The Chinese registrant of the domain Playboy.ai responded to the UDRP filed by Playboy Enterprises International, Inc. in the most creative way.
The Respondent alleged that the term “playboy” dates to 1829 and refers to “the good life of the rich.” He went on to share his plans for the domain:
“I also registered the Domain Name to do something in the field of AI and create a better life for my family and the children around me. I didn’t consider the letters playboy to be proper nouns or trademarks when I registered this domain”.
Naturally, the Forum panelist had none of this nonsense—particularly when the Respondent asked for 10 million yuan, or about $1.365 million dollars in exchange for the domain—and ordered Playboy.ai to be transferred to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.Playboy Enterprises International, Inc. v. Jiang Liangkui
Claim Number: FA2411002127176
PARTIES
Complainant is Playboy Enterprises International, Inc. (“Complainant”), represented by Janet J. Lee of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Jiang Liangkui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name is playboy.ai (“Domain Name”), registered with Beijing Lingsi Technology Co Ltd.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David L. Kreider, Chartered Arbitrator (UK), as Panelist.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to Forum electronically on November 29, 2024; Forum received payment on November 29, 2024.
On December 10, 2024, Beijing Lingsi Technology Co Ltd confirmed by e-mail to Forum that the playboy.ai domain name is registered with Beijing Lingsi Technology Co Ltd and that Respondent is the current registrant of the name. Beijing Lingsi Technology Co Ltd has verified that Respondent is bound by the Beijing Lingsi Technology Co Ltd registration agreement and has thus agreed to resolve domain disputes brought by third parties under ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of January 2, 2025, by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@playboy.ai. Also on December 13, 2024, the Chinese and English Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and found to be complete on January 2, 2025.
On January 3, 2025, under Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David L. Kreider as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to the Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Under UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances, the Panel decides these proceedings should be conducted in English.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Playboy Enterprises International Inc., describes itself as a long-established international entertainment, lifestyle, and multimedia licensing company, best known as the publisher of Playboy Magazine, one of the world’s best-selling lifestyle magazines featuring the iconic Rabbit Head Logo, and its PLAYBOY trademark (the “Mark”) one of the most well-known and recognized trademarks in history. Since at least 1953, the Complainant has invested significant time and money in the advertisement, promotion, and protection of its Mark. The Complainant owns active trademark registrations to the Mark in the U.S. and throughout the world, including trademark no. 600,018 registered with the United States Patent and Trademark Office on December 28, 1954.
The Complaint alleges the Respondent registered the Domain Name, which is nearly identical and confusingly similar to Complainant’s PLAYBOY Mark, no earlier than September 28, 2017; that the Respondent, Jiang Liangkui, is not now and has never been known as “PLAYBOY”, and used no mark similar or related to PLAYBOY until he registered the Domain Name in 2017; that the Complainant has never authorized Respondent to use the Complainant’s PLAYBOY Mark, or to register a domain name incorporating the Complainant’s PLAYBOY Mark.
On October 22, 2024, the Complainant began communication with a broker to potentially acquire the Domain Name as an anonymous buyer. The Respondent refuted the initial offer. After the Complainant filed the Complaint, the Respondent communicated with the Complainant’s broker via telephone on December 10, 2024, making a counteroffer seeking $10 million Chinese Yuan (about USD 1.3 million) for the Domain Name.
The Complainant notes that the Domain Name does not resolve to an active website.
The Complaint alleges there is no good faith reason for the Respondent to use the PLAYBOY Marks in a domain name, which it then tries to sell for well over its out-of-pocket expenses. See Vanguard Trademark Holdings USA LLC v. Lloyd Ecker, FA2106001953317 (Forum July 29, 2021) (finding that “the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant’s mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose (citing Design Ideas, Ltd. v. Chen Jun Cai, FA 1940100 (Forum May 4, 2021) (making such an inference in similar circumstances)).
