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Playboy Enterprises International, Inc. v. BEG Service KB

WIPO Case No. D2001-0494

Outcome
Transfer
Domain names
playboycasino.com
Complainant
Playboy Enterprises International, Inc.
Respondent
BEG Service KB
Panel
Ian Barker QC, Michaelson, Esq., G.W.G. Karnell
Registrar
Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI")
Decided
30 May 2001

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0494.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Playboy

Enterprises International Inc. v. BEG Service KB

Case No.

D2001-0494

1. The

Parties

The Complainant is

Playboy Enterprises International Inc., a Delaware corporation with its

principal place of business at Chicago, Illinois, U.S.A. The Complainant

is represented by Ms Suzanne V. Wilson of Arnold & Porter, Attorneys,

of Los Angeles, California, U.S.A.

The Respondent is BEG

Service KB, a Swedish corporation of Stockholm, Sweden. The Respondent

is represented by Attorney Michael Norstrand of the law firm Litus AB of

Stockholm, Sweden.

2. The Domain

Name and Registrar

The domain name at

issue is <playboycasino.com>. The domain name is registered with Network

Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

("NSI").

3. Procedural History

The Complaint submitted

by Playboy Enterprises International Inc. was received on April 4,

2001, (electronic version) and April 5, 2001, (hard copy) by the World

Intellectual Property Organization and Mediation Center ("WIPO Center").

On April 9, 2001,

a request for Registrar verification was transmitted by the WIPO Center

to NSI, requesting it to:

Confirm that a

copy of the Complaint had been sent to it by the Complainant as requested

by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental

Rules"), paragraph 4(b).

Confirm that the

domain name at issue is registered with NSI.

Confirm that the

person identified as the Respondent is the current registrant of the

domain name.

Provide full contact

details, i.e., postal address(es), telephone number(s), facsimile number(s),

email address(es), available in the Registrar’s WHOIS database for the

registrant of the disputed domain name, the technical contact, the administrative

contact and the building contact for the domain name.

Confirm that the

Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

Indicate the current

status of the domain name.

By email dated April 12,

2001, NSI advised WIPO Center as follows:

NSI had received

a copy of the Complaint from the Complainant.

NSI is the Registrar

of the domain name registration <playboycasino.com>.

The Respondent

is shown as the "current registrant" of the domain name.

The administrative

and billing contact is B E Gustafsson at the same address

as the Respondent.

NSI’s 5.0 Service

Agreement is in effect.

The domain name

registration <playboycasino.com> is currently in "Active"

status.

NSI has currently

incorporated in its agreements the policy for Uniform Domain Name Dispute

Resolution adopted by the Internet Corporation for Assigned Names and

Numbers ("ICANN") (hereinafter simply the "Policy").

The advice from NSI

that the domain name in question is still "active" indicates the

Respondent has not requested that the domain name at issue be deleted from

the domain name database. The Respondent has not sought to terminate the

agreement with NSI. Accordingly, the Respondent is bound by the provisions

of the Policy. The Respondent has not challenged the jurisdiction of the

Panel.

Having verified that

the Complaint satisfied the formal requirements of the Policy and the Rules

for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on

April 17, 2001, transmitted by post-courier and by email a notification

of the Complaint and Commencement of Administrative Proceedings to the Respondent.

A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected

to have its Complaint resolved by a three-person panel; it has duly paid

the amount required of it to the WIPO Center.

The Respondent was

advised that a Response to the Complaint was required within 20 calendar

days. The Respondent was also advised that any Response should be communicated,

in accordance with the Rules, by four sets of hard copy and by email.

On May 4, 2001, the

Respondent had sought an extension of time for filing an additional Response;

however, in an email of the same date, to the Respondent's counsel, the

Center indicated that it could not grant the request. The Respondent

made no subsequent request that the Panel consider an extension. The reasons

for the extension did not strike the Panel as strong.

The Response was received

by the WIPO Center on May 6, 2001 (electronic) and May 9, 2001 (hard copy).

WIPO Center invited

the Honorable Sir Ian Barker QC of Auckland, New Zealand

to serve as Presiding Panelist in the case. It invited Peter L. Michaelson,

Esq. of Michaelson & Wallace of Red Bank, New Jersey, U.S.A. and Professor

G.W.G. Karnell of the Stockholm School of Economics, Stockholm, Sweden to

be Panelists. It transmitted to each of them a statement of acceptance and

requested a declaration of impartiality and independence.

All Panelists duly

advised acceptance and forwarded to the WIPO Center an executed declaration

of impartiality and independence. The Panel finds that the Administrative

Panel was properly constituted in accordance with the Rules and the Supplemental

Rules.

On May 22, 2001,

WIPO Center forwarded to the Panel by courier the relevant submissions and

the record. In terms of Rule 5(b), in the absence of exceptional circumstances,

the Panel is required to forward its decision by June 4, 2001.

The Panel has independently

determined and agrees with the assessment of WIPO Center that the Complaint

meets the formal requirements of the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is

a worldwide provider of ‘adult’ lifestyle entertainment through print, cable

television, videotape and the internet.

