Michael Ross, a 50-year-old property developer, registered the website “playboy.london” in his kitchen, while joking with his wife and a friend over a few bottles of wine and six months later he’s taking Playboy Enterprises Inc. to court in the U.K. to stop the adult entertainment company founded by Hugh Hefner from seizing the domain.
Playboy’s lawyers contacted Ross last year to say he didn’t have the right to use the trademark and in January won a ruling from the World Intellectual Property Organisation in Geneva, which handles disputes over Web domains, saying it should be transferred to them.
However as Kit Chellel at Bloomberg has reported, Ross has now hired a lawyer and filed a London lawsuit to stop that happening. A playboy is a “man of means” who pursues a life of pleasure, he said in a phone interview. “That describes me. I’m based in London. I think I have got as much right to this as you.”
More than 500 so-called top-level domains, from .vodka to .ninja, have been made available since last year by the nonprofit Internet Corporation for Assigned Names and Numbers. Competition for popular words has led to bidding wars — the .tech domain sold for $6.7 million last year, according to Icann.
Ross said he paid £34.99 to registration company 123-reg.co.uk in April, 2014, and was informed that he got the domain in October.
The addition of more top-level domains beyond .com “will inevitably lead to greater conflicts over domain names,” said Eric Ramage, trademark lawyer and former chairman of U.K. Internet registry Nominet’s policy advisory board. “The mere fact a word is a dictionary word does not mean it is free for anyone else to adopt and use or to register as part of a domain name.”
The WIPO ruling “conclusively determined that playboy.london was registered in bad faith and ordered the domain name to be transferred to Playboy,” said Ray Yeung, a New York-based spokesman for the company. “Playboy will continue active enforcement to protect its valuable brand and associated intellectual property.”
However for Surrey based Ross it has become a matter of principle. “I did this spur-of-the-moment for a bit of fun,” but Playboy’s aggressive stance made him decide to “dig my heels in.” He no longer claims to be much of a playboy although he admits to a “colorful” past.
WIPO ruled in January that Ross had registered the domain in bad faith as it wasn’t being used and was being held “passively.” The panel said it placed little emphasis on a newspaper article from 2008 describing Ross as “one of Britain’s most eligible bachelors.”
According to evidence he gave to WIPO, Ross claimed that he once dated a woman who posed in Playboy magazine and has visited Hefner’s mansion. The word amounts to little more than a “casual nickname,” WIPO found.
Icon Acquisition Holdings LP bought Playboy Enterprises for about $217 million in a deal completed in 2011. Playboy has been involved in a number of trademark and copyright disputes, including with an energy drink maker, a Chicago divorce attorney, and actor and singer Drake. Hefner is now its chief creative officer.
