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Attempt to use ‘Playboy’ domain cut short by IPEC

Written by Ellis Sweetenham on 22 June 2016

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Ross v Playboy Enterprises International Inc [2016] EWHC 1379 (IPEC), [2016] All ER (D) 99 (Jun)

Facts:

In August 2014, the claimant, R, applied to register the domain name “<playboy.london>” (the domain name).

The registration agreement incorporated the Uniform Domain Name Dispute Resolution Policy (the UDRP) approved by the Internet Corporation for Assigned Names and Numbers (ICANN).

R did not intend to trade from the domain itself, nor did he intend to sell the domain name for financial gain.

On 21 October, the defendant company, Playboy Enterprises International plc (PEI) wrote to R, complaining of his registration of the domain name. The letter identified PEI as the publisher of Playboy magazine and owner of the 'Playboy' trade mark, but did not identify any trade mark registrations.

It claimed that the Playboy mark (the mark) had come to be associated with PEI and PEI had acquired considerable goodwill in the mark, but failed to specify any jurisdiction in which it claimed to have such goodwill.

It asked R to transfer the domain name to PEI and to cease all use of the mark.

In November, PEI submitted a complaint under the UDRP, seeking an administrative order that the domain name be transferred to it.

In his response, R stated that the domain name had been intended for use only as a private site for R's friends and family, and that it would not include commercial use.

The UDRP's Administrative Panel upheld PEI's complaint and held that R was using the domain name in bad faith.

R commenced the present proceedings, challenging the order for the transfer of the domain name, and seeking declarations and related relief.

Issues:

The issues the court had to consider were as follows

1. Whether it had the power to overturn the decision.

2. Whether in relation to the letter of 21 October 2014, R was a 'person aggrieved' within the meaning of s 21(1) of the Trade Marks Act 1994.

3. Whether R was entitled to a declaration that the registration, use to date and proposed use of the domain name had not infringed, and would not infringe, any trade mark of PEI.

4. Whether R was entitled to a declaration that the registration, use to date and proposed use of the domain name had not passed off or threatened to pass off any good or services as or for those of PEI.

5.  Whether it would be appropriate in the circumstances to grant a declaration that the registration, use to date and proposed use of the domain name had not passed off or threatened to pass off any good or services as or for those of PEI. Consideration was given to the fact that the decision had not been based solely on the rights of Playboy UK (PEI UK).

Judgment:

The Court could have power to determine the substantive dispute between the parties, but it was a matter for the domain name registrar to decide what (if any) steps should be taken in the light of the decision and the court's judgment.

No separate cause of action has been identified in the present case to justify the grant of such a declaration, which would be tantamount to granting an appeal against the decision therefore the court did not have the power to overturn the decision.

R's pleaded position as to his intended use of the domain name showed an intention to use it for private, rather than commercial, purposes. That, coupled with his pleaded willingness to undertake not to use the domain name in relation to the supply of goods or services, suggested that he had no commercial interests.

Any trade mark infringement proceedings under s 10 of the Act could only have related to use of the domain name in relation to goods or services of some kind. Therefore, R was not a 'person aggrieved' within the meaning of s 21(1) of the Act.

Trade mark infringement under s 10 of the Act arose only where there was use of a sign in the course of trade in relation to some goods or services. PEI had not put forward any explanation of how such use of the domain name would infringe any of its registered UK trade marks. In those circumstances, while the domain name was owned by R and had not been used, or would only be used for the non-commercial purpose that he had disclosed, it would not have infringed PEI's registered UK marks.

Regarding passing off, although 'playboy' was a word that might be found in a dictionary and was not solely a trade or business name, Playboy was a very well-known and long-established mark in the UK, and was highly distinctive to the UK public. There was force in PEI's claim that the public's immediate response to the word 'playboy' was to bring to mind PEI and its business.

There was no reason why R's use of the domain name would be 'ironic' if it was not intended to contrast with the nature of PEI's mark. Such irony relied upon the reputation and goodwill in the Playboy mark.

In the circumstances, the use of the word Playboy as the distinctive part of the domain name would be liable to be seen by members of the public in the UK as indicating some sort of connection to PEI. Therefore, the mere registration of the domain name would lead to passing off.

(4) To grant the declaration sought by R that he had not infringed the PEI UK trade marks would have amounted to an attempt to circumvent the court's lack of jurisdiction to revisit the decision. In addition, in the absence of a matching decision relating to passing off, it was highly doubtful that such a declaration would serve any useful purpose. It would not be appropriate to make the declaration sought.

The claim would be dismissed.

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