Playboy Enterprises International, Inc. v. Federico Concas

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Playboy Enterprises International, Inc v. Frederico Concas

Case No. D2002-0074

1. The Parties

Complainant is Playboy Enterprises International, Inc. Chicago, Illinois,

USA.

Respondent is Frederico Concas, Pellezzano, Italy.

2. The Domain Name and Registrar

The domain name at issue is <playboysexygirls.com>

The Registrar is Network Solutions, Inc., Virginia, USA.

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization

Arbitration and Mediation Center (the "WIPO Center") on January 24, 2002,

and subsequently in hard copy on January 28, 2002. The WIPO Center

sent an Acknowledgement of Receipt of Complaint to the Complainant on January 25, 2002.

On January 29, 2002, a Request for Registrar Verification was

transmitted to the Registrar, and on February 1, 2002, the Registrar

confirmed that it was in receipt of the Complaint sent by the Complainant,

that the domain name <playboysexygirls.com> was registered with it

and was in "active" status. The Registrar forwarded at the same time the

requested WHOIS details.

A Formal Requirements Compliance Checklist was completed by the WIPO Center

on February 4, 2002. The Panel has independently determined and

agrees with the assessment of the WIPO Center that the Complaint is in compliance

with the requirements of the Uniform Domain Name Dispute Resolution Policy

("the Policy") and the Rules for Uniform Domain Name Dispute Resolution

Policy ("the Rules"), as approved by ICANN on October 24, 1999,

and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy

(the "WIPO Supplemental Rules"), in effect as of December 1, 1999.

The Complainant paid on time and in the required amount the fees for a three

member Panel.

On February 4, 2002, a Notification of Complaint and Commencement

of Administrative Proceeding (the "Commencement Notification")

was transmitted to the Respondent by the required means, setting a deadline

of February 24, 2002, by which the Respondent could file a Response

to the Complaint.

Also on February 4, 2002, Complainant and the WIPO Center received

e-mails from the Respondent (one in Italian and one in English) in which

he explained his position.

On February 28, 2002, having received no formal Response from

the Respondent, the WIPO Center transmitted to the Respondent a Notification

of Respondent Default.

The WIPO Center then invited Mr. Knud Wallberg, Mr. David H. Bernstein

and Ms. Eva Fiammenghi to serve as Panelists in the case, and transmitted

to each of them a Statement of Acceptance and Request for Declaration of

Impartiality and Independence.

Having received Statements of Acceptance and Declarations of Impartiality

and Independence from Mr. Knud Wallberg, Mr. David H. Bernstein and Ms. Eva Fiammenghi,

the WIPO Center transmitted on March 18, 2002, to the parties

a Notification of Appointment of Administrative Panel and Projected Decision

Date, in which Mr. Knud Wallberg, Mr. David H. Bernstein and Ms. Eva Fiammenghi

were formally appointed as Panelists.

The Panel finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and WIPO Supplemental Rules.

The Administrative Panel has issued its Decision based on the Complaint, the

Policy, the Rules, and the WIPO Supplemental Rules, but without the benefit

of a formal Response from the Respondent.

4. Factual Background

Because Respondent has submitted no Response, we accept the allegations of

the Complaint as true. Easy Heat, Inc. v. Shelter Prods, WIPO

Case No. D2001-0344 of June 14, 2001. The following facts are taken from

the Complaint.

Playboy is an international multimedia entertainment company. Playboy is

a worldwide provider of adult lifestyle entertainment through a wide variety

of media, including print, cable television, videotape and the Internet.

Playboy’s products and services include, but are not limited to, printed

magazines, specialty publications, consumer products, apparel, videotapes,

cable television programming, and on-line information and entertainment

services (the "Playboy Goods and Services"). Playboy uses and

licenses its PLAYBOY mark in association with the promotion, advertisement

and sale of the Playboy Goods and Services around the world.

Playboy magazine is the best-selling men's monthly magazine in the world.

