Michael Ross v Playboy Enterprises International, Inc.
| Jurisdiction | England & Wales |
| Judge | Michaels,Deputy Enterprise Judge,And |
| Judgment Date | 13 June 2016 |
| Neutral Citation | [2016] EWHC 1379 (IPEC) |
| Docket Number | Case No: IP-2015-000028 |
| Court | Intellectual Property Enterprise Court |
| Date | 13 June 2016 |
Neutral Citation Number: [2016] EWHC 1379 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Miss Amanda Michaels
sitting as a Deputy Enterprise Judge
Case No: IP-2015-000028
Jane Lambert (instructed by JWK Solicitors) for the Claimant
Henry Ward (instructed by Berwin Leighton Paisner LLP) for the Defendant
Introduction
This is a claim by Mr Michael Ross for declarations and related relief arising out of a dispute between the parties over the registration of the domain name < playboy.london> (“the Domain Name”).
Directions were given by HHJ Hacon on 11 March 2016 for the statements of case to stand as the evidence in chief in the case, and for the issues identified by HHJ Hacon to be determined on paper. As a result, whilst I have had the benefit of written submissions from counsel for both parties, there was no oral hearing of the claim.
For the reasons set out below, I dismiss the claim and refuse the declarations and further relief sought.
Background
On 27 August 2014, the Claimant, Mr Ross, applied to Webfusion Ltd to register the Domain Name. The registration agreement incorporated the Uniform Domain Name Dispute Resolution Policy (“the UDRP”) approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”).
The UDRP provides an administrative procedure for resolving complaints about domain name registrations. Rules, approved by ICANN, govern that procedure.
On 21 October 2014, the Defendant (“PEI”) wrote to Mr Ross complaining of his registration of the Domain Name. The letter, sent by PEI's in-house IP Manager, Mr Hobson, seemingly from the USA, described PEI as “the publisher of Playboy magazine and the owner of the world-famous PLAYBOY trademark.” No trade mark registrations, whether in the UK or elsewhere, were identified in the letter. PEI claimed that the Playboy mark (“the Mark”) had “come to be associated by the general public with our company and we have acquired considerable and valuable goodwill in the Mark” but failed to specify any jurisdiction in which PEI claimed to have such goodwill. PEI asserted that the registration and use of the Domain Name was made in bad faith, was likely to cause confusion or deception and diluted the distinctive quality of the Mark. Mr Ross was asked to transfer the Domain Name immediately to PEI and cease all use of the Playboy trade mark.
Mr Ross replied on 31 October 2014. He said that the definition of a playboy is “a man who pursues a life of pleasure without responsibility or attachments, especially one who is of comfortable means” and claimed that he had previously been described as a playboy. He denied having registered the Domain Name in bad faith or that there was any likelihood of confusion or deception. He stated that he did not use the trade mark Playboy in connection with any goods or services. Hence, he refused to give PEI the relief requested.
In the light of Mr Ross's letter of 31 October, on 25 November 2014 PEI submitted a complaint under the UDRP, seeking an administrative order that the Domain Name be transferred to it.
The Uniform Domain Name Dispute Resolution Policy is followed by all domain name registrars and references in it to ‘we’ and ‘us’ are to the relevant registrar. It provides in particular
“3. Cancellations, Transfers, and Changes.
We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:
…
c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.)
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/en/dndr/udrp/approved-providers.htm (each, a “Provider”).
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
…
i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.
j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.
k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days … before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation … that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. … If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.
5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.”
In the UDRP complaint, PEI stated that it owned over 2,000 trade mark registrations worldwide, 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 annexed documents to the complaint showing the registration details of some of its US and UK Playboy marks, however these were not included in the trial bundle provided to me. I have not, therefore, seen further details of any of the registered marks upon which PEI relied before the UDRP. However, PEI also relied upon its own Playboy domain names, including
The thrust of the complaint was that PEI owned numerous registered trade marks and unregistered rights in the word Playboy, the Domain Name incorporated that word and Mr Ross had no rights or legitimate interests in the Domain Name. PEI referred to an article which had appeared in the London Evening Standard which reported that Mr Ross had stated his intention to keep the Domain Name for his then unborn child to use when he came of age. PEI alleged that the Domain Name had been registered in full knowledge of its rights and in bad faith.
Mr Ross filed a Response drafted by his counsel, Ms Lambert. This complained that PEI had failed properly to identify the earlier rights relied upon and was seeking an unwarranted monopoly in the common noun “playboy.” It stated that “as the disputed domain name has not yet been used (and will only be used as a private site for [Mr Ross's] friends and family for at least the next 18 years) there has been (and will be) no opportunity for confusion,” explaining further “Until his son comes of age, the Respondent plans to use the disputed domain name for a website that traces the boy's childhood and adolescence. Access to the site will be limited to family and friends. Such use … will be non-commercial. …” Bad faith was, accordingly, denied.
The Administrative Panel's Decision (“the Decision”) was delivered on 21 January 2015, by Mr Nicholas Smith (a member of the Australian Bar based in Sydney) sitting as a sole panellist. He upheld the complaint. He found that Mr Ross had been aware of the Playboy Mark at the time he registered the Domain Name and knew that it reproduced it in its entirety. He did not accept that Mr Ross had proved that he was known by the name ‘Playboy’ nor that he had provided any bona fide reason for registering the Domain Name. Mr Smith concluded that he was...
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Tucows.com Co. v. Marker Volkl (International) GmbH, 2017 ONSC 3489
...Ltd. v. Royal Bank of Scotland Group Plc & Ors, [2015] EWHC 3509 (Ch); Ross v. Playboy Enterprises International, Inc., [2016] EWHC 1379 (IPEC). Against this, Tucows points to two contrary decisions from Ontario. In Tucows.com Co. v. Lojas Renner S.A., 106 O.R. (3d) 561 ref’d 201......