Playboy Enterprises International, Inc. v. Domain Active Pty Limited
Case No. D2002-1156
1. The Parties
The Complainant is Playboy Enterprises International, Inc. of Chicago, Illinois,
United States of America, represented by Sprusons, Solicitors of Sydney, Australia.
The Respondent is Domain Active Pty Limited of Brisbane, Queensland , Australia,
represented by its Corporate Counsel, Justin Russom.
("the Domain Names"), all of which are registered with Fabulous.com
Pty Ltd. (formerly known as Domain Intellect Pty Ltd.)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
"Center") on December 20, 2002. On December 23, 2002, the Center transmitted
by email to Fabulous.com Pty Ltd. a request for registrar verification in connection
with the Domain Names. On January 6, 2003, Fabulous.com Pty Ltd. transmitted
by email to the Center its verification response confirming that the Respondent
is listed as the registrant and providing the contact details for the administrative,
billing, and technical contacts. The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on January
7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response
was January 27, 2003. The Response was filed with the Center on January
17, 2003.
The Complainant elected to have these proceedings decided by a three-member
Administrative Panel. Accordingly, the Center appointed Christopher P. Tootal,
David H. Bernstein and Dawn Osborne as panelists in this matter on February
4, 2003. 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 the Rules,
paragraph 7.
The Complainant has filed three Supplemental Submissions by way of reply to
the Response. While the Panel has noted their contents, the Policy makes no
provision for filing further submissions as a matter of right, and the Panel
declines to take these further submissions into account.
4. Factual Background
A. The Complainant is the owner of 40 Australian registrations (in various
classes) for the trademark PLAYBOY.
B. The Complainant is also the owner of 21 Australian registrations (in various
classes) for the trademark PLAYMATE.
C. The Domain Names were registered on various dates between July 16 and August 8,
2002.
5. Parties’ Contentions
A. Complainant
The Complainant asserts, inter alia, as follows:-
(i) Playboy magazine was first published in 1953. Shortly after its inception,
Playboy Enterprises International, Inc., or its predecessors in title ("Playboy"),
expanded its operations by engaging in entertainment businesses related to the
content and style of Playboy magazine, and licensing its trade marks
for use on various consumer products and services. Playboy’s trade marks are
critical to the success and potential future growth of its businesses. Such
trade marks include PLAYBOY, PLAYMATE, RABBIT HEAD DESIGN, and PLAYMATE OF THE
YEAR ("Playboy Trade Marks"), and serve as the basis for numerous
domain names related to its on-line business.
(ii) The Playboy Online group operates a network of Playboy-branded websites,
including PLAYBOY.COM, PLAYBOYTV.COM, STORE.PLAYBOY.COM and PLAYBOY CYBER CLUB
[the latter at CYBER.PLAYBOY.COM] (collectively "Playboy Websites"),
which are dedicated to the lifestyle and entertainment interests of consumers
around the world. Playboy’s websites are well positioned to provide attractive
on-line entertainment services due to the strength of the Playboy Trade Marks.
The group’s on-line destinations combine Playboy’s distinct attitude with extensive
and original content, a large community of loyal users and a wealth of e-commerce
offerings.
(iii) The PLAYBOY.COM site offers original Playboy content, which focuses on
areas of interest to its target audience, including topics such as Love &
Sex, Arts & Entertainment, Style, On Campus, Sports, World of Playboy, and
Playmates. In excess of 9 million visits to the PLAYBOY.COM website have been
made per month during the period November 1, 2001, to November 1, 2002, and
approximately 68 million pages of the PLAYBOY.COM website had been viewed by
internet users per month during that same period. PLAYBOY CYBER CLUB, a subscription
based site, offers exclusive insiders access to unique Playboy-branded content.
As of December 31, 2001 and 2000, the PLAYBOY CYBER CLUB had approximately 100,000
and 67,000 subscribers, respectively. The Playboy Store offers a wide variety
of branded products to its users. During the period November 1, 2001, to November
1, 2002, in excess of 2 million visits were made to the STORE.PLAYBOY.COM website
per month and approximately 5 million pages of the STORE.PLAYBOY.COM website
were viewed by internet users per month during the same period.
