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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Playboy Enterprises International Inc v Chao Investments Ltd [2007] DRS 4657 (12 June 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4657.html Cite as: [2007] DRS 4657

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Nominet UK Dispute Resolution Service

DRS Number 04657

Decision of Independent Expert

1. Parties

Complainant: Playboy Enterprises International, Inc.

Country: US

Respondent: Chao Investments Limited

Country: NZ

2. Domain Name

(the "Domain Name")

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 27 April 2007. Nominet validated the complaint on 30 April 2007 and transmitted a copy of the complaint to the Respondent. No response was received from Respondent by the due date of 24 May 2007. Nominet wrote to both parties indicating that no response had been received. On 29 May 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the "Policy").

The undersigned (the "Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. The undersigned, Christopher Gibson, was appointed as Expert in this case on 31 May 2007.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). Paragraph 15b of the Procedure provides, inter alia, that "[i]f in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by email and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., 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 in this case and so will draw inferences as appropriate.

5. The Facts

The Complainant is Playboy Enterprises International, Inc., is an international entertainment company that publishes editions of Playboy magazine around the world; operates Playboy television networks and distributes programming via home video and DVD globally; licences the PLAYBOY trade marks internationally for a range of consumer products and services; and operates <www.playboy.com>, a leading men's lifestyle and entertainment web destination. Complainant has been using the PLAYBOY mark for over 50 years. The first issue of Playboy magazine was launched in the United States in December 1953. The magazine has been published continuously since then. Today, there are locally produced editions of Playboy magazine published in 22 countries.

Complainant owns approximately 1,700 trade mark registrations and applications worldwide for or incorporating PLAYBOY, of which over 100 are UK and Community trade mark registrations and applications. The UK registrations for PLAYBOY include marks which date from the late 1950s and cover trade marks registered in respect of a wide variety of goods and services. Complainant sells a wide range of clothing, lingerie, footwear, jewellery and other accessories through its website under the name PLAYBOY STORE, and has submitted a screen print of its PLAYBOY STORE website.

Complainant registered the domain name in February 1994 and in December 1999.

From the WHOIS records, the Domain Name was registered for the Respondent, Chao Investments Limited, on 8 August 2005. The Complainant submitted documentary evidence to show that, at the time of the Complaint, the URL www.playboyshop.co.uk resolved to a web site containing a number of links to third parties supplying goods and services the same or similar to those provided by Complainant, but not in anyway connected with Complainant.

6. The Parties' Contentions

Complainant

The Complainant states that the Domain Name in dispute is identical or similar to a name or mark in which it has Rights and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Respondent registered and/or used the Domain Name in a manner which has taken unfair advantage of or been unfairly detrimental to the Complainant's Rights.

Rights: The Complainant states that it has registered and unregistered Rights in a name and mark which is identical or similar to the Domain Name. In particular, the PLAYBOY brand enjoys a pre-eminent reputation in the US, the UK and internationally. In addition to Complainant's portfolio of trade mark registrations for PLAYBOY, Complainant contends that it has common law passing off rights in the PLAYBOY STORE mark, by virtue of the substantial reputation it has acquired in this brand.

Complainant contends that the Domain Name is confusingly similar to both these marks. The Domain Name incorporates Complainant's PLAYBOY mark, which will be recognised by Internet users as a well-known brand distinctive of Complainant's business. The addition of the word "SHOP" to the PLAYBOY mark is understood by the vast majority of users to indicate the activity being conducted under the PLAYBOY brand, rather than serving to distinguish it in some way from this brand. The addition of the descriptive word 'shop' does not distinguish the Domain Name from Complainant's marks.

Abusive Registration: The Complainant explains that it became aware of the Domain Name in February 2007. As noted above, the website associated with the Domain Name contained a number of links to third parties supplying goods and services the same or similar to those provided by Complainant, but not connected with Complainant. The Complainant has submitted a letter dated 8 March 2007 from its solicitors to the Respondent, explaining the nature of Complainant's rights and concerns and requiring transfer of the Domain Name. No reply was received from Respondent. Respondent, however, has since removed all material from the website operated under the Domain Name.

The Complainant also asserts that the Respondent's name, Chao Investments Limited, appears to be a false name. Respondent lists its address as PO Box 37410, Parnell, Auckland, New Zealand 1151. However, the Complainant has submitted documentary evidence from the New Zealand Companies Office to show that no company by that name is registered in New Zealand. Respondent is not employed by, or in any way connected with Complainant. Respondent is not in any way authorised by Complainant to use any of its trade marks including its PLAYBOY mark in domain names or otherwise.

With reference to relevant paragraphs of the DRS Policy (Policy), the Complainant alleges that the Domain Name is an Abusive Registration:

Policy para. 3(a)(i)(B): Respondent registered the Domain Name primarily as a blocking registration against Complainant's well-known PLAYBOY and PLAYBOY STORE marks. Respondent registered the Domain Name on 8 August 2005, and in the light of Complainant's substantial global reputation in the PLAYBOY name, Respondent cannot maintain that it was unaware of Complainant's Rights at the time of registration.