Worldwide monthly circulation, which includes 17 international editions, is

more than 4.9 million copies. The Italian edition of Playboy magazine

has been uninterruptedly published for 29 years. Other national editions are

currently published in Brazil, Croatia, the Czech Republic, France, Germany,

Greece, Hungary, Japan, the Netherlands, Poland, Romania, Russia, Slovakia,

Spain, Slovenia and Taiwan. The combined average circulation of the international

editions is approximately 2 million copies monthly.

Playboy owns thousands of registrations for the Playboy mark worldwide including

over twenty-five registrations for the mark PLAYBOY in Italy protecting a variety

of goods and services. True and correct copies of the certificates of registrations

for said registrations were attached as Annex to the Complaint.

Playboy has spent substantial time, effort and money advertising and promoting

the PLAYBOY trademark throughout the United States and the world. As a result,

the PLAYBOY mark has become internationally famous and Playboy has developed

substantial goodwill in its PLAYBOY mark. The distinctiveness, strength and

fame of the PLAYBOY mark has 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), (PLAYBOY trademark is distinctive, strong and has acquired

great fame); and Playboy Enters, Inc. v. AsiaFocus Int’l, Inc., 1998,

WL 724000 (E.D.Va. April 10, 1998), (noting that fame of the PLAYBOY mark is

beyond dispute). Also, see Playboy v. Giannattasio, (Court of

Naples, January 14, 1999, Giurisprudenza Annotata di Diritto Industriale, Giuffrè,

1040, 1999): "The trademark PLAYBOY for its certain renown at worldwide level,

is entitled to complete, full and total protection…" See also, (Board

of Appeal of Naples, March 24, 1999, id.) "the PLAYBOY trademark.…belonging

to the category of the so-called strong trademarks, is precisely in the name

PLAYBOY, name which for its remarkable distinctiveness impresses itself with

particular strength in the perception of the consumer. And this is the more

so since such name has become exceptionally renown...."

In connection with the PLAYBOY trademark, Playboy has an established presence

on the Internet through its Websites, including those located at the domain

names <playboy.com>, <playboytv.com>, <playboystore.com>,

<playboyauctions.com> and the "playboy cyber club" site

(collectively, the "Playboy Websites"). The Playboy Websites allow

computer users worldwide to access information regarding Playboy and the

Playboy Goods and Services. Printouts from the Playboy Websites were included

as Annex to the Complaint.

Respondent’s Registration and Use of the Domain Name

According to Complainant, Respondent has no connection or affiliation with

Playboy. Respondent has not received any license or consent, express or

implied, to use Playboy’s famous PLAYBOY trademark in a domain name or in

any other manner.

As evidence of Respondent’s bad faith registration and use of the domain name,

Complainant submitted a copy of the Complaint and the decision in WIPO

Case No. D2001-0745 <playboy-photographer.com>, which was a case between

the same parties. The registration and use of the domain name <playboysexygirls.com>

took place and began after the Respondent was notified of the previous Complaint

filed against it by Playboy in regard to <playboy-photographer.com>. The

Respondent admitted his reason for registering the domain name in his e-mail

of July 7, 2001:

"Since you do not understand…. I thought to make you a present "www.playboysexygirls.com".

Now you have to chase again.Hahhahahahahaahhahahahahahhahahahahahahahahaha.

The combinations of the name Playboy are almost infinite and then

there are the territorial suffixes too! < .net> <.org>

<.uk> <.mc> <.co> <.za> <.tv>. A little

example…multiply US$ 3.000 for each country (money you have to give to

wipo to try to obtain the domain) I only spend $35 for each domain (a

little …formal difference), and suffix and you will have more or less

US$ 4.000.000!!!!! ahhahah (8 billion) euro 4.000.000. This calculation

only refers to the territorial variables of the name playboy-photographer.

etc etc etc. And now the combinations are doubled! Playboysexygirls. etc.

etc.etc.

Now we're up to $8.000.000. Well… Internet is so democratic!

