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Playboy Enterprises International Inc. (“Playboy”) is a pioneer when it comes to developing the law of the Internet. Indeed, from the outset of the commercialization of the Internet, Playboy has been aggressive in protecting trademarks in cyberspace. As part of this campaign, Playboy just scored a major victory in terms of winning the transfer of more than 70 domain names containing the Playboy trademarks from Domain Active Pty Limited in an arbitration proceeding before the WIPO Arbitration and Mediation Center. PLAYBOY Playboy is internationally known. Still, a bit of background is in order. Playboymagazine was first published in 1953. Shortly thereafter, Playboy expanded its operations by engaging in entertainment businesses related to the content and style of Playboymagazine. Along the way, Playboy has licensed its trademarks for use in connection with various consumer products and services. Playboy claims that its trademarks are critical to the success and potential future growth of its businesses. Such trademarks include PLAYBOY, PLAYMATE, RABBIT HEAD DESIGN, and PLAYMATE OF THE YEAR and serve as the basis for numerous domain names related to Playboy’s online ventures. The Playboy Online group operates a network of Playboy-branded Web sites, including playboy.com, playboytv.com, store.playboy.com and Playboy Cyber Club. There is little question that Playboy’s Web sites attract significant Internet traffic. For example, in excess of 9 million visits to the playboy.com Web site were made per month during the period Nov. 1, 2001 to Nov. 1, 2002, and approximately 68 million pages of the playboy.com Web site were viewed by Internet users per month during that same period. Playboy claims that it is one of the best-known and most popular brands in the world. Playboy asserts that this branding has led to the significant Internet traffic to its Web site and the tremendous circulation of the Playboymagazine. THE COMPLAINT There is no real dispute that the Respondent registered 70-plus domain names containing the famous PLAYBOY or PLAYMATE trademarks. Playboy argued that these registrations demonstrate a deliberate and unfair attempt to trade off the Playboy trademarks, in particular, Playboy’s extensive international reputation in those trademarks. Playboy also contended 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 prove bad faith entitling Playboy to the transfer of the domain names to Playboy. Playboy also complained that the domain names improperly directed Internet traffic to the adult entertainment portion of the Roar.com Web site. DOMAIN ACTIVE PTY LIMITED The Respondent, Domain Active Pty (Domain Active) of Brisbane, Queensland, Australia, denied that it lacked a legitimate non-commercial or fair use purpose for the domain names. According to Domain Active, the domain names comprise the word “playboy,” together with various verbs and adjectives, which are also ordinary English words. As well as constituting a trademark of Playboy, the word “playboy” supposedly has a secondary ordinary English meaning. Respondent contended that the word “playboy” is defined in the Merriam-Webster Dictionary as a noun meaning “a man who lives a life devoted chiefly to the pursuit of pleasure.” Domain Active claimed that it registered the domain names for the sole purpose of developing a number of information Web sites containing content devoted to the playboy lifestyle, including tributes to famous playboys such as Donald Trump and Steve Bing. The company also contended that until it actually develops these Web sites, it’s simply parking the domains on the nameservers that host Roar.com. Domain Active cited this as a common and legitimate temporary use of domain names that are inactive or have Web sites under construction. Domain Active denied that the domain names were registered with an intentional attempt to create a likelihood of confusion with Playboy’s trademarks by attracting Internet traffic for commercial gain or directing Internet users to its Web site or other online location. Although Domain Active admitted that the domain names were previously directing Internet traffic to the “adult entertainment” category of the Roar.com Web site, it argued that this was due to an administrative error of Roar.com Pty Ltd in originally categorizing the domain names, and that this error had since been rectified. The Web site to which all of the domain names supposedly now direct Internet traffic is the non-adult advertiser homepage of Roar.com. THE ARBITRATION DECISION The panel of three arbitrators ruled squarely in favor of Playboy. At the outset, the panel stated that it “does not believe that the Respondent was motivated by anything other than a desire to trade on the reputation of the [Playboy's] trademarks.” From there, the panel found that “the Respondent’s websites are clearly intended to attract members of the public who have an interest in what [Playboy] offers under the PLAYBOY and PLAYMATE trademarks and then to offer them other products and services.” (Emphasis in original). Accordingly, the panel “is entitled to conclude on this ground alone that the Respondent registered and has been using the domain names in bad faith.” Furthermore, the panel dismissed Domain Active’s allegation that the domain names directed Internet traffic to an “adult entertainment” category of a Web site due to an “administrative error.” Indeed, “the panel does not believe this was anything other than a deliberate act, and that the Respondent’s activities demonstrate a course of conduct that is redolent of bad faith.” Thus, the panel ruled that all of the 70-plus domain names should be transferred from Domain Active to Playboy. LESSONS LEARNED At least two lessons are learned from this particular case. First, be careful about registering domain names containing the trademarks of others. Second, think twice before creating a formidable Internet legal enemy like Playboy. Eric Sinrod is a partner in the San Francisco office of Duane Morris ( www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. Mr. Sinrod’s Web site is www.sinrodlaw.com, and he can be reached at [email protected].

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