The Complainant is Playboy Enterprises International, Inc. of Beverly Hills, California, United States of America (“United States”), represented by Venable, LLP, United States.
The Respondent is Registration Private, Domain Protection Services Inc. of Denver, Colorado, United States / Domain Vault, Domain Vault LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 12, 2018.
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 of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. On July 19, 2018, the Complainant requested to suspend the proceeding for the purpose of settlement negotiations. The Center suspended the proceeding on July 20, 2018 for a period of 30 days. Following the Complainant’s submission on August 17, 2018 of a settlement agreement between the Parties, the Center issued the Notice of Settlement on August 20, 2018. On August 20, 2018, the suspension of the proceeding was extended until September 19, 2018 for the purpose of settlement implementation. On September 20, 2018, upon confirmation the Parties were unable to implement the settlement agreement, the proceeding was reinstituted and the due date for Response was October 3, 2018. The Respondent did not submit a response.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 18, 2018. 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 a world-renowned entertainment and multimedia licensing company and owns thousands of trademark registrations around the world containing the mark PLAYBOY, including some for the mark PLAYBOY CENTERFOLD. For example, the Complainant owns United States Reg. No. 2260234 for the mark PLAYBOY CENTERFOLD, which registered on July 13, 1999.
Respondent registered the disputed domain name on April 15, 2003. Though currently inactive, the disputed domain name has been used to redirect to random URLs. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 Complainant undoubtedly has rights in the mark PLAYBOY CENTERFOLD. The mark is subject to registrations that predate registration of the disputed domain name, and has been in widespread use for many years. The disputed domain name is identical to this mark. It contains the Complainant’s mark in its entirety. The generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that (1) it has never authorized the Respondent to use any of the PLAYBOY marks in a domain name, nor has the Complainant ever acquiesced to such use, (2) the Respondent is not commonly known by the words comprising the disputed domain name, and (3) the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. These assertions establish the Complainant’s prima facie case. The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element. C. Registered and Used in Bad Faith
Because the Complainant’s mark PLAYBOY CENTERFOLD is well known, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to redirect to various websites including parking pages displaying pay-per-click links, as well as other commercial websites displaying adult content. That the disputed domain name is currently inactive does not prevent a finding of bad faith. For these reasons, the Panel finds that the Complainant has successfully met this third Policy element. 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.
Evan D. Brown
Sole Panelist
Date: October 18, 2018
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