'playboyracing.co.uk' transferred to Playboy

A Nominet appeal panel has ordered the transfer of the domain name 'playboyracing.co.uk' to Playboy Enterprises International Inc.

The Playboy brand has been catering to the needs of men all over the world for over 50 years and has branched out of the magazine business into many other areas, including television, DVDs, the Internet and extensive commercial sponsorship and licensing activities.

The respondent in this case, Trevor Hodges (mistakenly referred to as 'Hughes' in the original complaint), was involved in horse racing - more particularly in two partnerships (Playboy Partnership and Playboy Partnership II) that invested in and ran horses with names such as Parisian Playboy, Lowestoft Playboy and Eastern Playboy. However, it was Hodges's registration of the domain 'playboyracing.co.uk' that prompted Playboy to file a complaint with Nominet. While none of Playboy's UK and Community trademark registrations are for PLAYBOY RACING, Playboy has used this term in the United States in relation to a motor racing team, and it had recently licensed its mark to Ladbrokes to provide betting services. However, the Nominet expert at first instance rejected Playboy's complaint.

On appeal, Playboy asserted that as a consequence of its widespread use, the mark PLAYBOY and the composite PLAYBOY RACING have become associated with its goods and services. Thus, anyone trading under the name Playboy Racing would be assumed to have a connection with Playboy - the addition of the descriptive 'racing' element would be understood by most people as indicating that the activity was a Playboy activity, as is already the case with, for example, Playboy TV. Playboy therefore claimed it had rights as defined in Nominet's Dispute Resolution Service (DRS) Policy as:

"[including], but…not limited to, rights enforceable under English law. However, a complainant will be unable to rely on rights in the name or term which is wholly descriptive of the complainant's business."

As a result, Playboy contended that Hodges's registration and use of the domain name took unfair advantage of, and was unfairly detrimental to, the substantial reputation of the PLAYBOY mark and corporate name, and that there was no legitimate reason for making the registration.

Hodges followed the predictable line of argument that the word 'playboy' is an ordinary English word. He suggested that this registration was the continuation of his former ventures and that he had not made use of glamorous girls or bunny logos on his website.

To succeed under the DRS policy, Playboy had to prove on the balance of probabilities that:

• it has rights in respect of a name or mark that is identical or similar to the domain name; and
  
  
• the domain name, in the hands of the respondent, is an abusive registration.
  

An 'abusive registration', for the purposes of the DRS policy, is a domain name that either:

• was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of, or was unfairly detrimental to, the complainant's rights; or
  
  
• has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant's rights.
  

The extent of Playboy's registered marks and activities was undisputed. While the word 'playboy' appears in dictionaries, it is not wholly descriptive of Playboy's business. In fact, thanks to consistent and continuous use, it has acquired distinctiveness so that members of the public would associate it with Playboy's business and activities unless the use was blatantly descriptive of a man devoted to the pursuit of pleasure. There was not enough evidence to establish that Playboy had rights in the term 'playboy racing' as such. However, the panel found that members of the public would be likely to recognize the term as being connected to Playboy. The 'racing' element was purely descriptive of the activity it related to and the 'playboy' element undoubtedly would refer to Playboy. Accordingly, the appeal panel found that the domain name is similar to the name and mark PLAYBOY, and therefore the first limb of the balance of probabilities test was satisfied.

The panel found that it was highly likely that a member of the public coming across the domain would assume that it would lead to a site operated by Playboy. Even if it becomes evident on reaching the site that it is not so associated, this does not detract from the initial confusion. In fact, the use in connection with a business not connected with Playboy is likely to dilute the distinctive character of the Playboy brand, devaluing it and thus being detrimental to Playboy's rights.

The panel also held the use of the domain name to be unfair. It did not buy into Hodges's contention that this was a natural extension of his previous ventures. While his use in horse names of the word 'playboy' may be characterized as descriptive, its leap to the front of a phrase does not maintain this descriptiveness. In fact, the panel suspected that such use, along with the use in a company name also registered to Hodges (Playboy Racing Limited) may well support a claim for trademark infringement and/or passing off by Playboy. The panel accepted that Hodges did not intend to target Playboy or trade on its goodwill in any way. However, it overruled the expert's decision, which had given too much regard to Hodges's lack of intent. Fortunately, the abusive intent was not necessary - the test is more objective. The mere likelihood (as it is a balance of probabilities test) that the domain name takes unfair advantage or causes unfair detriment is enough. The panel was clearly satisfied that this was present. It noted that since the time of the expert decision, Hodges had diversified his business to add links to other betting companies to that licensed by Playboy. This use, the panel held, was in direct competition with Playboys' licensed operator, Ladbrokes, and took further unfair advantage of Playboy's rights, adding to the likelihood of blurring, and diluting the distinctiveness of the mark.

Accordingly, the panel ordered the transfer of the 'playboyracing.co.uk' domain name.

Paul Smith, Hammonds, London