I am little but I can badly pester anyone (actually the language is more

offensive). I find it unfair the fact that playboy must win since they

are richer than me… in my opinion they will never win! unless they buy

all the domain of the whole world with playboy combination ……!"

This e-mail was enclosed as Annex to theComplaint. The e-mail was sent to Playboy’s

Italian counsel during the course of the prior ICANN proceeding between the

two parties. Playboy was unaware of the registration of the domain name prior

to receiving this notification.

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint and has not been contested

by Respondent.

The Domain Name is Identical or Confusingly Similar to Playboy’s PLAYBOY

Mark

The domain name, <playboysexygirls.com> is identical or confusingly similar

to Playboy’s registered PLAYBOY trademark. The Respondent merely builds on the

famous PLAYBOY mark by adding the words, "sexy" and " girls,"

that would reference a product or service offered by Playboy since Playboy is

renown for its images of sexy girls. Playboy is well known for its magazine

and website features of images of sexy girls, including its PLAYMATE models,

CYBER GIRL models, PLAYMATE OF THE YEAR, and more. Prior ICANN Panels have found

that the addition of a generic word or modifier to a famous trademark in a domain

name does not eliminate confusion and is evidence of bad faith. See Playboy

Enterprises International, Inc. v. Vileshome, WIPO

Case No. D2001-1082, "Here, each disputed domain name incorporates,

as its most prominent feature, the whole of the Complainant’s famous trademark

PLAYBOY, together with the descriptive word MARKET, which does nothing to detract

from the immediate association with the Complainant aroused in the public mind

by the word PLAYBOY." See also Playboy Enterprises International, Inc.

v. Federico Concas, a.k.a. John Smith, w.k.s. Orf3vsa, WIPO

Case No. D2001-0745, "The disputed domain name is confusingly similar

to the Complainant’s registered trademark PLAYBOY, being a combination of the

well-known trademark PLAYBOY with a generic term which makes explicit reference

to the field of activity (photography) in which the Complainant has gained renown."

In this case, the domain name only adds the descriptive words SEXY and GIRLS

to the famous PLAYBOY trademark. These descriptive words reference images of

women for which Playboy has gained renown. Thus, the domain name <playboysexygirls.com>

is identical and confusingly similar to Playboy’s PLAYBOY mark. The Respondent’s

use is likely to cause confusion, dilute the PLAYBOY mark, impair the distinctive

repute and goodwill of the PLAYBOY trademark and potentially cause considerable

harm to Playboy’s commercial interests.

Respondent has no Legitimate Interest in the Domain Name

There is no evidence that the Respondent has ever been known by the domain

name, nor does the domain name reflect the Respondent or its business

name. The Respondent does not own the trademark registration for <playboysexygirls.com>,

or any PLAYBOY variation, and could not obtain registrations because the

PLAYBOY marks belong to and are registered by Playboy. Respondent has

no connection or affiliation with Playboy, nor has he received any license

or consent, expressed or implied, to use the PLAYBOY mark in a domain

name or in any other manner. An on-line search made among Italian as well

as International registrations extended to Italy and into Community trademarks,

did not disclose the Respondent owning any trademark registration or application

for the domain name.

The Respondent has not used the domain name in connection with a bona

fide offering of goods or services. It is quite evident that in light

of the renown and fame of the PLAYBOY mark, and the pattern of the Respondent’s

conduct, that he did not use or demonstrably prepare to use the domain

name in connection with a bona fide offering of goods or services to the

public as required by §16(6)(1) of the Naming Rules ("before any

notice of the dispute [the respondent] has used or made demonstrable preparation

to use the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services to the public").

All previously indicated circumstances show that there was never a bona

fide offering of goods or services, beginning with the registration of

the domain name after the previous ICANN Complaint was filed. Further,

the Respondent admitted that it registered the name to pester Playboy

and to force Playboy to resort to costly arbitration or litigation if

they did not pay undisclosed excessive fees for the domain name.

