One of the many many Playboy trade marks… (UK00002355569)

THE CLAIMANT in this case, Michael Ross, applied to register the domain name “playboy.london” on 27th August 2014. The Defendant, Playboy Enterprises International, Inc (PEI), wrote to Ross on 21st October 2014 complaining of this registration. In his reply, Ross denied that he had registered the domain name in bad faith and refused to transfer the domain name. As a consequence, PEI submitted a successful complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) seeking that the domain name be transferred.

Ross sought declarations and relief at the Intellectual Property Enterprise Court (IPEC) on the basis that: (a) he had not infringed PEI’s trade marks or passed off any goods or services as those of PEI; (b) he was entitled to keep the domain name; and (c) the threats in the letter of 21st October were unjustifiable.

Deputy Enterprise Judge Amanda Michaels of the IPEC considered several issues, including:
1. whether the Court has jurisdiction to overturn the decision of the UDRP panellist to transfer the domain name;
2. whether PEI’s letter constitutes unjustified threats within the meaning of s21 of the Trade Marks Act 1994 (TMA); and
3. whether Ross was entitled to a declaration that the registration of the domain name (a) does not infringe PEI’s trade marks, and (b) had not passed off any goods or services as those of PEI.

JURISDICTION
Ross was not seeking a declaration directly overturning the decision to transfer the domain name, but instead asked for a declaration that he was entitled to keep the domain name.

Michaels J held that the Court did not have the authority to overturn the decision. However, in case she had erred in her finding, the additional arguments made by Ross were reviewed – in particular, the argument that a UDRP decision is provisional and not final.

The Judge reviewed previous case law that considered the interplay between the decisions of the UDRP and the courts and found that, while “the Court may have the power to determine the substantive dispute between the parties … it is 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”.

Therefore, it was held that the Court does not have the power to overturn the decision to transfer the domain name or issue a declaration stating that Ross was entitled to keep the domain name, as this would be tantamount to granting an appeal against the decision.

THREAT
The Judge first considered whether Ross was a “person aggrieved” within the meaning of s21(1) TMA. Given that Ross claimed that he intended to restrict access to the domain name to close friends and family, the intended use of the domain name was for private matters rather than commercial interests. Further, Ross’s proposition to undertake not to use the domain name in relation to the supply of goods or services suggested that he had no commercial interests. As trade mark infringement proceedings under s10 TMA could only relate to use of a domain name in relation to goods or services, the Judge held that Ross was not a person aggrieved within the meaning of s21(1).

She went on to consider whether the threats of proceedings for trade mark infringement were justified and whether Ross suffered any loss or damage by way of the letter. She eventually held that the onus was on PEI to justify the threats, which it did not appear to have done, given the vagueness of the allegations in its letter. Accordingly, the Judge considered the threats to be unjustified and would have found in Ross’s favour had he been a person aggrieved.

With regard to damages, Ross pleaded that he incurred legal costs as a result of the letter and his plans for the website were on hold. However, the Judge held that she could not see how the delay in setting up the website would have caused any loss, given that Ross’s interests were for private matters and that the legal costs regarding the letter would be recoverable as costs, not as damages.

DECLARATION
The Judge noted that trade mark infringement under s10 arises only where there is use of a mark in the course of trade in relation to some goods or services. As PEI did not submit any explanation of how use of the domain name would infringe its marks, and in view of Ross’s argument that the domain name would not be used or sold for financial gain, use of the domain name would not have infringed PEI’s marks.

The Judge found there was no trade mark infringement in this case, but noted that a future owner may choose to use the domain name for a different (and potentially infringing) purpose at a later date.

In terms of passing off , Ross argued that the use of the word “playboy” was an ironic reference to himself. However, the Judge held that there is no reason why Ross’s use of the domain name would be ironic if it were not intended to contrast with the nature of PEI’s marks. Further, this irony relied on the reputation and goodwill in the PLAYBOY mark, such that the domain name would be liable to be seen by the UK public as having some sort of connection to PEI. As such, Ross’s use of the domain name would lead to passing off .

While a declaration that Ross’s registration of the domain name did not infringe PEI’s trade marks was technically possible, given that the registration was considered to pass off PEI’s rights, the Judge held that such a declaration would be unlikely to serve any useful purpose. Accordingly, it was not appropriate to make the declaration sought.

The IPEC dismissed Ross’s action for groundless threats, declarations of non-infringement, passing off and entitlement to retain a domain name.

KEY POINTS

_ The IPEC refused to revisit the UDRP decision to recover the domain name “playboy.london”

_ There was no reason why Ross’s use of the domain name would be “ironic” if it were not intended to contrast with the nature of PEI’s marks

Amélie Gérard  2 March 2017