Playboy wins 70 domain names in single proceeding

International

In a single decision, a three-member World Intellectual Property Organization panel has awarded Playboy Enterprises International Inc ownership of 70 domain names that play off the PLAYBOY or PLAYMATE trademarks and span the globe from 'african-playboy.com' and 'australian-playboy.com' to 'usa-playboy.com' and 'welshplayboy.com'.

The 70 domain names had been registered by Domain Active Pty of Brisbane, Australia. Playboy argued that these registrations were a deliberate and unfair attempt to trade off its trademarks, in particular, Playboy's extensive international reputation in those marks. Playboy also asserted that the sheer number of domain name registrations with its trademarks and the lack of a legitimate non-commercial or fair-use purpose for the registrations proved bad faith under Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy, entitling Playboy to the transfer of the domain names.

Domain Active denied the allegation that it had no legitimate non-commercial or fair-use purpose for the domain names. It argued that the word 'playboy' has a secondary meaning in English, quoting the Merriam-Webster Dictionary definition as "a man who lives a life devoted chiefly to the pursuit of pleasure". Domain Active said it purchased the domain names to publish content devoted to the playboy lifestyle and to famous playboys, although it admitted that for a time the domain names directed visitors to a pornography site as the result of a mistake.

The panel stated that it "does not believe that [Domain Active] was motivated by anything other than a desire to trade on the reputation of [Playboy's] trademarks". Thus, the panel ruled in favour of Playboy, ordering that all 70 domain names be transferred.

Douglas J Wood and Linda Goldstein, Hall Dickler Kent Goldstein & Wood LLP, New York

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