The Complainant is Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America, represented by Phillips Ryther & Winchester, United States of America.
The Respondent is Arthur K of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2013, the Registrar 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 disputed domain name.
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 on July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. The Respondent did not submit a formal response. However, the Respondent sent an e-mail, dated August 11, 2013 to the Center. As a result, the Complainant considered suspending the case. Subsequently, the Complainant requested the continuation of the proceedings. Accordingly, the Center notified the Respondent’s default on August 22, 2013.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on August 29, 2013. The Panel finds that it was properly constituted. 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
Playboy is an international entertainment company, in particular known to be the publisher of Playboy magazine, one of the world’s best-selling men’s magazines. Playboy company markets its brand in multiple ways and owns several trademarks applications and registration for the brand PLAYBOY all over the world, including China.
The Respondent has registered the disputed domain name on September 8, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
A. The disputed domain name is confusingly similar to the prior trademark of the Complainant because:
- it reproduces the word of the Complainant’s trademark in its entirety;
- the adjunction of the terms “home” in the disputed domain name does not detract from associating it to the brand of the Complainant;
- the addition of the suffix home associates the website to the trademark of the Complainant which is used by the Complainant licensees for home furnishing and textiles since many years prior to the Respondent registration of the disputed domain name.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- the Complainant has never given to the Respondent any license or authorization to use PLAYBOY trademark, nor is it an authorized dealer;
- the disputed domain name hosts a website which is a replica of the Complainant official e-commerce website and advertises, apparently, genuine goods without disclosing the operator’s identity;
- the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is instead using to generate traffic to its website, where Playboy goods are sold.
C. The disputed domain name was registered and is being used in bad faith because:
- the Respondent could not ignore the strong notoriety and world renown of the Complainant’s trademark and it is unlikely that the Respondent was not aware of the Complainant’s legal right on the PLAYBOY brand at the time of the registration of the disputed domain name;
- the disputed domain name is designed to appear as if it is being operated by Playboy itself;
- after receiving notice of Playboy’s legal objections the Respondent has changed the contact information on the WHOIS record. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the word “playboy” which constitutes the Complainant’s trademark.
The addition of the word “home” in the disputed domain name at issue does not render the disputed domain name dissimilar to the trademark of the Complainant. Moreover, taking into consideration that the Complainant is also selling in China home furnishing and textiles products using the trademark PLAYBOY-HOME where the Respondent is located, such addition does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a Domain Name wholly incorporates a complainant’s mark and only adds a generic word along with it (see, i.e., Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy,WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526).
Additionally, the Panel does not consider, when analyzing the identity or similarity, the suffix - in this case “.com” - because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, i.e., Crédit Industriel et Commercial SA v. Name Privacy,WIPO Case No. D2005-0457).
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant has trademark registrations for PLAYBOY all over the world, including China. Therefore it has been proven that the Complainant has rights in the PLAYBOY trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the disputed domain name, see paragraph 4(c) of the Policy.
Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the famous trademark PLAYBOY, nor has it been authorized to register and use the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name is used by the Respondent to host a replica of PLAYBOY’s own and official e-commerce website. This constitutes a demonstration of bad faith as consumers cannot realize that the website is owned and controlled by a registrant who has no affiliation with PLAYBOY. It has been consistently confirmed in previous decisions that when the holder of a domain name, confusingly similar to a registered mark, attempts to present itself as the complainant or as the legitimate owner of the trademark, the use of the contested domain name cannot be considered to be done in good faith (The Royal Bank of Scotland Group PLC v. Roberts, Case No. 638985, NAF Mar. 20, 2006; Crow v. LOVEARTH.net, Case No. 203208, NAF Nov. 28, 2003).
The fact that the Respondent is apparently advertising genuine goods on the disputed domain name does not create rights into the disputed domain name itself.
The website seeks to take unfair advantage of the value of the trademark of the Complainant as it masquerades itself as the Complainant’s own website and there is no indication of the registrant’s relationship with the trademark holder nor is the operator’s identity anywhere disclosed.
The Respondent must have been aware of the existence of the PLAYBOY mark and the related trademarks owned and used by the Complainant. In all likelihood, only someone who was familiar with the Complainant’s mark would have registered a domain name inclusive of such mark. The addition of the term “home”, in conjunction with the sale of home furnishings and textiles, only confirms the use in bad faith, considering that the Complainant is known, especially in China, to be selling said products under a trademark identical to the disputed domain name.
The Panel is of the opinion that the Respondent has registered the disputed Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant by using a domain name that is confusingly similar to the Complainant’s mark. Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the disputed Domain Name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: September 12, 2013
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