Moreover, the Complainant avers, the Respondent knew that there was no good faith reason for any other third party, besides the Complainant, to purchase a domain name that wholly incorporates, and is in fact identical to, the PLAYBOY Mark – in effect rendering the Domain Name listing a direct offer to Complainant. See Staples, Inc. v. lin yanxiao, FA1505001617686, (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the airbnbb.com domain name in bad faith by offering it for sale); Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2105001945628 (Forum June 24, 2021) (finding the respondent offering to sell the disputed domain name for $899 to be a sign of bad faith).
The Complaint concludes, because the Respondent had actual knowledge of the Complainant’s rights in the PLAYBOY Mark, is offering the domain name for sale for an excessive amount, is passively holding the domain and prevents Complainant from reflecting its mark in the Infringing Domain, there can be no doubt that Respondent registered and is using the Domain Name in bad faith.
B. Respondent
The Respondent, Jiang Liangkui, claims that he registered the Domain Name with the theme of “Little Boy Playing”, and planned to develop commercial projects in the direction of artificial intelligence and large models in the future to meet the needs of children. In China, the Respondent explains, the literal translation of “playing boy” (玩耍的男孩子) is playboy, so a domain name with an AI suffix was registered to reserve a domain name for children’s future dreams so they could invest and develop the project when the time came.
As for the sale price of 10 million yuan, it is also based on the idea that I want to use the Domain Name personally. I put a high price on the Domain Name, because I had the original intention of the project in mind and felt that by asking a high price, it would be unlikely the other party would want to buy it.
The Respondent alleges, the term “playboy” dates to 1829 and refers to “the good life of the rich.” “I also registered the Domain Name to do something in the field of AI and create a better life for my family and the children around me. I didn’t consider the letters playboy to be proper nouns or trademarks when I registered this domain”.
The Respondent represents, “I didn’t consider the letters playboy to be proper nouns or trademarks when I registered this domain. At the same time, the domain name I registered did not bring any negative impact or harm to the company. If there is no use, there is no malicious use”.
FINDINGS
1) The Panel notes that, although the dictionary word “playboy” is sometimes used to refer to a man who lives a life devoted chiefly to pleasure, to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for use in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
2) In the event, it is common ground between the parties that the Respondent had made no active use of the Domain Name as of the date the Complaint was filed in these UDRP administrative proceedings.
3) A Google search of the term “playboy” by the Panel produced many pages of references to Playboy Magazine, described in the Complaint as “one of the world’s best-selling lifestyle magazines featuring the iconic Rabbit Head Logo”, as well as offerings of goods, services, and media associated the with Complainant’s intellectual property. The Panel considers “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
4) The Respondent has adduced no evidence of any rational connection between the Domain Name purported to have been registered as “a domain for children’s future dreams” and the dictionary meaning of “playboy”, “a man who lives a life devoted chiefly to pleasure”.
5) The Panel finds the Respondent’s suggestion that the Chinese words for ‘playing boy’ (玩耍的男孩子) would be understood in China as meaning ‘playboy’ is utter fiction, unsupported by any evidence. Rather, the Panel accepts that for Chinese in China, the word “playboy” is widely understood as referring only to either “a man who lives a life devoted chiefly to pleasure”, i.e., the dictionary definition of a “playboy”, or as “one of the world’s best-selling lifestyle magazines featuring the iconic Rabbit Head Logo”, i.e., Hugh Heffner’s creation now embodied in the Complainant’s Mark.
6) Even if a connection were imagined, the Respondent has not adduced evidence showing a demonstrative intention to put the Domain Name to its alleged intended use, i.e., to support the allegation that the Domain Name was registered “to reserve a domain for children’s future dreams so that they could invest and develop the [Artificial Intelligence] project when the time came”.
7) The Panel concludes from the text of the Respondent’s Chinese-language response and the surrounding facts and circumstances that the Respondent registered the Domain Name with full knowledge of the Complainant and its long-standing prior rights in the renowned PLAYBOY Mark.
8) The Panel finds that the Complainant has proven beyond any serious doubt circumstances showing that the Respondent registered the Domain Name in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant, the owner of the registered Mark.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of these three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the Domain Name playboy.ai is identical or confusingly similar to the Complainant’s registered PLAYBOY Mark, as it incorporates the Mark in its entirety without change. The Complainant correctly notes that the additional term “.ai” in the Domain Name does not change this conclusion, as this is merely an administrative requirement and signifier of a common generic Top Level Domain (“gTLD”).
