Playboy loses race for 'playboyracing.co.uk' domain name

A Nominet panellist has refused to order the transfer of the domain name 'playboyracing.co.uk' to Playboy Enterprises International Inc under Nominet's Dispute Resolution Service Policy.

Playboy is a multi-media entertainment company and owns a number of UK and Community trademark registrations for PLAYBOY. It also operates (in partnership) a motor racing team in the United States under the Playboy Racing brand and licenses the use of the Playboy brand to Ladbrokes in respect of branded online betting services for horse racing.

The respondent, an individual named Trevor Hughes, has used the term 'Playboy' in relation to horse racing activities in the United Kingdom since 2004 and registered the relevant domain name in November 2005, setting up a company by the name of Playboy Racing Limited a few days thereafter. In response to a solicitor's letter on behalf of Playboy, Hughes rejected allegations of trademark infringement stating that he intended to buy horses and name them Playboy, Playgirl and Playmate. Almost a year after registration, the relevant domain name resolved to a website headed Playboy Racing Club.

Playboy asserted that Hughes's use of the offending domain name confused people or businesses into believing that the domain name was registered to, or operated or authorized by, or otherwise connected with, Playboy. Moreover, the issue was exacerbated by:

• the high-profile use of the identical Playboy Racing brand in relation to the Playboy motor racing team;
  
  
• the operation, under licence, by Ladbrokes of an online Playboy branded betting business (including a horse racing element); and
  
  
• the clear intent of Hughes to use various other Playboy brands (including Playmate) to further confuse the public as to the trade origin of his goods and services.
  

To succeed on its claim, Playboy had to establish that, on the balance of probabilities, (i) it had rights in respect of a name or mark identical or similar to the offending domain name, and (ii) the domain name, in the hands of Hughes, was an abusive registration.

Referring to the registered trademarks as well as common law rights deriving from extensive trading activities under the Playboy name, the panellist was satisfied that Playboy had rights in the PLAYBOY mark. However, due to the pre-launch state of the racing team, he was not satisfied that rights in the PLAYBOY RACING mark had been made out. Nevertheless, the dominant term in the offending domain name was considered to be 'Playboy' and the addition of the descriptive word 'Racing' was insufficient to distinguish the domain name from the trademark owned by Playboy.

The key issue in determining whether the domain name was an abusive registration turned on whether Hughes intended to or did target Playboy or its business in such a way as to take unfair advantage of its rights. Playboy had not provided evidence that Hughes had selected the name Playboy for his horse racing business in order to trade on Playboy's goodwill, to create a likelihood of confusion or otherwise target Playboy or its business in some way (notwithstanding that Hughes was aware of Playboy when he began using the name Playboy). In fact, there was no evidence that Hughes used the domain name for any purpose outside his horse racing business or of any misuse of the Playboy logo or other branding.

The panellist did not accept that Hughes had malign intent when he registered the disputed domain name. Hughes operated a business which gave him a legitimate reason to register the domain name and the lack of any licence from Playboy in the mark PLAYBOY was irrelevant. Accordingly, the panellist refused to order the transfer of the domain name.

Elizabeth McEneaney, Hammonds, London