Policy para. 3(a)(i)(C): Respondent registered the Domain Name primarily for the purpose of unfairly disrupting Complainant's business. Respondent's primary purpose in registering the Domain Name was to target Complainant's actual and potential customers in an effort to draw them away from Complainant's website and divert them to third party websites, none of which appear to sell any genuine PLAYBOY branded products. This conduct was calculated to promote Respondent's business by increasing the traffic to its site by unfairly exploiting Complainant's Rights in the PLAYBOY and PLAYBOY STORE marks. Respondent has no legitimate reason for doing so. Moreover, the registration of the Domain Name itself unfairly disrupts Complainant's business.

Policy para. 3(a)(ii): Respondent's use of the Domain Name confuses people or businesses into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with Complainant. Given the extensive use and substantial reputation associated with the PLAYBOY brand, it is at the very least highly likely that the use by Respondent of the mark PLAYBOY (and, until recently, the use of the mark PLAYBOY on the website itself) confuses and will confuse the public into believing that the website is in some way connected with Complainant.

Policy paras. 3(a)(iii) and (c): Respondent is engaged in a pattern of registrations where Respondent is the registrant of domain names which correspond to well known names or trade marks in which Respondent has no apparent rights, and the Domain Name is part of this pattern. Respondent has been found to have made abusive registration in six DRS cases in the past two years (DRS 4219, 4253, 4271, 4297, 4323 and 4353) and therefore there is a presumption that Respondent's registration of the Domain Name is abusive in accordance with Paragraph 3(c). See The Danish Dairy Board -v- Chao Investments Limited DRS4353 para 7.11.

Policy para. 3(a)(iv): The evidence indicates that Respondent has given Nominet false contact details. Accordingly, Respondent's use of the Domain Name is an abusive registration under Paragraph 3(a)(iv) of the Policy. Further, a similar point was raised in relation to the same registrant in The Paper Mill Shop Company Limited -v- Chao Investments Limited DRS4253 para 6.

The Complainant assets that the Domain Name is also an Abusive Registration because the Complainant has not authorised Respondent to use any of its marks including its well-known PLAYBOY mark, and the Respondent's conduct unfairly takes advantage of and/or is unfairly detrimental to Complainant's Rights on this basis. The Respondent registered the Domain Name after Complainant had already built up a substantial reputation in its PLAYBOY mark and corporate name. Permitting the Domain Name to remain in the hands of Respondent will encourage others to engage in similarly unfair behaviour. This, and other aspects of Respondent's conduct, may serve to erode the distinctiveness of the PLAYBOY and the PLAYBOY STORE brands, to Complainant's further detriment.

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

The Complainant has established that it has Rights in its PLAYBOY and PLAYBOY STORE marks. "Rights" includes rights enforceable under English law. The Complainant has registered trade mark rights in the UK and throughout the European Union in respect of the mark PLAYBOY. Although the Complainant appears not to have registered PLAYBOY STORE as a mark, the Expert accepts that Complainant has common law passing off rights in this mark, by virtue of the substantial reputation it has acquired in this brand and in the strong PLAYBOY brand. See Playboy Enterprises International Inc. v. Trevor Hughes, DRS 04149.

The substantive part of the Domain Name contains letters similar or identical to the Complainant's PLAYBOY and PLAYBOY STORE brands. Even if "store" is considered to be merely descriptive, the word PLAYBOY is the distinctive and dominant component of the Domain Name. See Id. The Domain Name is therefore similar or identical to a name or mark in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines "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."

The Expert should take into account all relevant facts and circumstances in determining whether the Domain Name is an Abusive Registration. As reviewed above, the Complainant has submitted a non-exhaustive list of factors under paragraph 3 of the DRS Policy to demonstrate that the Domain Name is an Abusive Registration. The Complainant's contentions in this regard are supported by relevant and uncontradicted evidence, including evidence to show that:

a) at the time of the Complaint, the URL www.playboyshop.co.uk resolved to a web site containing links to third parties supplying goods and services the same or similar to those provided by Complainant, but not in anyway connected with Complainant; and

b) Respondent has provided Nominet with false contact details.

In addition, Respondent has correctly asserted that, under paragraph 3(c) of the Policy, there is a presumption that Respondent's registration of the Domain Name is abusive because "the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed." The decision in The Danish Dairy Board v. Chao Investments Limited, DRS4353, confirms that the Respondent has been found to have made abusive registration in six DRS cases in the past two years (including the Danish Dairy Board case). This presumption may be rebutted by the Respondent; however, in this case the Respondent has not filed a Response and the presumption has not been rebutted.

In summary, the Expert is of the view that the Complainant has established that the registration of the Domain Name which is identical or similar to the Complainant's trade marks takes unfair advantage of or is unfairly detrimental to the Complainant's Rights. Accordingly, the Expert finds, on the balance of the probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the Domain Name, , be transferred to the Complainant.

Christopher Gibson

12 June 2007