The Respondent has not made a legitimate non-commercial or fair use of

the domain name. The domain name is used to bring Internet users to the

Infringing Website that contains banner advertisements and hundreds of

links to third party commercial Websites. The domain name has been used

solely for the purpose of diverting Internet traffic to the Respondent’s

own commercial Infringing Website. The Respondent’s activities do not

constitute fair use of the domain name.

Respondent Registered and is Using the Domain Name in Bad Faith

Respondent’s registration and use of the domain name were both done in

bad faith. Playboy’s PLAYBOY mark is famous. The Respondent was aware

of the fame of the PLAYBOY mark when registering the domain name. Further,

Playboy placed the Respondent on notice of its rights in and to its famous

PLAYBOY mark long before the Respondent registered the domain name. At

the time of registration, the Respondent was already the Respondent in

a separate ICANN UDRP Complaint filed against it by Playboy. Previous

WIPO Panelists have stated, "Respondent is deemed to have constructive

knowledge of Complainant’s trademark when Complainant’s trademark is well

known in the U.S. and around the world. This constructive knowledge evidences

Respondent’s registration and use of the domain name in bad faith."

See American Express Company v. Strategic Concepts, NAF Case No.

FA0101000096378. In this case, the Respondent not only had constructive

knowledge of Playboy’s trademark rights, but actual knowledge of them.

The Respondent, prior to registering the domain name, had been sent letters

from Playboy’s counsel putting him on notice of Playboy’s rights in addition

to receiving a copy of the prior ICANN Complaint filed against him which

included copies of several of Playboy’s trademark certificates in both

the U.S.A. and Italy.

The explicit threat made in the Respondent’s e-mail dated July 7, 2001,

(quoted above in Paragraph 4), which then materialized to the registration

and use of the domain name, shows a malicious intent aimed to unlawfully

exploit the renown of PLAYBOY. The Respondent’s actions force Playboy

to either submit to pay an undefined amount of money in order to stop

what might become an endless chase or seek relief via arbitration or litigation.

It is indeed clear that registration and use of the domain name were done

intentionally to gain unlawful advantages by the illicit exploitation

of Playboy's fame. It is the Respondent's admitted intent to unjustly

benefit from the fame of the mark to attract Internet users to its Website.

The Respondent further admits that his abusive behavior is intended to

create a situation in which Playboy would be forced to offer valuable

consideration well in excess of the registration costs to acquire the

domain name or seek relief via arbitration or litigation.

Since at least as early as July 10, 2001, Respondent has continually

run an active adult website at "www.playboysexygirls.com" (the

"Infringing Website"). The Infringing Website, prior to December 2001,

predominantly advertised a link to "playboy-photographer.com."

The Infringing Website features adult sexual images and hundreds of links

to third party adult Websites. Further, the Infringing Website makes unauthorized

use of the PLAYBOY mark on the site and in the html source meta code.

The html source code meta data also includes other Playboy trademarks

including PLAYMATE, HEFNER and CENTERFOLD. This unauthorized use of Playboy’s

trademarks is meant to lure Internet users who are searching under the

keywords PLAYBOY, PLAYMATE, HEFNER, or CENTERFOLD, all trademarks of Playboy,

to the Infringing Website. This use is clearly in violation of Playboy’s

trademark rights. Printouts of the Infringing Website on July 10, 2001,

was attached as Annex K. Recent printouts of the Infringing Website dated

January 18, 2002, were attached as Annex L.

All circumstances above indicate the existence of a bad faith registration

and use which continues and is evident in the Respondent's present conduct.

Notwithstanding the fact that the Respondent had prior notice of Playboy’s rights,

and Playboy had offered reimbursement of registration costs and waiver of any

legal action and claim against the Respondent, the Respondent continues the

operation of its website with the greatest disregard for Playboy’s rights. The

UDRP Rules explain that bad faith is demonstrated when, "the domain

name registrant intentionally attempt[s] to attract for financial gain, Internet

users to the registrant’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 registrant’s website or location or of a product or service

on the registrant’s website or location." See also Viacom International

Inc. v. Sung Wook Choi and M Production, WIPO

Case No. D2000-1114, where "… the Panel notes the Respondent’s

later admission of the ‘global fame’ of the MTV marks…In all the circumstances

the Panel finds that the Respondents took advantage of the fame of the Complainant’s

mark by registering a domain name confusingly similar to the Complainant’s mark.

