1.1 The Complainant is Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America (“US”), represented by Phillips Ryther & Winchester, US.
1.2 The Respondent is P.P. Inc / Pleasure Playmates Inc. of Calgary, Alberta, Canada; represented by K. Melnyk, Canada. 2. The Domain Names and Registrar
2.1 The disputed domain names , and (the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2013. In the Compaint as filed the Complainant identified the Respondent as “P.P. Inc. c/o Dynadot Privacy” with an address in the US.
3.2 On August 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, but stating that the Domain Name had expired on August 3, 2013 and that the Domain Name had expired on August 4, 2013.
3.3 On August 8, 2013, the Registrar confirmed that the registrant of and was “P.P. Inc”, giving an address in Calagary, Canada. On August 16, 2013 the Complainant filed an amendment to the Complaint so as to record the Canadian contact details for those Domain Names.
3.4 The Complainant subsequently took steps to renew the and Domain Names pursuant to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy.
3.5 On August 21, 2013, before the Center had proceeded to notify the Complaint, the Center received via e-mail a formal Response from the Respondent.
3.6 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” 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”).
3.7 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 August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. However, no further Response or communication has been received by the Center from Respondent since the Response was filed on August 21, 2013.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 16, 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
4.1 The Complainant is a wholly-owned subsidiary of Playboy Enterprises Inc. The Playboy group is a multimedia entertainment business which, perhaps best known as the publisher of Playboy magazine, which was first published since 1954. The Complainant describes Playboy magazine as “the world’s best-selling men’s magazine”. It sold approximately 2.4 million copies monthly around the world in the six months ended December 31, 2012.
4.2 One long established feature of Playboy magazine is that it incorporates a picture of a female model in the centrefold portion of the magazine, who is generally referred to as the “Playmate of the Month”.
4.3 The Complainant is the owner of various trademarks around the world that comprise the term “Playmate”, the earliest of which dates back to 1961. They include:
(i) United States registered trade mark no 0721987 registered on September 26, 1961 for “Calendars”;
(ii) Canadian registered trade mark no 419150 registered on November 5, 1993 in respect of the following goods and services:
“WARES:
(1) Monthly magazines.
(2) Calendars.
(3) Pre-recorded video cassettes.
(4) Phonograph records and cartridge tapes.
SERVICES:
(1) Entertainment services, namely, presentation of shows with musical and comedy revues featuring singing, dancing and other variety entertainment; communication services which include the development, production and transmission, including via satellite, of cable and free television programs.
(2) Entertainment in the nature of pre-recorded wake-up messages by telephone”
(iii) Canadian registered trade mark no 531445 registered on August 18, 2000 in respect of:
“Computer services, namely providing on-line magazines in the field of fashion, entertainment, health, lifestyle and other topics of general interest.”
(iv) Canadian registered trade mark no 672867 registered on September 19, 2006 in respect of:
“Pre-programmed data storage media, namely computer disks, compact disks, CD-ROM's and DVD's featuring computer games, music, images, magazine content or adult entertainment”.
4.4 The Domain Name was registered on April 25, 2009, the Domain Name was registered on August 3, 2012 and the Domain Name was registered on August 4, 2012. At all material times the Domain Names have been registered in the name of “P. P. Inc” (or some variant thereof).
4.5 The Respondent is a company that was incorporated under the laws of Alberta, Canada on April 29, 2009 under the name Pleasure Playmates Inc. The Domain Name has been used by the Respondent to host a website advertising escort services under the Respondent’s name. The and Domain Names when registered were also used by the Respondent to display the same content.
4.6 On November 13, 2013, the Complainant’s internal IP enforcement specialist sent an email to “P.P. Inc”, complaining about the registration of the Domain Names and demanding that they be transferred to the Complainant. It also demanded that the Respondent otherwise cease to use the “Playmates” name.
4.7 Shortly following receipt of that email the Respondent changed its website so as to advertise its escort services under the name “Pleasure Play Dates Inc”, but did not otherwise respond to the Complainant’s email. On December 29, 2013 the Complainant sent a further email thanking the Respondent for making that change, but still demanding the transfer of the Domain Names. The Respondent did not respond to this or any subsequent chasing emails from the Complaint. 5. Parties’ Contentions A. Complainant
5.1 As well as relying on its PLAYMATE registered trademarks, the Complainant contends that it has common law rights in that term.
