The Complainant is Playboy Enterprises International, Inc of Beverly Hills, California, United States of America (“USA”), represented by Venable, LLP, USA.
The Respondent is Wu Hongyan of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with EJEE Group Holdings Limited (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2017. On August 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2017, 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. On August 25, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted an amendment to the Complaint on the same day. The Respondent requested that Chinese be the language of the proceeding on August 26, 2017.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. On September 14, 2017, the Respondent submitted an email querying the format of the response. The Response was filed in Chinese with the Center on September 21, 2017 and September 22, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 27, 2017. 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 A. Complainant
The Complainant is a company incorporated in the USA and the provider of entertainment and multi-media services under the well-known PLAYBOY trade mark (the “Trade Mark”).
The Complainant is the owner of over 2,000 registrations for the Trade Mark worldwide, in all 45 classes, including numerous registrations in China, the earliest registrations (in the USA) dating from the 1950s (for example, USA trade mark registration no. 689431, registered on December 8, 1959). B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on February 21, 2017. D. Passive use of the Disputed Domain Name
The disputed domain name has not been used. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent contends that disputed domain name is not confusingly similar or identical to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered and used in bad faith. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, as the Respondent has demonstrated in the Respondent’s pre-Complaint English language email correspondence with the Complainant a ready comprehension of the English language and a proficient ability to communicate in English
The Respondent has requested that the language of the proceeding be Chinese, for the following reasons:
(1) The Respondent used translation software to draft the Respondent’s English language email sent to the Complainant;
(2) The Complainant is a big international company with the manpower and financial resources to translate the Complaint into Chinese; and
(3) The Respondent does not have the financial resources to translate the Complaint into Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel considers that the Respondent’s English language response to the Complainant’s cease and desist letter – even if drafted with the assistance of translation software – demonstrates the likely possibility that the Respondent is conversant in English. The Panel also notes the Respondent engaged the services of a domain name broker apparently also based in China, which broker also engaged in pre Complaint English language email correspondence with the Complainant.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should this Decision be rendered in English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English. 6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety and is, excluding the generic Top-Level Domain (“gTLD”) , identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
The Respondent asserts legal rights in the disputed domain name by simple virtue of having registered the disputed domain name. The Respondent also claims to have registered the disputed domain name in order to set up a charity website that is still under construction, and that the website is intended to be for a public interest, not for profit, men’s travel club.
The Respondent also contends that the word “playboy” is a common dictionary word that has been in existence for a long time (and well before the advent of the Internet) and, accordingly, any person should be free to use the word “playboy”. In light of the Complainant’s long standing registration and use of the Trade Mark, and the notoriety of the Trade Mark worldwide, including in China, such contentions are regrettably misconceived.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s contentions regarding the Respondent’s intended use of the disputed domain name are unconvincing.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time of registration of the disputed domain name.
The Respondent asserts that the Respondent did not intend to sell the disputed domain name to the Complainant, and that the Respondent did not agree to offer the disputed domain name for sale to the Complainant when approached by the Respondent’s domain name broker. The Panel does not find these contentions convincing in light of the undisputed evidence of the attempts made by the Respondent’s domain name broker to negotiate the sale of the disputed domain name to the Complainant. Accordingly, the Panel finds bad faith has also been made out under paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel concludes 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 11, 2017
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