DECISION
Playboy Enterprises International, Inc. v. Sam Vayner / Design Drive Inc.
Claim Number: FA2502002140998
PARTIES
Complainant is Playboy Enterprises International, Inc. ("Complainant"), represented by Janet J. Lee of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Sam Vayner / Design Drive Inc. ("Respondent"), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <playboycams.com>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Adam Taylor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 19, 2025; Forum received payment on February 19, 2025.
On February 20, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <playboycams.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@playboycams.com. Also on February 25, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 17, 2025.
On March 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Adam Taylor as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant contends that it has rights in the PLAYBOY mark based upon registration of its mark with the United States Patent and Trademark Office ("USPTO") and upon common law rights arising from long-standing continuous business use. The disputed domain name is confusingly similar to Complainant's mark, which is one of the most well-known and recognized trademarks in history.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name. Respondent knew or should have known of Complainant's rights when Respondent registered the disputed domain name, which long post-dates Complainant's mark. Complainant has never authorized Respondent to use, or to register a domain name incorporating, Complainant's mark.
Respondent registered and used the disputed domain name in bad faith. Respondent's actual knowledge of Complainant's rights is evidenced by incorporation of Complainant's mark in the disputed domain name, and by Respondent's offer to sell the disputed domain name for a substantial price. Respondent is passively holding the disputed domain name in bad faith. Respondent's offering of the disputed domain name for sale creates a likelihood of confusion with Complainant's mark. Respondent registered the disputed domain name for sale to Complainant at a price in excess of Respondent's out-of-pocket expenses. Respondent's registration of the disputed domain name blocks Complainant from reflecting its PLAYBOY mark in that domain name.
B. Respondent
Respondent asserts that Respondent's registration of the disputed domain name was not in bad faith as this occurred almost a year before Complainant announced that it was entering the webcam business, on October 31, 2024. None of Complainant's some 184 live trademarks registered at the USPTO that predate the disputed domain name cover webcam services, indicating that Complainant had not generated any revenue in that business. Complainant cannot rely on retroactive rights when seeking to establish that Respondent registered the disputed domain name in bad faith. Nor can Complainant claim ownership of generic terms such as "playboy"/"play"/"boy" in every industry. Since Complainant was not operating in the webcam industry when Respondent registered the disputed domain name, Respondent could not have intended to infringe on Complainant's non-existent webcam business, nor knowingly have targeted Complainant's existing business or trademarks, which is a requisite element of bad faith.
Respondent registered the disputed domain name for a pitch involving "[a] webcam site specializing in hyper-realistic 'tradable skins' for webcam models…", but the key developer backed out and the pitch project stalled due to the time taken to search for an alternative developer with the requisite skills/specialized technologies.
Respondent is not opposed to transfer of the disputed domain name to Complainant subject to "amicable, non-hostile terms of turnover as well as basic credits/compensation for my expenses".
FINDINGS
Founded in 1953, Complainant is an international entertainment, lifestyle, and multimedia licensing company that is best known as the publisher of Playboy Magazine.
Complainant operates a website at www.playboy.com.
Complainant owns various registered trademarks for the word PLAYBOY, including Reg. No. 600,018 for the mark PLAYBOY, registered with the USPTO on December 28, 1954.
The disputed domain name was registered on December 4, 2023.
The disputed domain name has not been used for an active website.
As of February 14, 2025, the Whois Record for the disputed domain name at www.domaintools.com included a banner stating: "playboycams.com is for sale! This domain is listed for sale at one of our partner sites for $100,000."
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Since Complainant has provided evidence of registration of the PLAYBOY mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The first element functions primarily as a standing/threshold requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. Where a domain name incorporates the entirety of a trademark it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Issues such as the strength of the complainant's mark or the respondent's intent to provide its own legitimate offering of goods or services without trading off the complainant's reputation, are decided under the second and third elements. See WIPO Jurisprudential Overview 3.0 at ¶ 1.7.
Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or otherwise (here, "cams"), would not prevent a finding of confusing similarity under the first element. See WIPO Jurisprudential Overview 3.0 at ¶ 1.8.
Accordingly, Respondent's assertions regarding its alleged legitimate purpose for the disputed domain name is a matter for consideration under the second and third elements, not this first element.
Respondent further asserts that Complainant's registered trademarks predating the disputed domain name do not apply to webcam services and also that Complainant did not supply any webcam services prior to the date of registration of the disputed domain name. However, neither the goods and/or services for which the mark is registered or used, nor the date of registration or claimed first use, are considered relevant to the first element test, although these factors may be relevant under the second and third elements. See WIPO Jurisprudential Overview 3.0 at ¶1.1.2.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's PLAYBOY mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); then the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name lists the registrant as "Sam Vayner / Design Drive Inc." Furthermore, Respondent has not supplied any evidence that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent claims to have registered the disputed domain name legitimately for an alleged intended pitch in connection with the a future project.
Where a respondent has made demonstrable preparations to use the disputed domain name, the Panel may find respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Sony Pictures Television Inc. v Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (holding that "Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant's arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith."). However, where a respondent relies on future plans, clear contemporaneous evidence of bona fide pre-complaint preparations predating the respondent's notice of the dispute is required. While, depending on the circumstances, such evidence may not need to be particularly extensive, it must go beyond a mere statement of a claimed intention. See WIPO Jurisprudential Overview 3.0 at ¶ 2.2.
Here, Respondent has provided no evidence at all in support of its alleged intended use of the disputed domain name, despite having allegedly engaged with an initial developer, and thereafter having allegedly sought an alternative developer, in connection with the alleged project. The Panel considers it likely that such endeavours by Respondent would have resulted in written communications that Respondent could have produced.
Accordingly, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered the disputed domain name for sale to Complainant for a price well in excess of Respondent's out-of-pocket expenses. Respondent denies that it intended to sell the disputed domain name, asserting that it registered the disputed domain name for a pitch in connection with a proposed webcam-related website, and that it set the price of USD 100,000.00 shown in the sale banner mentioned above (see "FINDINGS") merely as a "suggested 'contribution' to [Respondent's] idea/pitch".
The Panel finds Respondent's contentions implausible.
First, as mentioned above under the second element, Respondent has provided no evidence verifying the existence of the alleged underlying project. Nor has Respondent explained exactly why it allegedly selected the disputed domain name for this purpose.
Second, Respondent has not produced any evidence confirming that it was in fact seeking a contribution relating to Respondent's alleged "idea/pitch", let alone explained how an alleged price for such a contribution might have found its way into an advertisement offering the disputed domain name for sale.
Third, Respondent has not denied its awareness, or the fame, of Complainant's mark at the time of registration of the disputed domain name. Nor indeed could Respondent credibly have done so.
In the Panel's view, nothing turns on the fact, if true, that Complainant did not provide any goods or services relating to webcams until after Respondent registered the disputed domain name. Nevertheless, the Panel considers that, in the circumstances discussed above, on the balance of probabilities Respondent registered the disputed domain name for sale to Complainant. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <playboycams.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Adam Taylor, Panelist
Dated: March 28, 2025
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