5.2 The Complainant claims that the PLAYBOY and PLAYMATE marks, have a high degree around the world. It claims to have spent “millions of dollars” promoting the “Playboy Marks”. The term “Playboy Marks” appears to be being used as a defined term in the Complaint referring to the PLAYMATE marks only.
5.3 So far as the fame of the PLAYMATE mark is concerned, the Complainant refers to the US court decision in Playboy Enters., Inc. v. Netscape Comms. Corp., 354 F.3d 1020,1027-28 (9th Cir. 2004) where the Complainant relied upon an expert study showing: that a “statistically significant number of Internet users” searching for terms ‘playboy’ and ‘playmate’ (51% and 31%, respectively) would think that Playboy itself sponsored banner advertisements”. In that case the court held that both the terms “Playboy” and “Playmate” had established “strong secondary meanings” associated with the Complainant.
5.4 The Complainant also relies upon two previous decisions under the Policy in which panels have recognised the “undoubted world-wide reputation of the trademarks PLAYBOY and PLAYMATE”. However, the first of these cases (i.e. Playboy Enterprises International, Inc. v. Domain Active Pty Limited,WIPO Case No. D2002-1156) involved the registration of over 70 domain names that incorporated the term “Playboy” and one domain name that incorporated the term “Playmate”. In the second of these cases (i.e. Playboy Enterprises International Inc. v. Roger BanningWIPO Case No. D2006-1542) the panel’s reference to “PLAYMATE” merely comes in a quotation from the earlier 2002 decision and the case concerned domain names that only incorporated the PLAYBOY mark.
5.5 The Complainant contends that each of the Domain Names incorporates its PLAYMATE mark in its entirety and that the words “pleasure”, “hush” and “call” that are incorporated in the Domain Names are merely “generic terms associated with adult entertainment”. In the circumstances, it claims that the Domain Names are confusingly similar to the Complainant’s marks.
5.6 The Complainant further contends that “regardless of [the] Respondent’s true identity” the Respondent is not known by the Domain Names and has not been authorised by the Complainant to use the PLAYMATE mark. Although the Complainant is at pains to point out that it does not operate an escort service, it claims that the way that the Domain Names have been used would suggest that the Complainant was entering that field. It also claims that the Respondent’s use of the term infringes the Complainant’s trademarks and that infringing use of a mark cannot give rise to a right or legitimate interest (citing The Chase Manhattan Corp. v. Whitely,WIPO Case No. D2000-0346, AutoNation, Inc. v. Paul Schaefer,WIPO Case No. D2001-0289 and Volvo Trademark Holding AB v. UNASI, Case No. D2005-0556).
5.7 The Complainant further asserts that any claim that the Respondent was using the term “playmate” in the sense of its primary meaning (i.e. as “a companion, especially of a child, in games and play”) rather than the secondary meaning developed by the Complainant (i.e. in connection with adult entertainment), would be “absurd”.
5.8 Further, the Complainant claims that it would have been impossible for the respondent to have registered the Domain Names without knowledge of the Complainant’s PLAYMATE mark. It also claims that the Respondent’s use of the Domain Names to “operate infringing websites” provides further evidence of bad faith. Finally, the Complainant contends that the WhoIs details available in relation to the Domain Names show that they have been registered through proxy services to conceal the Respondent’s true identity from the public and that this constitutes further evidence of bad faith. B. Respondent
5.9 In its Response the Respondent objects to the proceedings having been brought in relation to the Domain Names and ; claiming that since they had expired prior to the filing of the Complaint and they were “renewed … in our Dynadot account without [its] consent”, it has no responsibility for these Domain Names.
5.10 So far as the remaining Domain Name is concerned, it denies that the Domain Name is confusingly similar to the Complainant’s PLAYMATE trade mark given the additional letters in the Domain Name.
5.11 It further contends that it has rights and legitimate interests in the Domain Name. In this respect it states that the Complainant has no trade mark rights in the term “Playmates”. So far as the term “Playmate” is concerned, it points out that there are other companies that have Canadian trade marks for that term in relation to Portable containers for ice, food and beverages and toys, and asserts that the Complainant’s PLAYMATE mark does not extend to “companionship services”.