Its products and services

include printed magazines, specialty publications, videotapes, cable television

channels, online information and entertainment and hospitality services

in a number of countries. It owns, among other trademarks, the trademark

"PLAYBOY". It has numerous registrations for this mark in

the United States, Sweden and elsewhere. It uses and licenses its PLAYBOY

mark in association with the promotion, advertisement and sale of a wide

variety of goods and services, including those in the entertainment, gaming

and computer industries. It also markets its marks on apparel, accessories

and other products sold throughout the world, in stores, through catalogues,

and on-line through the internet.

The Complainant owns

additional marks incorporating the expression "PLAYBOY", including the "PLAYBOY

CASINO" mark which is registered in Greece, the U.K. and Australia.

The Complainant has

been involved in the gaming industry since it first opened a casino in 1966.

The mark PLAYBOY CASINO is used by the Complainant in connection with its

gaming activities.

The Complainant has

spent substantial time, effort and money advertising and promoting its marks

throughout the United States, Europe and the world. The distinctiveness,

strength and fame of the PLAYBOY mark have been acknowledged by a number

of courts. See, e.g., Playboy Enters., Inc. v. Baccarat Clothing Co,

Inc., 692 F.2d 1272 (9th Cir. 1982); and Playboy

Enters., Inc. v AsiaFocus Int’l, Inc., 1998 WL 724000 (E.D. Va. Apr.

10, 1998).

In connection with

its marks, Complainant has established internet websites, including those

located at the domain names <playboy.com>, <playboytv.com>,

<playboystore.com>, and <playboyauctions.com> and the <playboy

cyber club> site. The websites allow computer users to access information

regarding Complainant and its products and services. The websites contain

information regarding its entertainment and hospitality services, occasionally

including those provided under the PLAYBOY CASINO mark.

5. Parties’ Contentions

Complainant:

The disputed domain

name <playboycasino.com> is identical to Complainant’s trademark PLAYBOY

CASINO. The domain name is confusingly similar to the Playboy marks.

Courts have recognized

that consumers expect to find a company on the internet at a domain name

address comprised of the company’s name or marks. See, e.g., Panavision

Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir.

1998) ("A customer who is unsure about a company’s domain name will

often guess that the domain name is also the company’s name. … [A] domain

name mirroring a corporate name may be a valuable corporate asset, as it

facilitates communication with a customer base."). This is all the

more so when, the Complainant uses the internet to market or sell its goods

and services. Because PLAYBOY CASINO is the trademark for Complainant’s

casino and gaming services and entertainment, consumers may expect to find

Complainant’s website at <playboycasino.com>. Because Respondent has

registered <playboycasino.com>, however, those consumer expectations

are frustrated.

Respondent has no connection

or affiliation with Complainant. Respondent has not received any license

or consent, express or implied, to use the marks in a domain name or in

any other manner.

Respondent has not

used the infringing domain name in connection with a bona fide

offering of goods or services. Respondent does not have a trademark registration

for "playboycasino" and could not obtain one.

Respondent has not

made a legitimate non-commercial or fair use of the infringing domain name.

After it learned that

Respondent had registered the domain name the Complainant, through its counsel

in Sweden, sent a letter dated August 3, 2000 to the Respondent requesting

the release or transfer of the infringing domain name. Respondent neither

replied to the letter nor released the registration.

By letter dated October 10,

2000, Complainant’s counsel again wrote to Respondent regarding the infringing

domain name, offering to pay Respondent’s out-of-pocket costs if he would

transfer the domain name. Again, Respondent neither replied nor released

the registration. The Respondent subsequently renewed the domain name registration

for another two years from October 25, 2000.

The Complainant’s marks

are famous throughout the world. The fame and reputation of a trademark owner’s

mark can be persuasive in determining a respondent’s bad faith intent in registering

a domain name that contains the famous mark. See Telstra

Corp. Ltd v. Nuclear Marshmallows

D2000-0003 (WIPO February 18, 2000). Given the fame of the marks, "it

is not possible to conceive of a plausible circumstance in which the Respondent

could legitimately use the [infringing domain name]. It is also not possible

to conceive of a plausible situation in which the Respondent would have been

unaware of this fact at the time of registration". Accordingly, Respondent

has registered the infringing domain name in bad faith.

Respondent also has used

the infringing domain name in bad faith. Respondent has not linked the domain

name to an active website, but "the passive holding of the domain name,

without use in commerce, may support a holding of use in bad faith". Recordati

S.P.A. v. Domain Name Clearing Co.

D2000-0194 (WIPO July 21, 2000).

Respondent has held the

infringing domain name since 1997 without linking it to an active website. Failure

to make a bona fide use of a domain name for more than two years

following registration constitutes bad faith. Chernow

Communications, Inc. v. Jonathan D. Kimball

D2000-0119 (WIPO May 18, 2000) (citing Mondich

and American Wine Biscuits, Inc. v. Brown

D2000-0004 (WIPO February 16, 2000)). Respondent’s apparent "parking"

of the name is evidence of bad faith registration and use.

