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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Playboy Enterprises International Inc. v. Global Media Domain Trust

Case No. D2006-1543

 

1. The Parties

The Complainant is Playboy Enterprises International Inc. of Chicago, Illinois, United States of America, represented by Howard, Phillips & Andersen of Salt Lake City, Utah, United States of America.

The Respondent is Global Media Domain Trust of Denabi, Singapore.

 

2. The Domain Names and Registrar

The disputed domain names <playboyaccess.com>, <playboyvipservices.com> and <playboyworldwide.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2006, and simultaneously sent by express mail to the person first named as respondent in these proceedings, a certain Mr. Robert Paisola a/k/a TOP FORTY DOMAINS. On December 6, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 8, 2006, Go Daddy Software (“the Registrar”) transmitted by email to the Center its verification response stating that the Respondent named in the Complaint was not the holder of the domain names at issue. The Registrar provided the contact details for the administrative, billing, and technical contact of the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 21, 2006. 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2006. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2007.

The Center appointed Brigitte Joppich, James A. Barker, and Francine Tan as panelists in this matter on February 6, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

The Panel took note of the amendment to the Complaint, i.e., the fact that the holder of the domain names is not the original respondent (Mr. Robert Paisola a/k/a TOP FORTY DOMAINS) but the Respondent Global Media Domain Trust. In order to assess whether such change of registrant might imply a ‘cyberflight’ issue (i.e., avoiding or delaying judicial or UDRP proceedings by changing domain registration details after learning of a complaint), the Panel asked the Center to contact the Registrar and find out, inter alia ,when exactly the domain names were transferred to the Respondent Global Media Domain Trust. In its reply, the Registrar stated that the domain names were transferred to the Respondent on the following dates:

<playboyvipservices.com> on February 20, 2006 at 10:31:15 PM

<playboyworldwide.com> on December 7, 2006 at 11:58:23 AM

<playboyaccess.com> on December 7, 2006 on 11:58:23 AM

The Registrar also stated that the previous holder of all three domain names was Legal Department, Trumpworldwide of Sandy, Utah, United States of America.

The Registrar also informed the Center that these domain names were using Domains by Proxy to shield their owner’s identity.

 

4. Factual Background

The Complainant is an international multimedia entertainment company publishing the ‘Playboy’ magazine, a best-selling men’s magazine that was first published in 1954. The Complainant operates several leading men’s lifestyle and entertainment websites, including <playboy.com>, <playboystore.com>, and <playboytv.com>.

The Complainant is the registered owner of more than 1,700 trademark registrations for ‘PLAYBOY’ itself or in combination with other words as well as with stylized patterns in 163 countries, inter alia, US trademark No. 0600018 (registered in 1954), and many registrations covering interactive online computer entertainment services and the online provision of entertainment (“the PLAYBOY Marks”). The PLAYBOY Marks have been used by the Complainant in connection with the promotion, advertising and sale of ‘Playboy’ products and services, including its own distinctive entertainment content since the 1950s.

The disputed domain name <playboyvipservices.com> was acquired by the Respondent on February 20, 2006, and the domain names <playboyworldwide.com> and <playboyaccess.com> were acquired by the Respondent on December 7, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:

(i) The domain names are confusingly similar to the PLAYBOY Marks as they are all formed by combining PLAYBOY with generic terms that are descriptive of the Complainant or related to the Complainant’s operations and the addition of these terms does nothing to diminish the confusing similarity resulting therefrom.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in the domain names: The Respondent is not known by the disputed domain names, has not been authorized by the Complainant to use its PLAYBOY Marks and has never made any bona fide use of the domain names. The Respondent was using the domain names to resolve to a webpage located on the Complainant’s website at <playboy.com>, to resolve to <gov.sg>, to display links to adult entertainment offered online and to offer the domain names to the public at a price of US$ 10,000 each.

(iii) The Complainant concludes that the domain names were registered and used in bad faith as the Respondent registered the domain names fully including the Complainant’s famous PLAYBOY Marks. As the PLAYBOY Marks are widely known internationally and to be considered as famous, it is impossible for anyone to claim unawareness of the Complainant’s prior rights. Having been advised that the Complainant discovered the registration of the disputed domain names in March 2006, the Respondent contacted the Complainant and asked money from the Complainant for the transfer of the domain names well in excess of its out-of-pocket expenses. Later on, the Respondent offered the domain names to the public for US$ 10,000 each. According to the Complainant this constitutes bad faith use under paragraph 4(b)(i) of the Policy.