5.12 Further, the Respondent maintains that the terms “play”, “mate”, “playmates” and “playmates” are all ordinary English words, and provides internet dictionary definitions of these terms. One of the definitions of playmate is “a social companion or lover, girlfriend or boyfriend”, and it is in this sense that the Respondent claims it is using this term. It claims that it has being making legitimate fair use of that term “since 2009”.
5.13 In the Response it also directly responds to the Complainant’s claim that the Domain Name was registered because of its associations with the Complainant. It denies this and asserts:
“When we registered P in 2009 we had no intentions or thoughts of it being an issue due to the thought of people confusing it to the complainant’s trademark name. We used the word Playmates because of the dictionary meaning only "A companion" which is the service Pleasure Playdates Inc. provides.”
5.14 The Respondent provides a list of domain names that incorporates the term “playmates” many of which contains other text that suggests those domain names are being used to promote escort services. It denies that it registered the Domain Name to sell or rent it to the Complainant and claims that this Domain Name can be used without confusion. Further, it maintains that it does not use the Playboy logo on its website and that no one would believe that its website, which promotes a “small independent Calgary based licenced escort agency”, is associated with the Complainant.
5.15 The Respondent also asserts that the reason why it has used a privacy service is so its exact location is kept private for the safety and protection of its employees. It also refers to Calgary byelaws that do not allow a dating or escort service to provide such services at business premises. 6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirement of the Policy in turn, but before doing so it is necessary briefly to address the Respondent’s complaint that these proceedings should not have been brought in relation to the and Domain Names because those Domain Names had expired before the Complaint was filed.
6.3 The Panel rejects that contention. As this Panel stated in TKS, S.A. v. Huang Li Technology Corp.WIPO Case No. D2012-2367, the intent of paragraph 3.7.5.7 of the ICANN Registrar Accreditation Agreement appears to be that:
“if a domain name is going through the expiry or deletion process whilst UDRP proceedings are on-going, a complainant is able to step into the shoes of the respondent and take such steps as are necessary to stop this happening”.
As that decision acknowledges, the wording used in paragraph 3.7.5.7 is not without its problems. However, where as here a complainant has successfully been able to take steps pursuant to this provision to prevent a domain name being deleted, the Panel sees no reason why a panel cannot proceed to issue a decision in relation to those domain names. This is what the Panel intends to do in this case. A. Identical or Confusingly Similar
6.4 The test of “confusing similarity” under the Policy has tended to be interpreted by panels as imposing a low threshold standing requirement; see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
6.5 The Complainant is clearly the owner of numerous PLAYMATE registered trademarks. Each of the Domain Names in this case can only be sensibly read as incorporating the term “Playmate”. The fact that in each of the Domain Names the word “Playmate” is pluralised and is supplemented by the words “hush”, “call” or “pleasure”, does not change that fact. Given the low threshold test that applies, the Panel finds that the Complainant has made out the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The term “Playmate” is both an ordinary English word and a trade mark of the Complainant.
6.7 The question of to what extent a registrant may have a right or legitimate interest in an ordinary word is one that is addressed in paragraph 2.2 of the WIPO Overview 2.0. This states as follows:
“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
6.8 In this case there is a fundamental dispute between the parties as to why the term “Playmates” was chosen and used. The Complainant contends that the term “Playmate” has acquired a secondary meaning as a trade mark indicating the Complainant’s products and services and that the term has been used in the Domain Names by the Respondent because of the attractive force of that secondary meaning. The Respondent contends that this is not the case and that the term is simply descriptive of the services that it offers.
6.9 Paragraph 2.2 of the WIPO Overview 2.0 states the issue would only arise if the Respondent has otherwise failed to show one of the three circumstances set out in paragraph 4(c). These might be said to be relevant here given that the Respondent adopted the term “Pleasure Playmates” as part of its name upon incorporation. However, the Respondent has not expressly put its case that way and the Complainant appears to contend that this does not matter because the use in this case infringes its trademarks and that infringing use cannot provide a right or legitimate interest.
