WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Playboy Enterprises International, Inc. v. Filipe Carvalho Case No. D2008-1944 1. The Parties
The Complainant is Playboy Enterprises International, Inc. of Chicago, Illinois, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Filipe Carvalho of Porto, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 19, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On December 19, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response January 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 20, 2009.
The Center appointed John Swinson, William R. Towns and Gabriel F. Leonardos as panelists in this matter on February 10, 2009. 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. 4. Factual Background
The Complainant is an international multimedia entertainment company that develops and distributes multimedia lifestyle entertainment for adult audiences.
The Complainant first obtained a United States trademark registration for PLAYBOY in 1954. Since then it has acquired numerous registered trademarks that contain the word “playboy”, for example PLAYBOY LOUNGE (United States registration number 2,567,100) and PLAYBOY DIGITAL (United States registration number 3283687).
The Complainant also has a registered trademark for its Rabbit Head Design (United States registration number 2709639) which was registered in April 2003. 5. Parties' Contentions A. Complainant
The Complainant contends that:
The disputed domain name is identical or confusingly similar to the Complainant's PLAYBOY trademarks
The disputed domain name is confusingly similar to the Complainant's PLAYBOY trademarks because it incorporates the PLAYBOY trademark precisely and merely adds the generic term “relax”. “Relax” is a synonym for “lounge” or “leisure” and similar terms that are commonly associated with Playboy.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent is not known by the disputed domain name, has not been authorized by Playboy to use the PLAYBOY trademarks and has never made any bona fide use of the disputed domain name.
The Respondent registered the disputed domain name on June 29, 2007, long after the Complainant had registered most of its PLAYBOY trademarks and had established a significant online presence.
The Complainant discovered the disputed domain name in August 2007. At that time, the Respondent was using the domain name to operate a commercial website displaying advertisements for escorts. The Respondent prominently featured an exact replica of the Complainant's Rabbit Head design trademark on the homepage.
On November 29, 2007, the Complainant sent a demand letter to the Respondent notifying him of the Complainant's objections to his registration and infringing use of the domain name. While the Respondent refused to transfer the disputed domain name to Playboy, at some point after receiving Playboy's initial demand letter, the Respondent changed the homepage to remove Playboy's Rabbit Head design trademark.
The disputed domain name was registered and is being used in bad faith
Given the strength and fame of the Complainant's PLAYBOY trademarks, the Respondent's bad faith is established by the fact of registration alone. The Complainant falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he or she was unaware of Playboy's prior rights or has a legitimate interest in domain names that incorporate the mark.
The Respondent's bad faith is further demonstrated by the fact that the Respondent uses the disputed domain name to host a website offering adult goods and services, which is the same market the Complainant targets.
The fact that, prior to receiving notice of this dispute, the Respondent prominently featured an exact replica of the Complainant's famous Rabbit Head Design trademark on his website conclusively demonstrates not only the Respondent's prior awareness of the Complainant, but also his deliberate intent to foster confusion about the affiliation between the disputed domain name and the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's trademark or service mark.
The Complainant has numerous registered trademarks that include the word “playboy”, examples of which are provided in paragraph 4 above. The Panel is therefore satisfied that the Complainant has registered trademark rights in PLAYBOY.
The Respondent has used the Complainant's trademark in its entirety and added the word “relax”. Prior decisions have held that a domain name is confusingly similar to a trademark when a respondent uses the complainant's trademark and adds a neutral word that fails to distinguish the disputed domain name from the trademark (see, for example, Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102). In the present case, the word “relax” could be considered to be a generic word that does not effectively distinguish the disputed domain name from the Complainant's famous PLAYBOY trademark.
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is identical or confusingly similar to the Complainant's PLAYBOY trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the PLAYBOY trademark or the Rabbit Head Design trademark. The Panel infers that the Respondent is not commonly known by the name “playboy” or by the disputed domain name, “playboyrelax”.
The Complainant has provided evidence that the Respondent used the disputed domain name to display advertisements for escorts. (The website at the disputed domain name is currently not functioning.) From the Complainant's exhibits showing the former website, it is apparent that the Respondent used the disputed domain name to trade off the reputation of the Complainant – thus, the Respondent did not use the disputed domain name to make a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, by failing to provide a response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant submitted that the Respondent's use of the word “playboy” demonstrates that the Respondent was attempting to create the assumption that the disputed domain name was somehow affiliated with the Complainant's PLAYBOY trademark and therefore was registered in bad faith.
The fact that the Complainant has numerous registered trademarks in the term PLAYBOY does not mean that it has a monopoly over any and all uses of the term “playboy”. The term “playboy” is a common term for a man who shirks work and lives for pleasure. Therefore, in certain circumstances, it may be possible for a person to use the word “playboy” in a domain name in good faith.
However, the Respondent used both the Complainant's PLAYBOY word trademark and the Complainant's Rabbit Head Design on his website. The Complainant's Rabbit Head Design is very distinctive and the fact that it was removed from the website once the Complainant contacted the Respondent, indicates that the Respondent registered and used the disputed domain name in an attempt to attract Internet users by creating the assumption that the disputed domain name was somehow affiliated with the Complainant's PLAYBOY trademark.
The Panel is therefore satisfied that the Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 name be transferred to the Complainant.
John Swinson
Presiding Panelist
William R. Towns
Panelist
Gabriel F. Leonardos
Panelist
Dated: February 24, 2009
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