(iv) PLAYBOY is one of the best-known and most popular brands in the world.
One of the drivers of that brand image is Playboy magazine. Monthly circulation
of the U.S. edition of the magazine is approximately 3.2 million copies with
subscribers from more than 110 countries around the world, including Australia.
According to Spring 2002 data published by Mediamark Research, Inc., an independent
market research firm, the U.S. edition of Playboy magazine is read by
approximately one in every seven men in the United States aged 18 to 34. According
to the Audit Bureau of Circulations, an independent audit agency, with a circulation
rate base (the total newsstand and subscription circulation guaranteed to advertiser)
of 3.15 million at June 30, 2002. Of the top 200 U.S. consumer magazines (ranked
by paid circulation), Playboy magazine was the 19th highest-ranking U.S.
consumer publication. Playboy magazine’s rate base at June 30, 2002,
was larger than that of Newsweek, Cosmopolitan and Maxim,
as well as the combined rate bases of Rolling Stone, GQ and Esquire
(Source: ABC 6/30/02).
(v) Playboy licenses the right to publish 19 international editions of Playboy
magazine in Brazil, Bulgaria, Croatia, the Czech Republic, France, Germany,
Greece, Hungary, Italy, Japan, Mexico, the Netherlands, Poland, Romania, Russia,
Slovakia, Spain and Taiwan. The combined average circulation of the domestic
and international editions is currently approximately 5 million copies monthly.
From about February 1979 to January 1, 2000, an Australian edition of Playboy
Magazine Australian Playboy was published in Australia.
(vi) Playboy attracts new subscribers to the magazine through its own direct
mail advertising campaigns, subscription agent campaigns and the Internet, including
its website PLAYBOY.COM.
(vii) The Playboy Trade Marks are distinctive and famous worldwide and have
acquired a substantial reputation and goodwill. Playboy monitors trade mark
applications and trade mark use in countries throughout the world to protect
its trade marks and ensure that no entities engage in unauthorised use of any
of the Playboy Trade Marks. As a result of its diligent trade mark protection
efforts, it is understood that any mark containing the famous and distinctive
Playboy Trade Marks is used in connection with goods or services offered, sponsored
or authorised by Playboy.
(viii) Playboy’s products and services include, but are not limited to, printed
magazines, specialty publications, consumer products, apparel, videotapes, cable
television programming, and on-line information, retail and entertainment services
("Playboy Goods and Services"). Playboy uses and licenses its
Playboy Trade Marks in association with the promotion, advertisement and sale
of the Playboy Goods and Services around the world.
(ix) Playboy owns thousands of registrations for the PLAYBOY and PLAYMATE trade
marks worldwide, including but not limited to those trade mark registrations
granted by the Australian Trade Marks Office and the United States Patent &
Trade Marks Office for the trade marks PLAYBOY and PLAYMATE .
(x) Playboy has spent substantial time, effort and money (being millions of
US dollars per annum) advertising and promoting the Playboy Trade Marks throughout
the United States and internationally. As a result, the Playboy Trade Marks
have become internationally famous and Playboy has developed a substantial amount
of goodwill in its Playboy Trade Marks. In fact, the distinctiveness, strength
and fame of the PLAYBOY trade mark has been acknowledged by a number of Courts
in the United States of America, as well as the Australian Trade Marks Office.
(xi) There is no evidence that the Respondent is known by any of the Domain
Names nor do any of the Domain Names reflect the Respondent’s corporate name.
The Respondent is not (and has not) been commonly known by any of the Domain
Names to the best of the Complainant’s knowledge. The Respondent is not, and
cannot be the proprietor of any trade mark registration for the prefixes for
each of the Domain Names or any trade mark consisting of the Complainant’s famous
trade marks PLAYBOY and PLAYMATE. The Respondent has no connection or affiliation
with the Complainant and has not been licensed nor authorised to register the
Domain Names or in relation to any use of the Complainant’s famous PLAYBOY and
PLAYMATE trade marks.
(xii) The Respondent has not made a bona fide, legitimate non-commercial
fair use of any the Domain Names, or any use in connection with bona fide offering
of goods or services. Each of the Domain Names is used to re-direct internet
users to internet portals or directories operated by a company related to the
Respondent to obtain a commercial benefit trading on the Complainant’s reputation
and goodwill in its famous PLAYBOY and PLAYMATE trade marks (as discussed further
below).