6.10 This Panel does not think that analysing this question by reference to whether the Respondent’s activities amount to trade mark infringement under local law is particularly helpful (as to which see paragraph 4.15 of the WIPO Overview 2.0 and the decision of this Panel 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461). Nevertheless, the Panel does accept that if the term “Playmates” is being used by the Respondent so as to take unfair advantage of any association of the Complainant’s PLAYMATE mark, none of the three circumstances set out in paragraph 4(c) are likely to apply.
6.11 For the reasons that are set out in greater detail under the heading under bad faith below, the Panel has reached the conclusion that in the somewhat unusual circumstances of this case the Complainant has failed to prove that the Domain Name is being used to take any unfair advantage of the Complainant’s mark rather than a descriptive meaning of the word “Playmates”. This would tend to suggest that the Respondent does have a legitimate interest in the Domain Names (although given the finding on bad faith it is strictly not necessary for the Panel to make a finding on this issue).
6.12 That still leaves the and Domain Names. Here, in contrast, the Panel has found bad faith registration and use. There is also the fact that the Respondent seems to have disclaimed any interest in the Domain Names, even contending that no claim should have been brought in relation to the same. It is difficult to see how a registrant could claim a right or legitimate interest in a domain name that it has so deliberately and consciously abandoned.
6.13 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy in relation to the and Domain Names only. C. Registered and Used in Bad Faith
6.14 There are some problems with the way in which the Complainant puts its case in relation to the reputation of the PLAYMATE mark. Although the Complainant refers to “millions of dollars” being spent on promoting that mark, there is very little solid evidence of the extent to which the Complainant’s PLAYMATE marks have a significant reputation that is independent of the Complainant’s undoubtedly well known PLAYBOY marks. For example, the Complainant contends that its website operating form the domain name showcases “a wide range of PLAYBOY and PLAYMATE branded merchandise”. But the pages from that website exhibited to the Complaint, although evidencing extensive use of the PLAYBOY mark does not appear to contain a single reference to PLAYMATE. Indeed, the Complaint appears to provide not a single illustration of the Complainant’s use of the PLAYMATE mark.
6.15 Nevertheless, the Complainant does point to a reference in the May 2013 edition of Global Licence magazine, which describes the Complainant’s “key licensing properties” to be “Playboy, Rabbit Head design and Playmate”. Further, it refers to a 2004 decision in the US courts in which the court relied upon the fact that 31% of persons in a survey thought that the Complainant had sponsored banner advertisements that incorporated in some fashion the term “Playmate”.
6.16 In the circumstances the Panel is prepared to accept for the purposes of this decision that the PLAYMATE marks do have a significant independent reputation.
6.17 Further, the Panel is prepared to accept that the Respondent was aware of the Complainant’s PLAYMATE mark (at least in the sense that the term is one that had associations with the Complainant by reason of its use in Playboy Magazine) at the time that the various Domain Names were registered. Crucially, there is no denial of this by the Respondent in the Response.
6.18 However, although in most cases a complainant must show a respondent’s knowledge of a mark to establish registration and use in bad faith, knowledge by itself is insufficient. There must also be an intent to take some unfair advantage of that mark’s actual (or at least) potential reputation.
6.19 Where the mark is an invented word that has no ordinary meaning, that intent can often be easily inferred from the incorporation of that mark in the domain name alone.
6.20 Where the mark is an ordinary word, usually something else is required to show that intent. That something extra might be that the word is being used in such a way as to take advantage of a secondary meaning that the trade mark owner has developed in that term, or perhaps evidence that the registration is part of a course of conduct of registering and taking advantage of the trade mark rights of others. But where a word is being used in a domain name and associated website in a manner which is consistent with the ordinary descriptive meaning of that word, then in the absence of some other evidence of intent, it will be difficult for a complainant to show bad faith.
6.21 Conversely, if there is cogent evidence before a panel that a particular respondent has registered and used a domain name containing an ordinary word, not because of its ordinary meaning but because of its associations with the complainant’s mark, no amount of evidence that the mark is also an ordinary word and that the word has been used generically or descriptive by others (whether in a domain name or otherwise) is likely to save the respondent.
