Playboy Enterprises International, Inc. v. Payton Kane

Claim Number: FA2606002229868

PARTIES

Complainant is Playboy Enterprises International, Inc. (“Complainant”), represented by Janet J. Lee of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Payton Kane (“Respondent”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is playboyvacation.com, registered with Network Solutions, LLC.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Dawn Osborne and Alan L. Limbury as Panelists and Flip Jan Claude Petillion as Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 29, 2026; Forum received payment on June 29, 2026.

On June 29, 2026, Network Solutions, LLC confirmed by e-mail to Forum that the playboyvacation.com domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 1, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2026 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected]. Also on July 1, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on July 27, 2026.

On August 4, 2026, pursuant to the Parties’ requests to have the dispute decided by a three-member Panel, Forum appointed Dawn Osborne and Alan L. Limbury as Panelists and Flip Jan Claude Petillion as Chair.

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 Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: DISPUTE EXCEEDS THE SCOPE OF THE UDRP

Respondent contends that this dispute is, at its core, a trademark infringement dispute between an established trademark owner and an operating business, and that such a dispute exceeds the proper scope of the Policy and belongs before a court of competent jurisdiction. The Panel addresses this contention in the Discussion section below, together with its analysis of the elements of the Policy, rather than as a threshold bar to consideration of the Complaint. Even if a dispute between the parties may raise issues that could go beyond the scope of the UDRP, including questions more properly suited to national trademark law or to a court of competent jurisdiction, the Panel elects to examine and decide the Complaint that has been filed on the basis of the Policy, the Rules, and any rules and principles of law that it deems applicable.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends, in summary, that it owns registered and common law rights in the PLAYBOY Mark arising from its continuous use of the mark since at least 1953, and that the disputed domain name fully incorporates that mark together with the generic term “vacation” and the “.com” gTLD, such that it is identical or confusingly similar to Complainant’s PLAYBOY Mark for the purposes of Policy paragraph 4(a)(i). Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the PLAYBOY name, has never been authorized to use Complainant’s PLAYBOY Mark, and used the disputed domain name to resolve to a website offering “sex vacations” bearing the word “PLAYBOY,” which Complainant contends is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, and that the disputed domain name currently resolves to an inactive page, which Complainant contends is passive holding that likewise does not establish rights or legitimate interests. Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith under Policy paragraph 4(a)(iii), on the basis that Respondent had actual knowledge of Complainant’s rights in the PLAYBOY Mark when registering the disputed domain name, used the disputed domain name to trade off Complainant’s reputation and to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s PLAYBOY Mark, that Respondent’s disclaimer is insufficient to dispel such confusion, that Respondent’s current passive holding of the disputed domain name is further evidence of bad faith, and that Respondent’s registration prevents Complainant from reflecting its mark in the corresponding domain name. The Complainant also maintains that the Respondent’s activity is illegal which further demonstrates bad faith.

B. Respondent

Respondent contends, in summary, that this dispute exceeds the proper scope of the Policy because it is, in substance, a trademark infringement dispute between an established mark owner and an operating business that should be resolved before a court, and not through the expedited UDRP procedure.

As to the first element, Respondent does not contest that the disputed domain name is confusingly similar to Complainant’s PLAYBOY Mark for standing purposes, but notes that none of Complainant’s trademark registrations covers accommodation, travel, or tourism services.

As to the second element, Respondent contends that he has rights and legitimate interests in the disputed domain name because he registered it in 2014 and has since used it, well before any notice of this dispute, in connection with a bona fide offering of luxury vacation services in the Dominican Republic, generating in excess of USD $650,000 in annual revenue, employing staff, and building a base of repeat customers and independent third-party recognition under the trading name “Playboy Vacation,” such that he has also become commonly known by the disputed domain name within the meaning of Policy paragraph 4(c)(ii). Respondent further contends that his adoption of the term “playboy,” an ordinary dictionary word, paired with the descriptive term “vacation,” was natural and made in good faith, that his website has never used Complainant’s logo or trade dress, has never referenced Complainant, and has displayed a disclaimer of affiliation with Complainant since at least 2017.

