Playboy
Enterprises International Inc. v. BEG Service KB
Case No.
D2001-0494
1. The
Parties
The Complainant is
Playboy Enterprises International Inc., a Delaware corporation with its
principal place of business at Chicago, Illinois, U.S.A. The Complainant
is represented by Ms Suzanne V. Wilson of Arnold & Porter, Attorneys,
of Los Angeles, California, U.S.A.
The Respondent is BEG
Service KB, a Swedish corporation of Stockholm, Sweden. The Respondent
is represented by Attorney Michael Norstrand of the law firm Litus AB of
Stockholm, Sweden.
2. The Domain
Name and Registrar
The domain name at
issue is <playboycasino.com>. The domain name is registered with Network
Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
("NSI").
3. Procedural History
The Complaint submitted
by Playboy Enterprises International Inc. was received on April 4,
2001, (electronic version) and April 5, 2001, (hard copy) by the World
Intellectual Property Organization and Mediation Center ("WIPO Center").
On April 9, 2001,
a request for Registrar verification was transmitted by the WIPO Center
to NSI, requesting it to:
Confirm that a
copy of the Complaint had been sent to it by the Complainant as requested
by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental
Rules"), paragraph 4(b).
Confirm that the
domain name at issue is registered with NSI.
Confirm that the
person identified as the Respondent is the current registrant of the
domain name.
Provide full contact
details, i.e., postal address(es), telephone number(s), facsimile number(s),
email address(es), available in the Registrar’s WHOIS database for the
registrant of the disputed domain name, the technical contact, the administrative
contact and the building contact for the domain name.
Confirm that the
Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current
status of the domain name.
By email dated April 12,
2001, NSI advised WIPO Center as follows:
NSI had received
a copy of the Complaint from the Complainant.
NSI is the Registrar
of the domain name registration <playboycasino.com>.
The Respondent
is shown as the "current registrant" of the domain name.
The administrative
and billing contact is B E Gustafsson at the same address
as the Respondent.
NSI’s 5.0 Service
Agreement is in effect.
The domain name
registration <playboycasino.com> is currently in "Active"
status.
NSI has currently
incorporated in its agreements the policy for Uniform Domain Name Dispute
Resolution adopted by the Internet Corporation for Assigned Names and
Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from NSI
that the domain name in question is still "active" indicates the
Respondent has not requested that the domain name at issue be deleted from
the domain name database. The Respondent has not sought to terminate the
agreement with NSI. Accordingly, the Respondent is bound by the provisions
of the Policy. The Respondent has not challenged the jurisdiction of the
Panel.
Having verified that
the Complaint satisfied the formal requirements of the Policy and the Rules
for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on
April 17, 2001, transmitted by post-courier and by email a notification
of the Complaint and Commencement of Administrative Proceedings to the Respondent.
A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected
to have its Complaint resolved by a three-person panel; it has duly paid
the amount required of it to the WIPO Center.
The Respondent was
advised that a Response to the Complaint was required within 20 calendar
days. The Respondent was also advised that any Response should be communicated,
in accordance with the Rules, by four sets of hard copy and by email.
On May 4, 2001, the
Respondent had sought an extension of time for filing an additional Response;
however, in an email of the same date, to the Respondent's counsel, the
Center indicated that it could not grant the request. The Respondent
made no subsequent request that the Panel consider an extension. The reasons
for the extension did not strike the Panel as strong.
The Response was received
by the WIPO Center on May 6, 2001 (electronic) and May 9, 2001 (hard copy).
WIPO Center invited
the Honorable Sir Ian Barker QC of Auckland, New Zealand
to serve as Presiding Panelist in the case. It invited Peter L. Michaelson,
Esq. of Michaelson & Wallace of Red Bank, New Jersey, U.S.A. and Professor
G.W.G. Karnell of the Stockholm School of Economics, Stockholm, Sweden to
be Panelists. It transmitted to each of them a statement of acceptance and
requested a declaration of impartiality and independence.
All Panelists duly
advised acceptance and forwarded to the WIPO Center an executed declaration
of impartiality and independence. The Panel finds that the Administrative
Panel was properly constituted in accordance with the Rules and the Supplemental
Rules.
On May 22, 2001,
WIPO Center forwarded to the Panel by courier the relevant submissions and
the record. In terms of Rule 5(b), in the absence of exceptional circumstances,
the Panel is required to forward its decision by June 4, 2001.
The Panel has independently
determined and agrees with the assessment of WIPO Center that the Complaint
meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is
a worldwide provider of ‘adult’ lifestyle entertainment through print, cable
television, videotape and the internet.