(xiii) The fact that the Respondent has registered 75 domain names [the Panel
can find only 74 listed in the Complaint] containing the Complainant’s famous
PLAYBOY or PLAYMATE trade marks demonstrates a deliberate attempt by the Respondent
to trade off the Complainant’s Playboy Trade Marks, in particular, its extensive
international reputation in those trade marks. The registration of a large number
of domain names containing the same trade mark, or variations thereof, is sufficient
evidence of bad faith (see the Panel Decision in Playboy Enterprises, Inc.
v. Movie Name Company (WIPO Case No. D2001-1201
("However there are some eighteen domain names at issue here, all of
which clearly include or misspell the Complainant’s mark. This is no "mere
coincidence" and the sheer number of similar registrations here, alone,
is sufficient evidence of bad faith under Policy Paragraph 4(b)(iv) as the Respondent
is clearly using the numerous registrations to re-direct traffic to its commercial
website" – at page 7)). The Complainant also refers to the Panel decision
in Telstra Corporation Limited v. Ozuris (WIPO
Case No. D2001-0046) wherein the Panel found, among other things, that the
registrations of 15 domain names that involved the Complainant’s mark and a
series of services, products, geographical descriptors or generic words, "obviously
involved a pattern of conduct directed against the Complainant, stopping it
from reflecting its mark in corresponding domain names. I conclude that paragraph
4(b)(ii) is made out" (at page 7).
(xiv) In this regard, all of the Domain Names resolve to an internet portal
or web pages situated at roar.com. According to the search of the WhoIs
database for the domain name "roar.com". The registrant of that domain
name is the company "DBS Administration Pty Limited". Further, the
website situated at roar.com ("Roar Website") clearly indicates
that "roar" is a wholly owned subsidiary of Dark Blue Sea Limited.
(xv) According to search extracts exhibited by the Complainant, Dark Blue Sea
Limited is a shareholder of the Respondent. The current registered office and
principal place of business of the Respondent and Dark Blue Sea Limited (as
well as DBS Administration Pty Limited) are the same, namely, Level 23, Comalco
Centre, 12 Creek Street, Brisbane, Queensland. Further, two of the directors
and the company secretary of Dark Blue Sea Limited (namely, Vernon Alan Wills,
Richard Edward Moore and Gregory John Platz) are also the current directors
and company secretary for the Respondent. It is also noted that the "ICANN
accredited" Registrar of each of the Domain Names, Fabulous.com Pty Limited
(formerly known as Domain Intellect Pty Limited), has the same registered office
and principal place of business, as well as the same directors and company secretary
as the Respondent. [The Panel also notes that the e-mail replies received by
the Center from the Registrar of the Domain Names contain a disclaimer by "Dark
Blue Sea"].
(xvi) When most of the Domain Names are entered into an internet browser, they
resolve to an internet portal situated at roar.com entitled "Roar’s Best
Sites for : XXX", or "… ADULTS ONLY" or "… PORN" or
"… SEX", providing links to various adult entertainment website. Nearly
all of the Domain Names (save for "playboyclothes.com", "playboy-shop.com"
and "freeplaymate.com" [and "playboyclothing.com and "tv-playboy.com"
– Panel]) resolve to such internet portals situated at the Roar Website. [The
Panel notes that all the Domain Names now resolve to the "non-adult
advertiser homepage of Roar.com" (see paragraph 5B(iv) below)].
(xvii) The remaining Domain Names, namely "freeplaymate.com", "playboyclothes.com"
and "playboy-shop.com" [and "playboyclothing.com" and "tv-playboy.com"
– Panel] resolve to other internet portals situated at the Roar Website offering
various goods and services (including for example, clothing) in respect of which
the Complainant has trade mark registrations for its Playboy Trade Marks.
