Playboy Enterprises International Inc (“Playboy”) has won its appeal appeal to overturn Nominet’s decision not to transfer the domain name playboyracing.co.uk to it.
Playboy had argued that Trevor Hodges, who registered the domain name and had intended to use it in relation to a horse racing club, was taking unfair advantage of Playboy’s rights to the “Playboy” name and that the registration was unfairly detrimental. Playboy argued that it had a large portfolio of trade mark registrations featuring the name “Playboy” for a wide range of goods and services, including sporting activities, and operated a high profile motor racing team in the US under the brand “Playboy Racing”. However, Nominet’s expert found that the registration was not abusive because, among other things, Playboy was not active in the same field as Mr Hodges and so there was no likelihood that the public would be confused.
Playboy appealed against the decision. The Appeal Panel found that Playboy had strong rights to the “Playboy” name, which was similar to the domain name in question and that registration of playboyracing.co.uk by Mr Hodges was an abusive registration. The Panel felt that the expert at first instance had placed too much emphasis on the registrant's lack of intention to target Playboy. The Panel commented that although intent can be useful in demonstrating an abusive registration, it is not necessary – the test is more objective.
Has Nominet gone too far in its protection against dilution of what is essentially a generic (albeit well-known) name?
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