• DOMAIN NAME WATCH

    PLAYBOY RACING Reversed on Appeal

    A Nominet appeal panel has ruled that playboyracing.co.uk is an abusive domain name, reversing an earlier expert’s finding.

     

    PLAYBOY’S COMPLAINT

    Playboy Enterprises International Inc. brought the original complaint in October 2006. The respondent, Trevor Hodges, had registered playboyracing.co.uk in November 2005 and used it in respect of a website selling shares in race horses. Playboy International owned registered trade mark rights in PLAYBOY but not PLAYBOY RACING, although it showed in evidence that it had licensed the PLAYBOY mark to bookmaker Ladbrokes for use in respect of racing-related activities.

    In reply, the respondent pointed to its ownership of racehorses with names such as Parisian Playboy and claimed that it had no intention of trading on the complainant’s reputation when it registered the domain name.

    The case made headlines early this year when a Nominet expert held that the respondent’s lack of intention to trade on the famous PLAYBOY mark supported a finding that the domain name was not an abusive registration. Playboy International appealed.

     

    APPEAL SUCCEEDS

    In the recent appeal ruling, the panel reversed the expert’s decision. The appeal panel found that although the complainant had no registered trade mark rights in PLAYBOY RACING, the fact that the mark had been licensed and used in connection with racing-related activities had created a situation in which the public would expect a term such as PLAYBOY RACING, and a domain name consisting of it, to be related in some way to the complainant.

    As a result, the respondent’s use of playboyracing.co.uk was likely unfairly to blur or dilute the distinctiveness of the PLAYBOY mark, which was likely to attract more Internet users to the respondent’s site than would have been the case if another domain name had been chosen.

    The Panel noted the respondent’s explanation for the registration, but regarded the registration of a domain name for use in respect of a racing-related business to be on a different level to the mere descriptive use of PLAYBOY in relation to a racehorse’s name. The mere fact that the respondent may have had no subjective intention to trade on the complainant’s reputation was irrelevant; it was sufficient that the registration and/or use of the domain name had taken, or was likely to take, unfair advantage of or be unfairly detrimental to the complainant’s rights.

     

    COMMENT

    This case is mainly of interest because of the fame of Playboy, but it does make an important point for those involved in .co.uk domain name disputes.

    The original decision had suggested that a registrant’s subjective intent might avoid a finding of abusive registration. The ruling on appeal makes it clear that this is not the case. Even if a panel accepts a registrant’s good faith, it may still find abusive registration where the use of the domain name is likely to take unfair advantage of, or be unfairly detrimental to, the complainant’s rights.

    The test is therefore an objective one, in contrast to that under the Uniform Dispute Resolution Policy, which requires a complainant to show that a domain name was registered and has been used in bad faith.

    This is an important distinction, and one that underlines the need to approach Nominet and UDRP complaints differently. In stepping away from more subjective criteria and toward greater legal certainty, the principles the appeal panel outlined should help improve predictability in Nominet decisions, for the benefit of all.