MICHAEL ROSS V PLAYBOY ENTERPRISES INTERNATIONAL, INC. [2016] EWHC 1379 (IPEC)


In August 2014 Mr Ross registered the domain name playboy.london (“Domain Name”). Playboy Enterprises International, Inc. (PEI), the internationally renowned publisher of the Playboy magazine and owner of the word mark “Playboy” in multiple countries wrote to Mr Ross in October 2014 complaining about his registration and requesting that Mr Ross transfer the domain name immediately. Mr Ross declined and subsequently PEI filed a complaint under the Uniform Domain Name Dispute Resolution Policy ("the UDRP"), seeking an administrative order requiring the Domain Name be transferred to PEI.


In PEI’s complaint they stated that PEI owns over 2000 Playboy trade mark registrations including a US registration for PLAYBOY in Class 16 dating from December 1954 and a PLAYBOY LONDON mark in Class 25 registered in Hong Kong in 2012. PEI argued that the Domain Name incorporated PEI’s trade marks, Mr Ross had no right or legitimate interest in the Domain Name and the Domain Name was registered in full knowledge of PEI’s rights and accordingly the registration was made in bad faith. Mr Ross’ response stated PEI had failed to properly identify its rights and were seeking a monopoly on the word ‘Playboy’ and that the Domain Name had not and would not be used commercially. Accordingly, Mr Ross stated that there has not and will not be any opportunity for confusion and denied that the Domain Name had been registered in bad faith. The UDRP panellist upheld the complaint stating that Mr Ross was aware of ‘Playboy’ word mark when registering the Domain Name. The panellist went on to say that he did not accept that Mr Ross was known by the name ‘Playboy’ or that he had any reason to register it and accordingly, stating that use of the Domain Name was in bad faith, noting under UDRP rules even passive holding can be in bad faith.


Under UDRP rule 4(k), titled Availability of Court Proceedings, it states that paragraph 4 shall not prevent parties from submitting the dispute to a court of competent jurisdiction and that if within 10 days of a decision court papers are received by WIPO then the decision will not be implemented pending the conclusion of the court proceedings. Mr Ross issued proceeding in IPEC requesting a declaration that he had not infringed PEI’s trade marks, he was entitled to keep the Domain Name and that PEI’s letter amounted to an unjustified threat. In defence PEI submitted that they had long established rights in the Playboy word mark and brand, that Mr Ross’s proposed use of the Domain Name would not change the public’s association with PEI, that the court had no jurisdiction to overturn the UDRP decision and the there was no unjustified threats.


Miss Amanda Michaels sitting as a Deputy Enterprise Judge considered that there were 5 issues to be determined.


• Jurisdiction – in Mr Ross’s submission it was admitted that the court had no jurisdiction to overturn the UDRP decision. Accordingly, the judge found that the issue had been dealt with by consent. However, the judge went on to consider the issue of jurisdiction anyway, finding that the court did not have power to make an entitlement declaration (a declaration that Mr Ross was entitled to keep the domain name) as requested by Mr Ross. The court found that Prince Plc v Prince Sports Group Inc [1998] F.S.R. 21 and paragraph 4(k) do no support Mr Ross’s argument about the entitlement declaration. The court stated that granting such a declaration would be tantamount to granting an appeal.


• UDRP panellist error - The claimant admitted the panellist was entitled to make his decision. Accordingly, the panellist made no error and was entitled to make the decisions which was made.


• Unjustified threats – first the court had to determine whether Mr Ross was a person aggrieved under s21(1) of the Trade Mark Act 1994. The judge found that there was no commercial interest in Mr Ross’s proposed use of the Domain Name so he was not a person aggrieved. The court considered that had Mr Ross been a person aggrieved the vague threat of proceeding for trade mark infringement made in PEI’s initial would have been unjustified. However, loss and damage were also considered and the judge ruled that legal costs and the delay setting up a website did not amount to actionable loss or damage.


• Declaration of non-infringement for trade mark infringement and passing off – these two issues were dealt with together by the judge who considered the power granted under CPR 40.20 and whether it was appropriate to make such a declaration. First the court considered whether PEI’s trade marks had been infringed. Given Mr Ross’s proposed non-commercial use of the trade mark the court considered that trade mark infringement may not have occurred. The court then considered passing off and followed the BT v One in a Million principle that mere registration of a domain name incorporating a famous brand would amount to passing off. Accordingly, the court could not grant a declaration of non-infringement for passing off but considered whether it would be appropriate to do so for trade mark infringement. Toth v Emirates [2012] EWHC 517 was considered which had similar facts to this case. In Toth it was stated that granting the declaration requested would amount to a circumvention of the court’s lack of jurisdiction to reverse a domain DRS decision. The judge considered that the declaration requested by Mr Ross would have perpetually stayed the Domain Name transfer as deprecated and avoided in the Toth case. As such the declaration was rejected.

Link to Judgment

Judgment Date: 13 JUNE 2016

 

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