6.22 In the present case, the Complainant contends that the term “Playmate” has only two meanings. One is as a companion, especially of a child, in games and play. The second is the secondary meaning developed by the Complainant in relation to its marks and products. If this were the only choice, and given the way in which the Domain Names have been used to promote the services of the Respondent’s escort agency, then the Panel would decide this case in the Complainant’s favour.
6.23 The difficulty for the Complainant is that the Respondent has brought forward evidence that this is not the only choice so far as “Playmate” is concerned. It refers to internet dictionary definitions of the term that suggest that the word also has the meaning of “a social companion or lover, girlfriend or boyfriend”. While internet dictionary definitions should perhaps be approached with caution, this does not seem to be a bizarre or unsupported definition1.
6.24 The Respondent contends that it was to take advantage of this dictionary definition meaning that the term “Playmates” was chosen for use in both the Domain Name and in the name for its business. Given this and the fact that the Respondent’s business is an escort agency, that contention is not inherently implausible.
6.25 There is also nothing else before the Panel in this case that suggests that the Respondent’s explanation is untrue. The Complainant has brought forward no evidence to suggest that the Domain Name or any other of the Domain Names has been used for anything other than the promotion of the Respondent’s business, whether on the website or otherwise.
6.26 Further, there is the fact that the Respondent’s business is a small one that provides its services in Calgary only. A business providing personal services in Calgary is less likely to benefit to any significant degree from taking advantage of the Complainant’s marks, than say a business that is able to provide its goods and services more generally over the internet. Of course, the fact that a business is a small or localised does not mean that it cannot take unfair advantage of the marks of a much larger business. It is just that the extent to which the Respondent might gain from taking such advantage is something that can be taken into account when it comes to assessing the credibility of the Respondent’s claim that the term was chosen without that intent in mind.
6.27 The Complainant also relies upon the fact that the Respondent has used a privacy service for its Domain Names. However, the use of a privacy service is not usually per se a sufficient basis for a finding of bad faith (see paragraph 3.9 of the WIPO Overview 2.0”). The Respondent’s primary explanation for the use of this service is that it was to safeguard the safety of its employees. Again this is not an implausible explanation. It does not explain why the Domain Names were registered in the name of “P.P Inc” rather than in the full name of the Respondent, but the full name of the Respondent seems at all material times to have been prominently displayed on the Respondent’s website. In short, the use of the privacy service in the particular circumstances of this case does not change the bad faith analysis.
6.28 Therefore, in light of the unusual set of facts that apply in this case, and given that it is that the Complainant bears the burden of proof of showing that the Domain Names were registered and used in bad faith, the Panel holds that so far as the Domain Name is concerned, the Complainant has failed to make out its case.
6.29 That still leaves the and Domain Names. The position here is more difficult given that no explanation is given as to the registration of these particular Domain Names and (in contrast with the Domain Name) neither of the terms in the Domain Names have been used as a name for the business.
6.30 It might be said that these two Domain Names use the term “Playmates” in a descriptive sense in the same way as it is used in . Nevertheless and crucially, the Respondent does not claim that this is why it chose those terms. It simply ignores the question of why it has registered and used those two Domain Names. Further, these Domain Names were registered approximately three years later than the Domain Name. It is quite possible that the Respondent’s intentions at these different times might have been different.
6.31 Of course, the reason why the Respondent does not address the question of its motivations for registering and using these two Domain Names, is that it has allowed them to expire and it appears to have disclaimed any interest in the same. But that of itself is curious and calls for an explanation.
6.32 Ultimately in a case such as this, where a claim of bad faith registration and use has clearly been made in relation to a number of domain names and a respondent chooses to answer that claim in relation to some of those domain names but not others, a respondent should not be surprised if a panel takes this into account in its bad faith assessment.
6.33 In the circumstances, the Panel finds that the Complainant has made out is case so far as the requirements of paragraph 4(a)(iii) of the Policy are concerned in relation to the and Domain Names. 7. Decision
7.1 For the foregoing reasons:
(i) the Complaint is denied in relation to the Domain Name; and
(ii) in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names and be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: September 28, 2013
1 The Panel notes that the Oxford English Dictionary gives as one of the definitions of “Playmate” as:
“2. used euphemistically to refer to a person’s lover:
her clients use this album of photos to pick their ideal playmate”
An identical definition (albeit with out the example of use) appears in the US edition of this publication.
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