Its products and services
include printed magazines, specialty publications, videotapes, cable television
channels, online information and entertainment and hospitality services
in a number of countries. It owns, among other trademarks, the trademark
"PLAYBOY". It has numerous registrations for this mark in
the United States, Sweden and elsewhere. It uses and licenses its PLAYBOY
mark in association with the promotion, advertisement and sale of a wide
variety of goods and services, including those in the entertainment, gaming
and computer industries. It also markets its marks on apparel, accessories
and other products sold throughout the world, in stores, through catalogues,
and on-line through the internet.
The Complainant owns
additional marks incorporating the expression "PLAYBOY", including the "PLAYBOY
CASINO" mark which is registered in Greece, the U.K. and Australia.
The Complainant has
been involved in the gaming industry since it first opened a casino in 1966.
The mark PLAYBOY CASINO is used by the Complainant in connection with its
gaming activities.
The Complainant has
spent substantial time, effort and money advertising and promoting its marks
throughout the United States, Europe and the world. The distinctiveness,
strength and fame of the PLAYBOY mark have been acknowledged by a number
of courts. See, e.g., Playboy Enters., Inc. v. Baccarat Clothing Co,
Inc., 692 F.2d 1272 (9th Cir. 1982); and Playboy
Enters., Inc. v AsiaFocus Int’l, Inc., 1998 WL 724000 (E.D. Va. Apr.
10, 1998).
In connection with
its marks, Complainant has established internet websites, including those
located at the domain names <playboy.com>, <playboytv.com>,
<playboystore.com>, and <playboyauctions.com> and the <playboy
cyber club> site. The websites allow computer users to access information
regarding Complainant and its products and services. The websites contain
information regarding its entertainment and hospitality services, occasionally
including those provided under the PLAYBOY CASINO mark.
5. Parties’ Contentions
Complainant:
The disputed domain
name <playboycasino.com> is identical to Complainant’s trademark PLAYBOY
CASINO. The domain name is confusingly similar to the Playboy marks.
Courts have recognized
that consumers expect to find a company on the internet at a domain name
address comprised of the company’s name or marks. See, e.g., Panavision
Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir.
1998) ("A customer who is unsure about a company’s domain name will
often guess that the domain name is also the company’s name. … [A] domain
name mirroring a corporate name may be a valuable corporate asset, as it
facilitates communication with a customer base."). This is all the
more so when, the Complainant uses the internet to market or sell its goods
and services. Because PLAYBOY CASINO is the trademark for Complainant’s
casino and gaming services and entertainment, consumers may expect to find
Complainant’s website at <playboycasino.com>. Because Respondent has
registered <playboycasino.com>, however, those consumer expectations
are frustrated.
Respondent has no connection
or affiliation with Complainant. Respondent has not received any license
or consent, express or implied, to use the marks in a domain name or in
any other manner.
Respondent has not
used the infringing domain name in connection with a bona fide
offering of goods or services. Respondent does not have a trademark registration
for "playboycasino" and could not obtain one.
Respondent has not
made a legitimate non-commercial or fair use of the infringing domain name.
After it learned that
Respondent had registered the domain name the Complainant, through its counsel
in Sweden, sent a letter dated August 3, 2000 to the Respondent requesting
the release or transfer of the infringing domain name. Respondent neither
replied to the letter nor released the registration.
By letter dated October 10,
2000, Complainant’s counsel again wrote to Respondent regarding the infringing
domain name, offering to pay Respondent’s out-of-pocket costs if he would
transfer the domain name. Again, Respondent neither replied nor released
the registration. The Respondent subsequently renewed the domain name registration
for another two years from October 25, 2000.
The Complainant’s marks
are famous throughout the world. The fame and reputation of a trademark owner’s
mark can be persuasive in determining a respondent’s bad faith intent in registering
a domain name that contains the famous mark. See Telstra
Corp. Ltd v. Nuclear Marshmallows
D2000-0003 (WIPO February 18, 2000). Given the fame of the marks, "it
is not possible to conceive of a plausible circumstance in which the Respondent
could legitimately use the [infringing domain name]. It is also not possible
to conceive of a plausible situation in which the Respondent would have been
unaware of this fact at the time of registration". Accordingly, Respondent
has registered the infringing domain name in bad faith.
Respondent also has used
the infringing domain name in bad faith. Respondent has not linked the domain
name to an active website, but "the passive holding of the domain name,
without use in commerce, may support a holding of use in bad faith". Recordati
S.P.A. v. Domain Name Clearing Co.
D2000-0194 (WIPO July 21, 2000).
The domain name was
registered because of the registrant’s intention to start up a casino business
activity on the internet. The name "playboy" was chosen because
the Respondent wished to name the site by allusion to a playboy who of common
knowledge is a rich young man traveling around the world, who does not work
for earning a living but is just having a good time and spending money on
such as gambling.