(xviii) In addition to using the Playboy Trade Marks to re-direct internet
traffic to the Roar Website (which website is related to the Respondent), the
Respondent is also using the name of a well-known celebrity, namely, "Britney
Spears" (spelt correctly as well as incorrectly) in conjunction with the
client’s "PLAYBOY" trade mark (ie. "britneyspearsplayboy.com",
"britney-spears-playboy.com" and "britneyspearplayboy.com")
to re-direct internet users to the Roar Website promoting adult entertainment
websites including, for example, a site headlined "Your #1 Guide to Naked
Celebs. Join Now! Only $2.95 for three days!"
(xix) Further, when certain of the Domain Names are entered into the web browser,
they also generate "pop-up" ads for various products including internet
cameras.
(xx) It is clear that the Roar Website is directed towards generating "targeted"
internet traffic for commercial gain "through [its] unique topic-based
approach. This market-leading innovation gives the advertisers streams of related
traffic via extensive categorisation, ensuring that you only receive interested
visitors to your site. You simply bid for placement on all relevant topics allowing
you to control where you sit within the results. … This allows you to manage
your advertising spend while receiving your desired amount of qualified traffic".
(xxi) The Domain Names are clearly being used to re-direct Internet users to
the Roar Website which, in this case, lists advertisers with the Roar Website
under the categories "Best Sites for : XXX" or "… ADULTS ONLY"
or "… PORN" or "… SEX". Accordingly, the Domain Names (containing
the client’s famous PLAYBOY and PLAYMATE trade marks are being used to re-direct
internet users (ie. "targeted traffic") to "adult entertainment/erotic
content" websites which pay to advertise with the Roar Website with a view
of attracting the "targeted" internet users. Therefore, the Respondent,
being a related company of DBS Administration Pty Limited and Dark Blue Sea
Limited, has clearly registered and is using the Domain Names as instruments
to re-direct for financial gain such "targeted traffic" (ie. those
internet users who have typed in domain names which contain the Complainant’s
famous PLAYBOY or PLAYMATE trade marks seeking adult entertainment websites)
to the Roar Website, which promotes advertised links to such adult entertainment
websites.
(xxii) In response to a cease and desist letter dated September 10, 2002, from
the Australian attorneys for the Complainant , the Respondent refused to cease
using (and to transfer to the Complainant) the Domain Names and has wrongly
asserted that the use in the Domain Names of the Playboy Trade Marks is not
an infringement of the Complainant’s famous Playboy Trade Marks. However, no
legitimate reason for the use of any of the Domain Names has been offered.
B. Respondent
The Respondent states, inter alia, as follows:-
(i) The Plaintiff [sic] admits that the Domain Names are identical or confusingly
similar to a trade mark or service mark in which the Complainant has rights.
(ii) The Respondent denies the allegations made by the Complainant that the
Respondent is not making a legitimate non-commercial or fair use claim of the
Domain Names.The Domain Names comprise the word "playboy",
together with various verbs and adjectives which are also ordinary English words.
As well as constituting a trademark of the Complainant, the word "playboy"
has a secondary ordinary English meaning. The word "playboy" is defined
in the Merriam-Webster Dictionary as a noun meaning "a man who lives
a life devoted chiefly to the pursuit of pleasure". The Respondent
registered the Domain Names for the sole purpose of developing a number of information
websites containing content devoted to the playboy lifestyle, including tributes
to famous playboys such as Donald Trump and Steve Bing. Until the Respondent
develops the said websites, the Respondent is simply parking the domains on
the nameservers which host Roar.com (a related internet directory portal). It
is submitted that this practice is a common and legitimate temporary use of
domain names that are inactive or have websites under construction.
(iii) The Respondent denies that the Domain Names were registered by the Respondent
in an intentional attempt to attract for commercial gain, Internet users to
the Respondent’s web site 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 web site or location or of a product or service
on the Respondent’s web site or location (as is required by para. 4(a)(iii)
of the Policy to be proved by the Complainant to found "bad faith").
(iv) As stated by the Complainant in the Complaint, it is admitted that the
said Domain Names were previously resolving to the "adult entertainment"
category of the Roar.com website, which displayed links to sites of an adult
nature. However, this was due to an administrative error of Roar.com Pty Ltd
in originally categorizing the said Domain Names. This error has since been
rectified. The website to which all of the domain names now resolve is the non-adult
advertiser homepage of Roar.com.
(v) Roar.com is an internet directory service operated by Roar.com Pty Ltd.
