The entertainment company Playboy Enterprises International Inc. (“Playboy”) has suffered defeat in trying to stop someone using the domain name www.playboyracing.co.uk.
The domain name was owned by Trevor Hodges who used the domain name in relation to a horse racing club in the UK called Playboy Racing Ltd. Playboy applied to Nominet (the UK Registry for domain names) for the name to be transferred to it on the basis of its trade mark rights in the word PLAYBOY and on the basis of passing off. Their passing off argument was based on the fact that Playboy uses the “Playboy Racing” get up in relation to its US motor racing team and has licensed the PLAYBOY trade mark to Ladbrokes to use for online betting. Playboy thought that Mr Hodges had registered and used the domain name in a way which was detrimental to their rights and was taking unfair advantage of them.
Nominet will transfer a domain name to a complainant if they find that, on the balance of probabilities, the complainant has rights in respect of a mark or name that is identical or similar to that of the domain name and that the registration or use of that domain name takes unfair advantage or is detrimental to the complainant’s rights.
Nominet refused to transfer the domain name to Playboy since it thought that Playboy did not have passing off rights in the “Playboy Racing” get up. This was due to the fact that the motor racing team was not sufficiently high profile and on that basis use of the domain name by Mr Hodges was not detrimental to Playboy’s rights nor did it take unfair advantage of them.
This decision is slightly surprising because is shows that the very narrow approach Nominet took in deciding what was detrimental to and what took unfair advantage of Playboy’s intellectual property rights.