As to the third element, Respondent contends that the disputed domain name was neither registered nor used in bad faith, that there is no evidence of any diverted customer or any actual confusion in nearly twelve years of operation, that Complainant’s own passive holding argument is undermined by the fact that the website was taken down shortly before the Complaint was filed following Complainant’s own complaint to Respondent’s web host, and that Complainant’s approximately nine-year delay in bringing this proceeding after an earlier demand letter is further evidence against bad faith and has prejudiced Respondent’s ability to rely on defenses, including laches, that would otherwise be available in court.

The Respondent denies that his activities are illegal. The website linked to the disputed domain name mentioned that the women involved in the advertised services “are not prostitutes”.

Documents that the Respondent disclosed showed that after the Complainant contacted him, he offered to sell the disputed domain name to the Complainant for £12,000.

FINDINGS

Complainant is the owner of registered trademark rights in the PLAYBOY Mark in the United States and elsewhere, including a registration with the USPTO under No. 0600018 for PLAYBOY first used in commerce since at least November 1, 1953. Complainant has continuously promoted the PLAYBOY Mark since that time.

The disputed domain name, playboyvacation.com, was registered by Respondent on September 7, 2014.

The website resolving from the disputed domain name has, at various points, promoted vacation packages under the name “Playboy Vacation,” offered by Respondent, including private villas, staff services, and adult-oriented vacation experiences in the Dominican Republic, and has displayed a disclaimer stating that Respondent is not affiliated with Complainant.

Respondent’s website has accumulated customer testimonials, third-party references, and search engine traffic under the “Playboy Vacation” name over a period of years.

Complainant sent Respondent a demand letter in 2017, to which Respondent replied, and Complainant did not pursue further action until filing the Complaint in this proceeding in 2026.

Shortly before the Complaint was filed, the website resolving from the disputed domain name was taken down by its web host following a complaint submitted by Complainant to that host. The Panel observes that the disputed domain name now redirects to the domain name eroticvacationdr.com resolving to a similar website but mentioning the title “Erotic Vacation DR” instead of “Playboy Vacation”.

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 the following 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 first element functions primarily as a standing requirement, involving a reasoned but relatively straightforward, side-by-side comparison of Complainant’s trademark and the disputed domain name (see WIPO Overview 3.1, Section 1.7). Respondent does not contest that the disputed domain name is confusingly similar to Complainant’s PLAYBOY Mark for these purposes, and the Panel agrees. The disputed domain name incorporates Complainant’s PLAYBOY Mark in its entirety, merely adding the descriptive term “vacation” and the “.com” generic top-level domain, neither of which is sufficient to distinguish the disputed domain name from Complainant’s mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that Policy paragraph 4(a)(i) is satisfied.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.1, section 2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, given the resemblance between the disputed domain name and Complainant’s well-known PLAYBOY Mark and the absence of any authorization from Complainant. The burden of production accordingly shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests, although the overall burden of proof remains on Complainant.

The Panel finds that Respondent has rebutted Complainant’s prima facie case. The evidentiary record shows that, well before any notice of this dispute, Respondent registered the disputed domain name in 2014 and has since used it continuously to promote and deliver an actual, operating vacation business in the Dominican Republic, generating substantial annual revenue, employing staff, and maintaining premises in the form of the villas at which its services are delivered. The record includes contemporaneous customer testimonials and reviews addressed to Respondent’s business by name, independent third-party website and forum references identifying and recommending that business, and search engine data showing that consumers reached Respondent’s website principally by searching descriptive terms and Respondent’s own trading name, rather than Complainant’s mark. This is the character of evidence that supports a finding of a bona fide offering of goods or services under Policy paragraph 4(c)(i), and the Panel is satisfied that it has been offered before any notice of this dispute reached Respondent, whether that notice is dated to Complainant’s 2017 demand letter or to the filing of this Complaint in 2026. On this record, Respondent has also demonstrated that he has become commonly known by the disputed domain name within the meaning of Policy paragraph 4(c)(ii): the trading name and the disputed domain name are one and the same, and Respondent’s customers, testimonials, and independent reviewers identify his business by that name.

