Nominet UK Dispute Resolution Service

DRS Complaint No 05639

Decision of Independent Expert

1.	Parties

Complainant:	Playboy Enterprises International, Inc.	
Country:	US

Respondent:	DPS Distribution
Country:	GB

2.	Domain Name

playboyclothing.co.uk

3.	Procedural Background

The Complaint was validated by Nominet on 16 April 2008 and sent to the Respondent on the 17 April 2008 by both post and email to the respective addresses set out in the Registry details.  Nominet informed the Respondent that it had 15 working days, i.e. until 12 May 2008, to respond to the Complaint.

By 13 May 2008, no formal Response having been received from the Respondent, Nominet wrote to the Complainant’s representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision.  I responded to Nominet confirming that I was able to provide a decision.  

The matter was thereafter duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a response to the Complaint.  From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent using the contact details held on Nominet’s Register.  

When registering a .uk domain name applicants agree to be bound by Nominet’s Terms and Conditions.  Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

“4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register”

In addition paragraph 2(e) of the Dispute Resolution Service Procedure (the “Procedure”) states that:- 

“e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.     if sent by facsimile, on the date transmitted; or
ii.    if sent by first class post, on the second Day after posting; or 
iii.   if sent via the Internet, on the date that the communication was transmitted;
iv.  and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.” 

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  

I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in Paragraph 15 that:-

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.”

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision. 

I will draw such inferences from the Respondent’s failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5.	The Facts

The Complainant is the publisher of the well known magazine published under the title ‘PLAYBOY’.  It is the proprietor of numerous trade mark registrations around the world, including in the UK, some of which include in their specification of goods, clothing.  The Complainant has published the above mentioned magazine continually since 1953.

In addition to its publishing activities, the Complainant has widened its activities, to include the sale of consumer products, including the sale of clothing and lingerie.

The Domain Name was registered on 26 April 2004.  It is directed to a parking page operated by the registrar who registered the domain for the Respondent, 123.reg.

The Complainant’s legal representatives wrote a letter of complaint to the Respondent on 2 April 2008, but no response was received.

The Parties’ Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an “Abusive Registration” as defined in the Dispute Resolution Service Policy (the “Policy”).

In support of its claim to Rights, the Complainant asserts the extent of its use of its name, and also the various trade mark registrations that it owns. 

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -   

i)	the Respondent registered the Domain Name as a blocking registration against the Complainant’s well-known mark.  The Respondent must have been aware of the Complainant’s substantial reputation at the time it registered the Domain Name (3(a)(i)(B) Policy); 

ii)	The Respondent has registered the Domain Name primarily for the purpose of disrupting the Complainant’s business.  The Respondent is targeting the Complainant’s actual and potential customers to draw them away from the Complainant’s website and divert them to its own domain name registration site (3(a)(i)(C) Policy);

iii)	The use of a the Domain Name which is very similar to the Complainant’s mark confuses or is highly likely to confuse people or businesses into believing that the Domain name is registered to or operated or authorised by or connected to the Complainant, which is all the more likely given that the Complainant licences third parties to use its mark in relation to clothing (3(a)(ii) Policy)

iv)	The extent of the Complainant’s reputation in the PLAYBOY mark and in respect of clothing, is such that it would be impossible for the Respondent to use the Domain Name to offer goods or services in a manner that did not infringe the Complainant’s Rights; and

v)	The Respondent registered the Domain Name after the Complainant had built up a substantial reputation in its PLAYBOY mark.  There was no legitimate reason for the registration and it took unfair advantage of and was unfairly detrimental to the Complainant’s Rights and erodes the distinctiveness of the PLAYBOY brand.

Respondent

As indicated above, the Respondent has not filed a Response.
 
6.	Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i)	it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities.  It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant’s Rights

The DRS Policy defines Rights as follows –

“Rights includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

The Complainant, is the proprietor of registrations for the trade mark ‘PLAYBOY’ and has used that mark, including use in respect of clothing, such that they have created extensive goodwill therein.  It is clear that the Complainant therefore qualifies as having the necessary Rights in that mark.  

The Policy requires such Rights to be in a name or mark identical or similar to the Disputed Domain Name.  The Domain Name is <playboyclothing.co.uk>  For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix.  The comparison is therefore between ‘PLAYBOY’ on the one hand, and ‘PLAYBOYCLOTHING’ on the other.  In my opinion the dominant and distinctive part of the Domain Name is the word PLAYBOY.  I therefore determine that the Complainant has established that it has Rights in a mark similar to the disputed Domain Name.   

It was said in an Appeal decision (DRS 04149) last year concerning the domain name <playboyracing.co.uk>, that the same Complainant had “strong Rights” in the name and mark PLAYBOY, and I would not disagree with that conclusion.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy defines an Abusive Registration 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”

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.  

The Complainant has set out specific grounds of complaint, which marry up broadly with certain grounds set out in the Policy, namely (a) a blocking registration, (b) unfairly disrupting the business of the Complainant, (c) use such that will create confusion, and also the more general submission that the Domain Name takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights.

The Complainant’s mark is very well know indeed, and in the circumstances where a domain name is registered which includes that mark, particularly in respect of goods or services for which the mark is used, one is likely to reach the conclusion in the absence of any evidence to the contrary, that it will have been registered specifically because it is likely that the general public will associate it with the use made of the mark by the Complainant.  In such circumstances, the claim that the registration has been made to cause disruption to the Complainant’s business, i.e. the diversion of internet users, many of whom will be the Complainant’s present or future customers, seems well founded, as does the general allegation that the registration will take unfair advantage of or be unfairly detrimental to the Complainant’s Rights.  In the absence of a Response from the Respondent explaining the reasons behind the registration of the Domain Name, I conclude that it was the Respondent’s intention to cause the effects as identified above, and as such determine that the registration is Abusive.  I should point out that I consider the Complainant’s belief that the Registrant is diverting users to its domain name registration service, to be misguided.  I understand the webpage to which the domain is pointing to be that of the registrar used to register the domain, and it is not the website of the Respondent.  This does not however diminish the diversionary effect of the Domain Name.

I am less persuaded that the registration is a blocking registration, given the extensive use of other domain names by the Complainant, or that the use by the Respondent falls within paragraph 3(a)(ii) (Confusion) of the Policy, given that the terms of that paragraph require actual confusion to be shown.  I do however think it is likely that confusion, at least initial interest confusion, would arise and consider such consequences to be covered by my conclusion above that the use takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights.

7.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name and mark which is similar to the Domain Name <playboyclothing.co.uk>, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds. 

The disputed Domain Name <playboyclothing.co.uk> should be transferred to the Complainant.

Simon Chapman

11 June 2008