The content of the Roar.com homepage and the advertising services provided by
Roar.com are completely unrelated to the Complainant or the goods and services
provided by the Complainant. It is a policy of Roar.com Pty Ltd to ensure that
all domain names from which it acquires traffic that include potentially trademarked
words, are redirected to content on the Roar website that is in no way related
to the goods or services provided by the trademark owner or which could otherwise
mislead or confuse consumers into believing that Roar.com (or its advertisers)
were in any way associated with or endorsed by the relevant trademark owner.
(vi) If an internet user now types in any of the Domain Names looking for the
Complainant or goods and services provided by the Complainant, it would be immediately
clear to such users, upon being directed to the said Roar.com homepage, that
they had not found what they were looking for.
6. Discussion and Findings
The onus is, of course, on the Complainant to prove each of the three elements
set out in paragraph 4(a) of the Policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or
service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The admission in paragraph 5B(i) above (despite the use of the word "Plaintiff")
relieves the Panel of the necessity of analyzing this issue. Nevertheless, given
the undoubted world-wide reputation of the trademarks PLAYBOY and PLAYMATE,
the Panel has no hesitation in finding that the Domain Names are confusingly
similar (in 73 cases to PLAYBOY and in one case to PLAYMATE).
B. Rights or Legitimate Interests
As to element (ii) of paragraph 4(a) of the Policy, the Respondent has done
nothing to persuade the Panel that it has any rights or legitimate interests
in the Domain Names. The justification attempted by the Respondent in paragraph
5B(ii) above fails for two reasons:-
(i) the Panel does not believe that the Respondent was motivated by anything
other than a desire to trade on the reputation of the Complainant’s trademarks;
and
(ii) in any event "websites containing content devoted to the playboy
lifestyle" would be calculated to attract users of the Complainant’s products
and services, since, though not necessarily themselves "playboys"
within the dictionary definition, they would undoubtedly be envious of or interested
in the playboy lifestyle. This could not establish a legitimate interest.
Since there is nothing to suggest that any of the circumstances mentioned in
paragraph 4(c) of the Policy or any other apply, the Panel concludes that the
Complainant has established element (ii).
C. Registered and Used in Bad Faith
So far as element (iii) is concerned it is sufficient that the Complainant
demonstrates that one of the four circumstances mentioned in paragraph 4(b)
of the Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as
follows:-
"by using the domain name, [Respondent has] intentionally attempted to
attract, for commercial gain, Internet users to [his] web site 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 [Respondent’s]
web site or location, or of a product or service on [Respondent’s] web site
or location."
The Respondent’s websites are clearly intended to attract members of the public
who have an interest in what the Complainant offers under the PLAYBOY and PLAYMATE
trademarks and then to offer them other products and services. Such conduct
falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel
is entitled to conclude on this ground alone that the Respondent registered
and has been using the Domain Names in bad faith.
However, the Respondent has alleged that the fact that the Domain Names resolved
to an "adult entertainment" category of website was due to an "administrative
error". The Panel does not believe this was anything other than a deliberate
act, and that the Respondent’s activities demonstrate a course of conduct that
is redolent of bad faith. It cites the following by way of example:-
(i) The registration over the short period of three weeks of 74 domain names,
all but one being a variant of the trademark PLAYBOY, and the other of the trademark
PLAYMATE. The act of registering so many domain names in itself would be sufficient
for the Panel to find element (iii) had been established, pursuant to paragraph
4(b)(ii) of the Policy:-
"[Respondent has] registered the domain name in order to prevent the owner
of the trade mark or service mark from reflecting the mark in a corresponding
domain name, provided that [the Respondent has] engaged in a pattern of such
conduct."
(ii) The choice of the domain names playboy-store.com and tv-playboy.com, when
the Complainant was using websites at store.playboy.com and playboytv.com.
(iii) No reason is given by the Respondent as to why the five domain names
referred to in paragraph 5A(xvii) above have at all times resolved to websites
offering goods and services (such as clothing) in competition with the Complainant
– this was manifestly no "error".
For the above reasons the Panel finds that the Domain Names were all registered
and are being used in bad faith.
7. Decision
In the light of the findings in paragraph 6 above, the Panel concludes that
the domain names:
