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Playboy Enterprises International, Inc. v. Luis Sastre [2005] GENDND 1481 (2 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Playboy Enterprises International, Inc. v. Luis Sastre

Case No. D2005-0332

1. The Parties

The Complainant is Playboy Enterprises International, Inc., Chicago, Illinois, the United States of America, represented by Pittaluga & Associates Abogados, Uruguay.

The Respondent is Mr. Luis Sastre, Montevideo, Uruguay.

2. The Domain Name and Registrar

The disputed domain name <playboy-movies.com> is registered with Direct Information Pvt Ltd. dba Directi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2005. On March 31, 2005, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name(s) at issue. On April 1, 2005, Direct Information Pvt Ltd. dba Directi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2005. On May 6, 2005 the Respondent sought additional time to file a Response, but as at the date of this decision has yet to make any response to the Complainant’s assertions. Accordingly, the Center notified the Respondent’s default on May 10, 2005.

The Center appointed Dan Hunter, Timothy D. Casey and Maninder Singh as panelists in this matter on July 18, 2005. The Panel finds that it was properly constituted. Each member of 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

1. The Complainant and its Mark

The Complainant is an international multimedia company, and a worldwide provider of adult entertainment through a wide variety of media, including print, cable television, videotape and the Internet. Its periodical, “Playboy Magazine” is the best-selling men’s monthly magazine in the world. The Complainant owns thousands of trademark registrations for the word “PLAYBOY “all over the world, including over ten registrations in Uruguay protecting a wide range of goods and services. It also has domain name registrations for the domain names <playboy.com>, <playboytv.com>, <playboystore.com>, <playboyauctions.com> and <playboymovies.com>, where it provides access to various forms of adult content.

2. The Respondent

According to the WHOIS record, the registrant of the disputed domain name and Respondent in this proceeding is Luis Sastre, as provided above. No Response was filed and no other information is known about the Respondent.

3. The Use of the Domain Name

At the time of this decision the domain name did not resolve correctly. Until the lodging of the Complaint, the domain name resolved to a website which provided various forms of adult content. This content was not provided or authorized by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s marks. Specifically, the Complainant asserts:

(1) The domain name contains the Complainant’s trademark as its first and dominant part, followed by the addition of the generic term “movies” as well as the gTLD denomination “.com”.

(2) The Complainant is the owner of the domain name <playboymovies.com>. This fact alone leads it to conclude that the disputed domain name must be considered as confusingly similar to the trademarks over which the Complainant has exclusive rights, as well as to many of its other domain names.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) The Respondent has no connection with the Complainant, and cannot use the Complainant’s trademarks without expressed or implied authorization. There is no valid reason for the Respondent to use the Complainant’s trademarks without its authorization.

(2) The Respondent has never been known by the disputed domain name, nor does the disputed domain name reflect him or his business. The Respondent is using the Complainant’s trademarks in relation with this domain name merely in an attempt to take advantage of the marks’ fame, as he has not acquired rights over the marks.

(3) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) The Complainant’s trademarks are famous and well-known. Evidently, the Respondent was aware of the fame of the Complainant’s trademarks when he registered the disputed domain name.

(2) Further, in a letter dated August 24, 2004 the Complainant placed the Respondent on notice of its rights over its trademarks.

(3) The infringing website has featured adult sexual images and offered different kinds of goods since at least October 10, 2003. Further, this website makes an unauthorized use of the Complainant’s trademarks on the site and in the html source meta code. This unauthorized use of the Complainant’s trademarks is meant to lure Internet users who are performing searches under the keywords “PLAYBOY” or “PLAYBOY MOVIES” to the infringing website.

(4) The use of the disputed domain name is clearly intended to attract members of the public who have an interest in the Complainant’s products under the “PLAYBOY” trademark, to then offer them the Respondent’s products and services.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.com> namespace. Paragraph 4.a. of the Policy requires a Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

1. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the Complainant’s marks.

The Complainant has provided the registration documents for its “Playboy” marks registered in Uruguay. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark under paragraph 4.a.(i) of the Policy.

The second requirement is that the domain name be identical or confusingly similar to the mark. The <playboy-movies.com> domain name adopts the clearly identifying mark, hyphenated with one of the types of media (movies) for which the Complainant is well known. Of course, the domain name also includes the <.com> top level domain signifier, but this gTLD signifier does not change the user’s understanding of the domain name. A user coming upon the domain name is therefore exceedingly likely to confuse the domain name with the Complainant’s products and services. Hence the Panel concludes that the domain name is, for the purposes of the Policy, confusing similar to the Complainant’s marks.

The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the domain name is confusing similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the Policy.

2. The Respondent has no Rights or Legitimate Interest in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, that the Respondent is using the domain name to take advantage of the Complainant’s fame, and that the Respondent is not making any bona fide offering of goods or services at the domain name.

The Respondent has not responded to these assertions. However, in the interests of ensuring a fair application of the Policy, the Panel considers it relevant to consider whether there is any evidence to support the application of the examples provided in Paragraph 4.c. of the Policy. Paragraph 4.c. provides the following examples of activities of the Respondent, which may lead to its obtaining rights or a legitimate interest in the domain name:

“(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.”

There is no evidence that any of the scenarios of Paragraph 4.c apply to the Respondent. Given the fame of the Complainant, and the nature of the content which it provides, the Respondent’s use of the domain name appears to be calculated to attract mistaken users to the Respondent’s website. There is no evidence that the Respondent was ever known by a name similar to the disputed domain name. Nor is there evidence of legitimate non-commercial or fair use of the domain name, nor any other bona fide offering of goods and services by the Respondent, other than the provision of competing goods and services using the Complainant’s marks, which on its own is insufficient to constitute a bona fide offering of goods and services.

As a result the Panel concludes that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

3. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainant makes a number of submissions in relation to this point (see section 5, above) the strongest of which is the claim that the Respondent registered and uses the domain name to lure users to his site in a mistaken belief that the site stems from the Complainant. This claim is based on the bad faith exemplar outlined in paragraph 4.b.(iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

The Respondent has registered and used a domain name which is very likely to be confused with those of the Complainant, and has served up adult content from that site. It is clear that he has used the domain name to attract users to its site for commercial gain, by creating confusion in the minds of Internet users as to the source of the website site. The requirements of paragraph 4.b.(iv) are clearly made out, and as a result the activity of the Respondent is deemed to fulfil the bad faith use and registration requirements of paragraph 4.a.(iii).

The Panel therefore concludes that the Complainant has satisfied paragraph 4.a.(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <playboy-movies.com> be transferred to the Complainant.

Dan Hunter Presiding Panelist
Timothy D. Casey Panelist	Maninder Singh Panelist

Date: August 2, 2005