The Complainant further contends that the Respondent’s use of the domain names was bad faith use under paragraph 4(b)(iv) of the Policy, as the Respondent used the domain names to link them to websites publicizing goods and services offered by direct competitors of the Complainant to the public.

Finally, the Complainant contends that the Respondent’s bad faith use is established by the fact that the Respondent tried to hide its identity by using a domain name proxy service.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

(i) the domain names are identical or confusingly similar to the Complainant’s trademark, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names, and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names fully incorporate the Complainant’s highly distinctive PLAYBOY Marks. These marks were found to be famous and well established by numerous Panels (inter alia, Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745 -<playboy-photographer.com>; Playboy Enterprises International, Inc. v. Asia Sun, WIPO Case No. D2005-0767 - <playboymobile.com>).

The mere addition of the generic words ‘access’, ‘VIP services’ and ‘worldwide’ following the trademark does not eliminate the similarity between the PLAYBOY Marks and the domain names, as these words are common or generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829 - <drgrandel-online.com>; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 - <4microsoft2000.com>; Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016 - <playboychannel.com> and <playboynetwork.com>).

Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - <magnumpiering.com> et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 – <rollerblade.net>).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples that, if established by the Respondent, demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,:

(i) before any notice to the Respondent of the dispute, the use by the Respondent 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Respondent has not filed a response in this proceeding. The Respondent has not provided evidence of any of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain names. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrefuted.

The Respondent is neither commonly known by any of the domain names nor contends to make a legitimate non-commercial or fair use of any of the domain names. Finally, the Respondent’s use of the domain names is not connected either with a bona fide offering of goods and services. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of a domain name in bad faith, including:

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

The first issue at stake is whether the actions of the original respondent (Mr. Robert Paisola a/k/a TOP FORTY DOMAINS) may be taken into account when evaluating bad faith registration and use of the domain names by the Respondent Global Media Domain Trust, or whether only the actions of the Respondent Global Media Domain Trust are to be considered in this regard.

According to the information provided by the Registrar, the Respondent Global Media Domain Trust acquired the domain name <playboyvipservices.com> on February 20, 2006, and the domain names <playboyworldwide.com> and <playboyaccess.com> on December 7, 2006. Consequently, the Respondent has owned the domain name <playboyvipservices.com>, at best since the Complainant discovered the disputed registrations in March 2006.

According to an unrefuted statement by the Complainant, Mr. Robert Paisola a/k/a TOP FORTY DOMAINS identified himself to the Complainant as the beneficial owner of all three domain names <playboyvipservices.com>, <playboyworldwide.com> and <playboyaccess.com> on or around April 17, 2006, while using various services, fictitious business names and aliases, including ‘Trump Worldwide’, to shield his identity. Interestingly, again according to the information provided by the Registrar, the name ‘trumpworldwide’ was also used as second level domain name by the owner of the domain names <playboyworldwide.com> and <playboyaccess.com> before December 7, 2006.

While the precise nature of the relationship between the previous registrant of the domain names and the current registrant remains obscure, in the circumstances the Panel is prepared to treat their actions as related for the purpose of these UDRP proceedings.

(cf. Chippendales USA, LLC v. Registerfly.com, WIPO Case No. D2006-0488 - <chippendalecasino.com et al.>; Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969 - <antoniodefelipe.com>).

The Complainant’s trademark and service mark ‘PLAYBOY’ is widely known. It is therefore inconceivable that the Respondent acquired the disputed domain names without knowledge of the Complainant’s trademark rights. This assumption is supported by the fact that the Respondent began using the domain names to resolve to the Complainant’s own website. Therefore, the Panel concludes that the Respondent acquired all three domain names in bad faith.

The Respondent also used the domain names in bad faith. The Panel finds that the ‘SEDO parking’ in the present case clearly implies bad faith use by the Respondent under paragraph 4(b)(iv) of the Policy. By this means the Respondent redirected users to a parking website providing links to other online adult entertainment sites offered by competitors of the Complainant. In other words the Respondent attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website (cf. Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142 - <parcoursj.com>; J. Eberspдcher GmbH & Co. KG v. Reiner Fischbach, WIPO Case No. D2004-0293 - <eberspдcher.com>; Ceyx Technologies v. Ceyx.Com, WIPO Case No. D2001-0681 – <ceyx.com>).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <playboyvipservices.com>, <playboyworldwide.com> and <playboyaccess.com> be transferred to the Complainant.

Brigitte Joppich Presiding Panelist
James A. Barker Panelist	Francine Tan Panelist

Dated: February 21, 2007