by the Complainant of the incorrect spelling of “playboyaccessories” I am not satisfied that this amounts to a blocking registration against the PLAYBOY mark or “playboyaccessories” name as required by paragraph 3 a I B of the Policy. 

7.13.	However, there has been a long line of cases where misspelling of a name or mark in which the Complainant has rights amounts to typo-squatting and has been found to constitute Abusive Registration.  These cases include typo-squatting of the Morgan Stanley name (DRS 02959; DRS 02961; DRS 03054; and DRS 03189); endsligh.co.uk (DRS 02949), carfonewharehouse.co.uk (DRS 02974) and kurtkeiger.co.uk (DRS 03269).  It appears that the Respondent is engaged in a form of typo squatting and is using the Domain Name to trade off the goodwill and reputation that the Complainant has in its registered trade mark PLAYBOY and its name “playboyaccessories” which the Complainant uses in its domain name playboyaccessories.co.uk..

7.14.	Whilst there is no evidence that the Respondent is seeking valuable consideration in excess of the Respondent’s out of pocket expenses for the Domain Name as required by paragraph 3aiA of the Policy, paragraph 3 provides a non-exhaustive list of factors which may be taken into consideration in determining whether the Domain Name is and Abusive Registration.  By advertising that the Domain Name is for sale on the website to which it resolves, it appears that the Respondent is seeking for reward an onward sale of the Domain Name, incorporating the well known PLAYBOY brand, and in so doing is taking unfair advantage of the Complainant’s Rights.  

7.15.	Whilst the Complainant has produced no evidence that the Respondent’s use of the Domain Name has confused people, it is likely, on the balance of probabilities that, in featuring the Complainant’s words “PLAYBOY ACCESSORIES” prominently on the website (with the correct spelling of the word “ACCESSORIES”) that people looking for the Complainant’s brand PLAYBOY and its domain name playboyaccessories.co.uk, will have been confused into mistakenly believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant as required by paragraph 3 a ii of the Policy.

7.16.	I therefore conclude taking into consideration the matters above, that on the balance of probabilities the Domain Name in the hands of the Respondent constitutes an Abusive Registration within the meaning of the DRS Policy.

8.	DECISION

For the reasons set out above, the Expert finds that on the balance of probabilities the Complainant has Rights in the name which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration and directs that the Domain Name be transferred to the Complainant.

……………………………………
VERONICA BAILEY

								14 April 2006