Thu 16. Jan 2025, 13:14
Playboy pursued the domain playboy.ai and was successful. The domain was only registered in November 2017. Playboy could have been the owner of the domain back then if a proper domain strategy had been pursued. The know-how is available at the company, which has been present on the internet since 1994, but those responsible at Playboy do not seem to have had the up-and-coming country extension of Anguilla on their radar.
Playboy Enterprises International Inc. believes its trademark rights have been infringed by the domain playboy.ai. In October 2024, it asked the Chinese domain holder via a broker whether the domain was for sale. The broker did not respond to this request. Playboy therefore initiated UDRP proceedings with The Forum at the end of November 2024. Shortly afterwards, the domain holder contacted us and informed us that the domain could be purchased for ten million Chinese yuan (around EUR 1,334,000). As the complainant, Playboy claims to have been the owner of a registered trademark “Playboy” since 1954. The opponent registered the domain playboy.ai in September 2017 and is not known by the name, has no corresponding trademark nor is he entitled to use the complainant's trademark. The opponent must have been aware that the domain could not reasonably be sold to anyone other than the complainant. She requested the transfer of the domain. The opponent argued, among other things, that he was using the domain to pursue a commercial project on the topic of “Little Boy Playing”, in which the needs of children are met with the support of artificial intelligence and LLMs. “Playboy” is also the literal translation of the Chinese term for ‘playing boy’. He stated the high price for the domain so that a potential buyer would refrain from purchasing it. Finally, “playboy” is a term that goes back to the term “the good life of the rich”, which originated in 1829.
New Zealand lawyer David L. Kreider, who was appointed as the decision-maker, upheld Playboy's complaint (The Forum Claim Number: FA2411002127176). After establishing English as the language of the proceedings, Kreider found that the domain and trademark were confusingly similar and that the complainant had therefore fulfilled the first element of the UDRP. He found prima facie evidence in favor of the complainant on the question of the opponent's right or legitimate interest in the domain playboy.ai. The opponent, on the other hand, had not provided any reasonable explanation or evidence for his claim that he wanted to use the domain as a “domain for children's future dreams” in connection with AI and how this related to the dictionary definition of “playboy”. Furthermore, he did not provide any documentation such as correspondence, business plans, website sketches, financial statements, etc. to support his claimed intentions. Kreider considered the opponent's allegations to be not credible and the opponent himself to be not credible. The issue of bad faith was also clear for Kreider: the circumstances indicated that the domain was registered in bad faith with the sole intention of selling it to the trademark owner. This would be clear from the domain name itself, which is identical to the complainant's trademark, and the distinctive character of the trademark. Kreider considered the opponent's statements that he had quoted an extraordinarily high price for the domain in order to deter buyers to be unbelievable and not to be taken seriously. The opponent justified the price not only to dissuade buyers because of the price, but also to find out who was behind the purchase request, to “want to do it for the children”, to want to use the domain personally and not to betray the original project that had grown close to his heart. For Kreider, the bad faith of the opponent was also demonstrated by the fact that, by registering the domain, he deprived the complainant of the opportunity to register the domain corresponding to her trademark and at the same time aimed to benefit those who were in competition with the complainant. Thus, all elements of the UDRP were present. Kreider upheld the complaint and confirmed the transfer of playboy.ai to the complainant.
The case once again reminds trademark owners to keep their eyes open as part of their domain strategy. The domain playboy.ai was registered in November 2017. At that time, the ending of Anguilla did not yet have such a high significance. However, the abbreviation “AI” has been common and well-known for decades. The marketing of the .ai domain extension began several years before 2017. We first noted the sale of an .ai domain (x.ai for US$ 3,000, approx. EUR 2,174) in October 2013 and reported in detail on the .ai extension and its marketing as an extension for “artificial intelligence” in February 2017. At the latest when the internet starts to murmur about certain domain endings, the responsible authorities in companies must take up the matter in order to avoid lengthy disputes afterwards.
The UDRP decision on the domain playboy.ai can be found at:
https://www.adrforum.com/DomainDecisions/2127176.htm