Respondent:

The domain name was

registered because of the registrant’s intention to start up a casino business

activity on the internet. The name "playboy" was chosen because

the Respondent wished to name the site by allusion to a playboy who of common

knowledge is a rich young man traveling around the world, who does not work

for earning a living but is just having a good time and spending money on

such as gambling.

The domain name was

not registered with the aim to be mixed up with the Complainant’s "pornographic

business activities".

The word "playboy"

is a compound word composed of "play" and "boy". Both

these words are extensively used in different combinations of words and

the words do also separately have their own meaning. Moreover, the word

"play" and "boy" when combined refers to a rich young

gambling man as stated above. Thus, the Complainant has no exclusive right

to the word "playboy" as the word itself has a meaning commonly

used with no reference to the pornographic business activities of the Complainant.

The word "playboy" must accordingly be differentiated from a name

which is a distinctive mark of a product or a business activity where the

name itself does not have its own meaning but does only characterize the

product or business activity in question.

An article in a Swedish

daily newspaper, Svenska Dagbladet, shows that the concept "playboy"

has been applied in accordance with its meaning as stated above.

The parties are active

in business fields completely different from each other, as well as focus

on different clienteles: there is no risk the Complainant’s customers will

be confused or be mistaken as regards the Respondent’s activities on the

site <playboycasino.com>.

The Complainant is

known for its pornographic activities. It is true that the Complainant during

the years has extended its entertainment business activities, but in 1997

when the Respondent registered the domain name in dispute, the Complainant

was not involved in casino activities on the internet. Moreover, due to

legal restrictions in the U.S.A. at that time, it was not even possible

for the Complainant to carry on casino activities on the internet. Only

recently has it become legally possible for the Complainant to carry on

casino activities on the internet.

The Respondent has

not registered the domain name in bad faith and has accordingly also not

used the domain name in bad faith.

The Respondent did

not reply to the letters sent by the Complainant because it is well known

that when a respondent has entered into negotiations with the Complainant

and the negotiations have resulted in an offering to the complainant to

buy the domain name, a Panel has several times regarded such an offering

as an evidence of bad faith on behalf of the respondent.

6. Discussion and

Findings

Paragraph 15(a) of

the Rules instructs the 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".

The burden for the

Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain

name registered by the Respondent is identical or confusingly similar

to a trademark or service mark in which the Complainant has rights;

- That the Respondent

has no legitimate rights or interests in respect of the domain name; and

- The domain name

has been registered and used in bad faith.

In the view of the

Panel the disputed domain name is identical to the Complainant’s marks,

PLAYBOY CASINO. It does not matter that those particular registrations are

not in the same jurisdiction as the Respondent.

In the Panel’s view,

the Respondent has no legitimate rights to or interest in the domain name.

The Complainant gave it none. The Respondent’s claim to set up a casino

utilizing the concept of a rich young gambling man strains credulity. The

name "Playboy" and the services and products which the Complainant

advertises and sells worldwide are well known. It is naïve to suggest

that the Respondent had never heard of the Complainant and its activities.

The Respondent has not rendered credible its contention that the parties

would be active in completely different fields. If there ever would be an

activity on the part of the Respondent whilst using the domain name, as

the Respondent seems to suggest, such activity would likely coincide with

the Complainant’s. The statement that the Respondent aims at a different

business field is simply not plausible. Rich young men with a penchant for

gambling are probably very desirable customers and website visitors from

the Complainant’s point of view. Accordingly the Panel finds the second

criterion proved.

Similarly, the third

criterion. It strains belief that the Respondent did not know of the Complainant

and its heavy involvement in the entertainment industry at the time the

name was registered. It may not have known of the registration of the mark

"PLAYBOY CASINO" in UK, Greece and Australia but it would have

known of the mark "PLAYBOY".

The Respondent’s failure

to develop the website and to reply to the Complainant’s letters are all

indicative of continuing bad faith use. In other cases known to members

of the Panel, a reasoned reply to a "cease and desist" letter

can often help a respondent show that it comes within the criteria of paragraph

4(b) of the Policy and can also help to show good faith. However, such a

reply is non-existent here.

Accordingly for the

reasons stated, the Panel finds the Complaint proved.

7. Decision

For the foregoing reasons,

the Panel decides:

(a) That the

domain name registered by the Respondent is confusingly similar to

the trademark to which the Complainant has rights;

(b) That the

Respondent has no rights or legitimate interests in respect of the

domain name; and

(c) The Respondent’s

domain name has been registered and is being used in bad faith.

Accordingly, pursuant to

paragraph 4(i) of the Policy, the Panel requires that the registration of the

domain name <playboycasino.com> be transferred to the Complainant, Playboy

Enterprises International Inc.

Hon. Sir

Ian Barker QC

Presiding Panelist

Peter L.

Michaelson, Esq.

Panelist

Professor

G.W.G. Karnell

Panelist

Dated: May

28, 2001

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