The Complainant is Playboy Enterprises International of Beverly Hills, California, United States of America ("United States), represented by Venable, LLP, United States.
The Respondent is James H Park of GimHae-Shi, South Gyeongsang, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC 1341 LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2017. On September 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 16, 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
The Complainant is Playboy Enterprises International is an international entertainment and multimedia licensing company, who owns numerous PLAYBOY trademark registrations across the world. The Complainant is inter alia extremely well-known as the publisher of the PLAYBOY magazine, one of the world's best-selling men's lifestyle magazine.
The Respondent, who is a private individual domiciled in the Republic of Korea, registered the disputed domain name on May 7, 2017.
The disputed domain name directs to a parking page containing various commercial links related to online dating and offering the disputed domain name for sale. 5. Parties' Contentions A. Complainant
First of all, the Complainant contends that the disputed domain name is confusingly similar to their trademark PLAYBOY as it identically reproduces the Complainant's trademark PLAYBOY followed by the term "vr", which is an abbreviation for the generic expression "virtual reality".
The Complainant then puts forth that the Respondent has no right or legitimate interest in the disputed domain name as it is not a licensee of the Complainant nor received any consent to use the PLAYBOY trademarks in a domain name or in any other manner. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services as the disputed domain name is currently a parking page offering the disputed domain name for sale.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith as, given the strength and fame of the PLAYBOY trademark, the Respondent necessarily had the Complainant's trademark in mind when registering the disputed domain name. It can therefore be inferred that the Respondent intentionally registered the disputed domain name to trade-off the good will and reputation of the Complainant, as shown by the offering for sale of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
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. A. Identical or Confusingly Similar
The Panel, which finds that the disputed domain name incorporates the Complainant's trademark PLAYBOY in its entirety, concurs with the opinion of prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for the purposes of first element of the Policy. (See e.g., Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903).
Besides, the mere addition of descriptive or non-distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity. In the present case, the Complainant's trademark is associated with the letters "vr" which are the abbreviation of the expression "virtual reality", which does not prevent a finding of confusing similarity. (See e.g., Samsung Electronics Co. Ltd v. Private Registration,WIPO Case No. D2016-0492).
For the purposes of the present comparison, the Panel agrees with the well-established view under the UDRP that generic Top-Level Domain ("gTLD") extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (See e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc,WIPO Case No. D2016-1236) and considers the gTLD extension ".com" to be irrelevant in the present case.
The Panel consequently finds that the disputed domain name is confusingly similar to the Complainant's trademark and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the Respondent may then, inter alia, demonstrate rights or legitimate interests in the disputed domain name by proving that one of the following circumstances of paragraph 4(c) of the Policy is applicable to the case:
(i) before any notice of the dispute, the Respondent used, or made demonstrable preparations to use the domain name or a name corresponding to the 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 domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Given the absence of reply to the Complaint, and based on the evidence submitted in the case file, for example, that the Complainant had previously registered numerous PLAYBOY trademarks, the Panel deems that the Complainant has proved their earlier and lawful rights in the PLAYBOY sign and accepts the Complainants claim that the Respondent was never granted any right to use the PLAYBOY trademark in relation to the disputed domain name. The Panel consequently deems that the Complainant has established a prima facie case that the Respondent does not have rights in the disputed domain name.
Furthermore, as the disputed domain name directs to a parking page containing various commercial links related to online dating and offering the disputed domain name for sale, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services (See e.g., Playboy Enterprises International Inc. v. Global Media Domain Trust,WIPO Case No. D2006-1543).
In light of the above, the Panel therefore considers that the Complainant has no rights or legitimate interests in the disputed domain name and, therefore, has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Firstly, as the Complainant's PLAYBOY trademark is well-known and largely used worldwide, the Panel finds very unlikely that the Respondent was unaware of the Complainant's trademark at the time of registration of the disputed domain name. As a result, the Panel finds that the Respondent could not have unintentionally incorporated the Complainant's trademark in the disputed domain name and therefore, has registered the domain name in bad faith in order to capitalize on the reputation of the Complainant's trademark (See e.g., Playboy Enterprises International Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa,WIPO Case No. D2001-0745).
Secondly, as the disputed domain name directs to a parking page containing various commercial links related to online dating, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website (See e.g., Playboy Enterprises International Inc. v. Global Media Domain Trust, supra).
Thirdly, the fact that the Respondent has offered the disputed domain name for sale shows that the Respondent's primary goal when registering the disputed domain name was to reap a commercial return from the sale of the disputed domain name to the Complainant or any third party (See e.g., Halliburton Energy Services, Inc. v. Jon Hall,WIPO Case No. D2017-0413).
Accordingly, the Panel finds that the Complainant registered and has been using the disputed domain name in bad faith and, therefore, has satisfied the requirements of paragraph 4(a)(iii) 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.
Nathalie Dreyfus
Sole Panelist
Date: October 30, 2017
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