June 27, 2016
Playboy victorious in domain name dispute with a London playboy
Playboy victorious in domain name dispute with a London playboy

Last year saw a domain name conflict arise between Playboy Enterprises International (PEI) and Mr Michael Ross as a result of his registration in 2014 of the domain name <playboy.london>, as reported by a number of media sources last year [for example here].

PEI issued a complaint under the UDRP claiming that the domain name was registered in bad faith in view of their trade mark rights in the word PLAYBOY, and they requested that the domain name be transferred to them. In January 2015, WIPO upheld PEI’s complaint and ordered the transfer of the domain.  But Mr Ross was not prepared to accept this ruling, and in February 2015, he issued a claim in the IPEC (Intellectual Property Enterprise Court) challenging this order to transfer the domain.  He also sought various forms of relief, including a declaration that he did not infringe any trade marks of PEI (and nor was he passing off), and that PEI had made unjustified threats of infringement to him as a result of their actions. Key to his position was his claim that the domain name was selected as he had in the past been nicknamed ‘a playboy’ and moreover, it was merely intended to be used for a website about/for his children, which had nothing to do with PEI or PEI’s commercial activities.  Earlier this month, the Court issued a decision in which the relief and remedies sought by Mr Ross were all refused.

This case raises a number of interesting issues, three of which are reasonably hot UK trade mark topics at the moment:

(1) Does the High Court/IPEC have jurisdiction to overturn a decision of a UDRP panellist? (See recent case of Yoyo.email v RBS and our comment to follow).

(2) The rise in requests for a declaration of non-infringement or of passing off to be granted by a Court (see the case of Skyscape v Sky and our comment to come); and

(3) What actions constitute unjustified threats of trade mark infringement? (See our recent post on the new UK unjustified threats bill here).

Ultimately the judge held that the claim failed on all grounds, and in particular, that the Court could not overturn the UDRP decision. The Court held that Mr Ross did not qualify as a “person aggrieved” in order to have a remedy under the unjustified threats provisions and that the mere ownership of this domain was an act of passing off.  As such, (even if there were no trade mark infringement), there would be no useful purpose in issuing such a declaration of non-infringement.

If any of these issues are of interest, do drop us a line.

Tags
Online Brand Enforcement /  Trademarks /  Domains

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