GENEVA — The operator of several Calgary escort service websites, CallPlaymates.com and HushPlaymates.com, recently was ordered by a WIPO arbitrator to hand over the domain names to Playboy Enterprises International Inc.
The arbitrator, however, disallowed Playboy's contention that it also be awarded PleasurePlaymates.com from the same escort service operator, which uses that name also as its corporate name.
PleasurePlaymates.com, CallPlaymates.com and HushPlaymates.com are all operated by Calgary-based Pleasure Playmates Inc., an agency that uses the mirrored sites to lure customers to its stable of local escorts.
In the disputed-domain name case, Playboy contended that the adult entertainment brand licensor and magazine publisher has U.S. and Canadian trademarks for "Playboy" and "Playmate" and that it has a U.S. appellate case to stand behind the case over domains that are likely to confuse (Playboy Enterprises Inc. vs. Netscape Communications Corp.).
In that case argued at the 9th U.S. Circuit Court of Appeals, Playboy relied upon an expert study showing that a statistically significant number of Internet users searching for terms "playboy" and "playmate" (51 percent and 31 percent, respectively) would think that Playboy itself sponsored banner advertisements.
Playboy also said it relied upon another previous decision: A UDRP case that involved the registration of more than 70 domain names that incorporated the term “Playboy” and one domain name that incorporated the term “Playmate.”
But the arbitrator weighing the current case in hand said that Playboy failed to make out its case over one of the three sites in the complaint, PleasurePlaymates.com, given that the company has rights and legitimate interests in it.
"So far as the term 'Playmate' is concerned, [Pleasure Playmates] points out that there are other companies that have Canadian trademarks for that term in relation to portable containers for ice, food and beverages and toys, and asserts that the complainant’s 'Playmate' mark does not extend to companionship services,” the arbitrator said.
"Further, the [Pleasure Playmates] maintains that the terms 'play,' 'mate,' 'playmates' and 'playmates' are all ordinary English words and provides Internet dictionary definitions of these terms. One of the definitions of playmate is 'a social companion or lover, girlfriend or boyfriend.' and it is in this sense that the [Pleasure Playmates] claims it is using this term. It claims that it has being making legitimate fair use of that term since 2009.”
The arbitrator, however, said that Playboy could succeed on its arguments over CallPlaymates.com and HushPlaymates.com because neither of the terms — "call" or "hush" — have been used as a name for the business and that Pleasure Playmates never addressed the question of its motivations for registering and using the two domain names.
"It might be said that these two domain names use the term 'Playmates' in a descriptive sense in the same way as it is used in PleasurePlaymates.com," the arbitrator wrote. "Nevertheless and crucially, [Pleasure Playmates] does not claim that this is why it chose those terms. It simply ignores the question of why it has registered and used those two domain names.
"Ultimately in a case such as this, where a claim of bad faith registration and use has clearly been made in relation to a number of domain names and a respondent chooses to answer that claim in relation to some of those domain names but not others, a respondent should not be surprised if a panel takes this into account in its bad faith assessment."