The domain name was
not registered with the aim to be mixed up with the Complainant’s "pornographic
business activities".
The word "playboy"
is a compound word composed of "play" and "boy". Both
these words are extensively used in different combinations of words and
the words do also separately have their own meaning. Moreover, the word
"play" and "boy" when combined refers to a rich young
gambling man as stated above. Thus, the Complainant has no exclusive right
to the word "playboy" as the word itself has a meaning commonly
used with no reference to the pornographic business activities of the Complainant.
The word "playboy" must accordingly be differentiated from a name
which is a distinctive mark of a product or a business activity where the
name itself does not have its own meaning but does only characterize the
product or business activity in question.
An article in a Swedish
daily newspaper, Svenska Dagbladet, shows that the concept "playboy"
has been applied in accordance with its meaning as stated above.
The parties are active
in business fields completely different from each other, as well as focus
on different clienteles: there is no risk the Complainant’s customers will
be confused or be mistaken as regards the Respondent’s activities on the
site <playboycasino.com>.
The Complainant is
known for its pornographic activities. It is true that the Complainant during
the years has extended its entertainment business activities, but in 1997
when the Respondent registered the domain name in dispute, the Complainant
was not involved in casino activities on the internet. Moreover, due to
legal restrictions in the U.S.A. at that time, it was not even possible
for the Complainant to carry on casino activities on the internet. Only
recently has it become legally possible for the Complainant to carry on
casino activities on the internet.
The Respondent has
not registered the domain name in bad faith and has accordingly also not
used the domain name in bad faith.
The Respondent did
not reply to the letters sent by the Complainant because it is well known
that when a respondent has entered into negotiations with the Complainant
and the negotiations have resulted in an offering to the complainant to
buy the domain name, a Panel has several times regarded such an offering
as an evidence of bad faith on behalf of the respondent.
6. Discussion and
Findings
Paragraph 15(a) of
the Rules instructs the Panel to:
"decide a complaint
on the basis of the statements and documents submitted in accordance with
the policy, these rules and any rules and principles of law that it deems
applicable".
The burden for the
Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain
name registered by the Respondent is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights;
- That the Respondent
has no legitimate rights or interests in respect of the domain name; and
- The domain name
has been registered and used in bad faith.
In the view of the
Panel the disputed domain name is identical to the Complainant’s marks,
PLAYBOY CASINO. It does not matter that those particular registrations are
not in the same jurisdiction as the Respondent.
In the Panel’s view,
the Respondent has no legitimate rights to or interest in the domain name.
The Complainant gave it none. The Respondent’s claim to set up a casino
utilizing the concept of a rich young gambling man strains credulity. The
name "Playboy" and the services and products which the Complainant
advertises and sells worldwide are well known. It is naïve to suggest
that the Respondent had never heard of the Complainant and its activities.
The Respondent has not rendered credible its contention that the parties
would be active in completely different fields. If there ever would be an
activity on the part of the Respondent whilst using the domain name, as
the Respondent seems to suggest, such activity would likely coincide with
the Complainant’s. The statement that the Respondent aims at a different
business field is simply not plausible. Rich young men with a penchant for
gambling are probably very desirable customers and website visitors from
the Complainant’s point of view. Accordingly the Panel finds the second
criterion proved.
Similarly, the third
criterion. It strains belief that the Respondent did not know of the Complainant
and its heavy involvement in the entertainment industry at the time the
name was registered. It may not have known of the registration of the mark
"PLAYBOY CASINO" in UK, Greece and Australia but it would have
known of the mark "PLAYBOY".
The Respondent’s failure
to develop the website and to reply to the Complainant’s letters are all
indicative of continuing bad faith use. In other cases known to members
of the Panel, a reasoned reply to a "cease and desist" letter
can often help a respondent show that it comes within the criteria of paragraph
4(b) of the Policy and can also help to show good faith. However, such a
reply is non-existent here.
Accordingly for the
reasons stated, the Panel finds the Complaint proved.
7. Decision
For the foregoing reasons,
the Panel decides:
(a) That the
domain name registered by the Respondent is confusingly similar to
the trademark to which the Complainant has rights;
(b) That the
Respondent has no rights or legitimate interests in respect of the
domain name; and
(c) The Respondent’s
domain name has been registered and is being used in bad faith.
Accordingly, pursuant to
paragraph 4(i) of the Policy, the Panel requires that the registration of the
domain name <playboycasino.com> be transferred to the Complainant, Playboy
Enterprises International Inc.
Hon. Sir
Ian Barker QC Presiding Panelist
Peter L.
Michaelson, Esq.
Panelist
Professor
G.W.G. Karnell
Panelist
Dated: May
28, 2001
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