The Complainant has satisfied the first element at Policy paragraph 4(a)(i).
Rights or Legitimate Interests
The evidence shows the Complainant has used its PLAYBOY Mark in continuous and open business practices since at least 1953 and has further used the Complainant’s Domain and Complainant’s Website (which include Complainant’s PLAYBOY Mark) to offer Complainant’s goods and services since at least 1994. In December 28, 1954, the Complainant received a registered trademark for PLAYBOY for a monthly magazine, establishing Complainant’s registered rights to its PLAYBOY Mark.
To satisfy the second element at UDRP Policy ¶ 4(a)(ii), the Complainant need only show that Respondent lacks rights to and legitimate interests in the Domain Name. The burden then shifts to the Respondent to prove that the Respondent has such rights or interests.
For a respondent to have rights or legitimate interests in a domain name comprising a dictionary word, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.
Here, the Respondent has submitted no evidence of any rational connection between the Respondent’s purported intended use of the Domain Name as “a domain for children’s future dreams” directed toward AI, and the dictionary definition of “playboy”, referring to “a man who lives a life devoted chiefly to pleasure”.
Even if a connection were imagined, the Respondent has not adduced evidence showing a demonstrative intention to put the Domain Name to its alleged intended use, i.e., evidence supporting the allegation that the Domain Name was registered “to reserve a domain for children’s future dreams so that they could invest and develop the [Artificial Intelligence] project when the time came”. For example, such evidence might comprise business correspondence discussing the intended use; business plans for its implementation; budgeting estimates; proposed website drawings, models or schematics, or similar. The Respondent’s Chinese-language Response comprises only unsworn and unverified allegations.
The Panel finds the Respondent’s allegations incredible and unworthy of belief.
The Complainant has satisfied the second element at Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific; the nature of the domain name (e.g., whether a typo of a famous mark, a domain name wholly incorporating the relevant mark plus a geographic term or one related to the complainant’s area of commercial activity, or a pure dictionary term) and the distinctiveness of trademark at issue, among other factors, are relevant to this inquiry.
The Panel finds the Respondent’s narrative that he demanded the extraordinarily high price of 10 million Chinese Yuan, or about USD 1.3 million, for the sale of the Domain Name because he “wanted to know who the buyer was, but didn’t know”, and “wanted to do for the children”, or “I want to use it personally, and I don’t want to sell it for the original intention of the project in my heart, I think that if I want a high price, the other party will not buy it”, incredible and unworthy of belief.
The Panel prefers the Complainant’s evidence that the Respondent had actual knowledge of the Complainant’s rights in the PLAYBOY Mark when it registered the Domain Name, as shown by at least (1) Respondent’s incorporation of the Complainant’s registered trademark in the Domain Name, (2) the Respondent’s offer to sell the Domain Name for a price substantially higher than any similar domains, and (3) the Respondent’s passive holding of the Domain Name. This, the Complainant asserts, is sufficient to show Respondent’s bad faith registration and use of the Domain Name. See Univision Comm’cns Inc. v. Norte, FA1000079 (Forum Aug. 16, 2007) (rejecting respondent’s claim that respondent could not be determined to have registered the disputed domain name in bad faith, notwithstanding the panel’s finding the respondent knew about the complainant’s rights in the UNIVISION mark when registering the disputed domain name); see also TheHuffingtonPost.com, Inc. v. noman Khatri, FA1907001852214 (Forum Aug. 10, 2019) (“Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[.]”).
The Panel considers the Respondent’s registration of a domain name using Complainant’s protected mark also deprives the Complainant of the ability to obtain domain names corresponding to its Mark and seeks to benefit those who would compete with the Complainant. This also supports a finding of bad faith.
The Complainant has satisfied the third element at Policy ¶ 4(a)(iii).
DECISION
Having shown all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
It is Ordered that the playboy.ai domain name be TRANSFERRED from the Respondent to the Complainant.
David L. Kreider, Panelist
Dated: January 4, 2025