Complainant’s principal argument is that Respondent’s use cannot be bona fide because it is, in substance, an infringing use of Complainant’s PLAYBOY Mark. The Panel does not resolve, and need not resolve, whether Respondent’s use of the disputed domain name infringes Complainant’s trademark rights under any applicable national law, a question outside the scope of this proceeding and reserved to a court of competent jurisdiction. Even on the view that a properly proven infringing use cannot be considered bona fide, the burden remains on Complainant to prove the elements of such an infringement claim, and Complainant has not done so on this record. None of Complainant’s trademark registrations before the Panel covers accommodation, travel, or tourism services; Respondent’s website has, on the record before the Panel, never displayed Complainant’s rabbit-head logo or imitated Complainant’s trade dress, has never referenced Complainant, its magazine, or its founder, and has displayed a disclaimer of affiliation with Complainant since at least 2017; and Complainant has not identified a single instance of actual confusion in the nearly twelve years Respondent has operated under the disputed domain name. (See Atlan Pte. Ltd. v. Rocio Bachmaier, Atlan Insights AB, WIPO Case No. D2026-2116, finding that, even assuming an infringing use could not be considered bona fide, the complainant bore the burden of proving the elements of an infringement claim and had not done so, and where the panel found no evidence of passing off or impersonation after comparing the parties’ websites and noting that the respondent’s website identified its own business under its own branding without imitating the complainant’s marketing).

The Complainant has not proven that the Respondent’s activities are illegal and the Respondent seems to have been able to trade for twelve years without interference from the authorities.

At the time the Respondent began using the disputed domain name for its vacation business the Complainant was not using its playboyvacations.com domain name and had not done so for at least two years at that time. This does not appear to be a typosquatting case.

For these reasons, the Panel finds that Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name, and that Policy paragraph 4(a)(ii) has not been satisfied.

Registration and Use in Bad Faith

Because Complainant has not satisfied the second element of the Policy, the Complaint may be denied on that basis alone. The Panel nonetheless addresses the third element and finds that Complainant has also failed to establish that Respondent registered and is using the disputed domain name in bad faith.

Proof that a respondent was aware of a complainant’s mark at the time of registration is a necessary precondition to a finding of bad faith under Policy paragraph 4(a)(iii), but it is not, by itself, sufficient. Also where a Respondent may be prepared to sell a domain name, the Complainant must show that Respondent registered and used the disputed domain name with intent to target Complainant and to exploit its goodwill (See WIPO Overview 3.1, Section 3.1.1). Even accepting that Respondent, in registering a domain name combining the dictionary word “playboy” with the descriptive term “vacation,” may have been aware of Complainant’s famous PLAYBOY Mark, the record does not establish that Respondent’s purpose was to trade on that mark rather than to describe, in an apt and independently adopted manner, the pleasure-oriented vacation services he intended to and did in fact offer. The Panel here finds no evidence that Respondent intended to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s PLAYBOY Mark, nor any evidence of a single diverted customer or instance of actual confusion in nearly twelve years of coexistence. Respondent’s disclaimer of affiliation with Complainant, present on the website since at least 2017, is inconsistent with an intent to create confusion, and Complainant’s has not offered and its own historic domain names have not been used for any vacation-related service. Complainant has not used its playboyvacations.com domain name since 2012 and when it did, it did not offer vacations from it. Complainant’s delay of approximately nine years between its 2017 demand letter and the filing of this Complaint, during which Respondent continued to invest in and build his business under the disputed domain name, further weighs against a finding of bad faith.

As recorded above the Complainant has not demonstrated that the Respondent’s activities are illegal and so this is not proven as a ground of bad faith.

The offer to sell the disputed domain name to the Complainant for $12,000 was made after the Complainant contacted the Respondent and against the background of longstanding use of PLAYBOY by the Respondent and a turnover of hundreds of thousands of dollars each year. It can be seen as an attempt to settle a dispute and does not show that the Respondent registered the disputed domain name to sell it to the Complainant for profit. The Respondent was making much more money from his use of the disputed domain name.

Since the Complainant was not using its playboyvacations.com domain name at the time the Respondent began using the disputed domain name there does not appear to be any evidence of deliberate typosquatting by the Respondent.

For these reasons, the Panel finds that Complainant has not established that the disputed domain name was registered and is being used in bad faith, and that Policy paragraph 4(a)(iii) has not been satisfied.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the playboyvacation.com domain name REMAIN WITH Respondent.

Flip Jan Claude PetillionChair, Alan L Limbury and Dawn Osborne

Dated: August 13, 2026