The Panel finds further that the Respondents did so to attract Internet users

to their website with a view to maximizing their own commercial gain."

Further, see Bloomberg, L.P. v. Electronic Media Services, NAF Case No.

FA0101000096438 "Attracting Internet users to a website, for commercial

gain, by causing confusion with the Complainant’s mark as [to] the sponsorship,

endorsement, affiliation, or source of the website is evidence of bad faith."

In the light of the foregoing, Playboy believes, having proven the occurrence

of circumstances indicated in paragraph 4(b) of the Policy, that the existence

of the Respondent's bad faith, both at registration date and subsequent

to such date, is established.

B. Respondent

As mentioned above in section 3, the Respondent has not filed a formal Response

in accordance with the Rules, Paragraph 5.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint

in accordance with the Policy, the Rules and any rules and principles of

law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

1) 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; and

2) that the Respondent has no rights or legitimate interests in

respect of the domain name; and

3) that the domain name has been registered and is being used

in bad faith.

Identical or Confusingly Similar

The Complainant’s mark PLAYBOY is registered and has been used in numerous

countries around the world including in Italy. In addition, the mark must

be considered to be a well-known mark within the relevant sector of the

public also in Italy.

The domain name <playboysexygirls.com> contains as its first and

dominant part the trademark PLAYBOY with the addition of the generic term

SEXYGIRLS and the addition of the gTLD denomination <.com>.

Under these circumstances the domain name must be considered to be confusingly

similar to the trademark in which the Complainant has rights. Reference can

be made to several similar findings in other UDRP cases, including those mentioned

by the Complainant. E.g., Kidman v. Zuccarini, WIPO

Case No. D2000-1415 of January 23, 2001.

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate Interest

The Complainant has not licensed or otherwise permitted the Respondent

to use its trademark or to apply for any domain name incorporating the mark.

Further, the Respondent has not demonstrated that he has any prior rights

or legitimate interests in the domain name. On the contrary, his e-mail,

in which he characterizes his conduct as "pester[ing]" Playboy,

constitutes an admission that he has no right to use this domain name.

The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered

fulfilled.

Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant

must prove registration and use of the domain name in bad faith.

Paragraph 4(b) sets out, by way of example, the kind of evidence that may

be put forward.

In the present case there can be no doubt that the contested domain name

has been registered and used in bad faith.

It is clear from the evidence, and in particular from the e-mail from the

Respondent quoted above in Paragraph 4, that the domain name was registered

not only with the knowledge of the rights of the Complainant, but also with

the clear intent to harass and otherwise harm the Complainant.

It is also clear from the enclosed printouts of the website under the contested

domain name, that this was actually used. Further, it was used with a content

that could attract Internet users to the website by causing confusion with the

Complainants mark as to the endorsement or affiliation of the website. Las

Vegas Sands, Inc. v. Red Group, WIPO Case

No. D2001-1057 of December 6, 2001.

In addition, the Panel notes that the Respondent seems to be engaged in

a pattern of such bad faith registrations.

The Panel therefore concludes that the Complainant has proved that the Respondent

was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

7. Decision

In view of the above circumstances and facts the Panel finds that the domain

name registered by the Respondent is confusingly similar to the trademark

in which the Complainant has rights, that the Respondent does not have any

rights or legitimate interests in respect of the domain name, and that the

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

Consequently, the Panel decides that the domain name <playboysexygirls.com>

be transferred to the Complainant.

Knud Wallberg

Presiding Panelist

David H. Bernstein

Panelist

Eva Fiammenghi

Panelist

Dated: March 27, 2002

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