The Complainant is Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America ("Complainant"), represented by Venable, LLP, United States of America.
The Respondent is John Hanley of Bay Shore, New York, United States of America ("Respondent"). 2. The Domain Name and Registrar
The disputed domain name, ("Disputed Domain Name"), is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 16, 2014, 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.
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 Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on May 30, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 4, 2014. 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
Complainant is an international multimedia entertainment company. Complainant develops and distributes multimedia lifestyle entertainment for adult audiences and has done so for sixty years. Complainant owns several trademark registrations consisting of or containing the trademark PLAYBOY (Complainant's "Mark"). Complainant registered a Class 16 trademark in the United States in December of 1954. Complainant has a strong presence on the Internet and owns numerous domain names containing the PLAYBOY trademark.
Respondent registered the Disputed Domain Name on August 4, 2004. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name incorporates and is confusingly similar to Complainant's PLAYBOY Mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant contends the Disputed Domain Name is similar in appearance, sound, connotation and commercial impression to its Mark, and thus is confusingly similar to Complainant's PLAYBOY Mark. Complainant observes that the Disputed Domain Name fully incorporates the PLAYBOY trademark. Complainant observes that the only differences between Complainant's PLAYBOY Mark and the Disputed Domain Name is the addition of the prefix "mr" and the addition of the suffix ".com", the generic Top-Level Domain reference.
Complainant further contends that the dominant or primary element of the Disputed Domain Name is the Complainant's PLAYBOY Mark. Complainant argues that the addition of a common noun, adjective, or generic or descriptive term, such as "mr," to the Disputed Domain Name does not alleviate the Disputed Domain Name's confusing similarity to Complainant's Mark since the PLAYBOY Mark is a very strong trademark, well-known to consumers. Complainant contends that former UDRP Panels have recognized the strength of Complainant's Mark. See Playboy Enters. Int'l, Inc. v. Banning, WIPO Case No. D2006-1542, transferring eight domain names, including, e.g., , , and .) Moreover, Complainant contends that prior UDRP Panels have rejected the argument that adding a generic or descriptive term to the PLAYBOY Mark in a domain name extinguishes the association of that domain name with the PLAYBOY Mark. See Playboy Enters. Int'l Inc. v. Vileshome, WIPO Case No. D2001-1082 (transferring and because the generic term "market" did "nothing to detract from the immediate association with the Complainant aroused in the public mind by the word PLAYBOY").
Complainant contends that Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy. Complainant contends that Respondent has not received any license or consent, express or implied, to use the PLAYBOY Mark in a domain name or in any other manner from Complainant. Further, Complainant contends that Respondent did not at any time have authorization from Complainant to register the Disputed Domain Name. Complainant asserts that the Respondent has no legitimate right or interest in the Disputed Domain Name; did not use the Complainant's Mark as a trademark, business, company, or trade name; and is not commonly known by the PLAYBOY Mark. Moreover, Complainant contends that Respondent is not using the Disputed Domain Name in relation to a bona fide offering of goods or services, but in contrast utilizes the Disputed Domain Name as a "parking page" on which to advertise the Disputed Domain Name for sale.
Lastly, Complainant contends that the Disputed Domain Name was registered and is being used in bad faith under Paragraph 4(a)(iii) of the Policy. Complainant contends that Respondent's failure to make genuine use of the Disputed Domain Name constitutes evidence of registration and use in bad faith. Further, Complainant contends that due to the famous and distinctive nature of the PLAYBOY Mark, Respondent knew or should have known of the existence of Complainant's Mark at the time Respondent registered the Disputed Domain Name. Complainant contends that Respondent intentionally registered the Disputed Domain Name to trade-off its good will and reputation and is, subsequently, cybersquatting rather than using the domain. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Respondent provided no Response, and the deadline for so doing expired on May 28, 2014. Accordingly, Respondent is in default. Given Respondent's default, the Panel can infer that Complainant's allegations are
true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a). A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the PLAYBOY Mark. The Disputed Domain Name and the Complainant's PLAYBOY Mark are not identical, and, therefore, the issue is whether the Disputed Domain Name and Complainant's PLAYBOY trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant's PLAYBOY Mark; (2) the prefix "mr"; and (3) the suffix ".com". The relevant comparison to be made is with the second-level portion of the domain name only (i.e., "mrplayboy"), as it is well-established that the Top-Level Domain name (i.e., ".com") should be typically disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant's registered mark. AT&T Corp. v. William Gormally, Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR). Here, the Disputed Domain Name incorporates the PLAYBOY Mark in its entirety.
Moreover, prior UDRP panels have recognized that the addition of a merely generic or descriptive term to a famous trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity because such an addition fails to detract from the overall impression that the domain name is associated with the famous trademark. See Sony Kabushuki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409. In the case at hand, the dominant part of the Disputed Domain Name is Complainant's famous PLAYBOY Mark with the generic prefix "mr" preceding it.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant's PLAYBOY Mark. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights or authorization to use its PLAYBOY Mark. Complainant has alleged, and Respondent has not denied, that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name, and is cybersquatting on the Disputed Domain Name, seeking to benefit from Internet traffic directed to Respondent's website associated with the Disputed Domain Name to profit from the goodwill and established reputation of Complainant.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when a respondent attempts to attract, for commercial gain, Internet users to the respondent's website 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 website or of a product or service on Respondent's website. Registration in Bad Faith
Complainant has asserted that due to the famous nature of Complainant's Mark, Respondent knew or should have known of the Complainant's trademark prior to registering the Disputed Domain Name. Prior panels have found that knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith. See Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517 ("[T]he Complainant's worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the Disputed Domain Name."); see also The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113 ("[T]he Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements."). Here, Complainant's PLAYBOY Mark is long-established and well-known internationally. The uncontroverted evidence establishes that Respondent knew or should have known of Complainant's Mark prior to the 2004 registration of the Disputed Domain Name. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding registration in bad faith where, "in absence of contrary evidence," the Respondent knew or should have known of the Complainant's trademark at the time of the domain name registration). Use in Bad Faith
Complainant contends, and Respondent has not denied, that Respondent fails to make any genuine or bona fide use of the Disputed Domain Name. Prior panels have found that a registrant's passive holding of a disputed domain name constitutes evidence of use in bad faith. See Jones Apparel Group, Inc. v. Robin Sousa,WIPO Case No. D2001-1308 (Noting that in cases where "non-use was coupled with a complainant having valid trademark rights commencing prior to the date on which the offending domain name was registered coupled with the registrant having actual or imputed knowledge of those rights" demonstrated evidence of use in bad faith and necessitated transfer in such cases). Here, Complainant's valid rights in its PLAYBOY Mark long predate the registration of the Disputed Domain Name, Respondent knew or should have known of Complainant's Mark prior to the registration of the Disputed Domain Name, and the Disputed Domain Name resolves to a website that has no content other than the offer for sale of the Disputed Domain Name.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy. 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.
Michael A. Albert
Sole Panelist
Date: June 16, 2014
Full & Egal Universal Law Academy