Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC)

Case No IP- 2015-000028[2016] EWHC 1379 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 13 June 2016
Before
Miss Amanda Michaelssitting as a Deputy Enterprise Judge
Between
MICHAEL ROSSClaimantPLAYBOY ENTERPRISES INTERNATIONAL, INC.Defendant
B E T W E E N:
Jane Lambert (instructed by JWK Solicitors) for ClaimantHenry Ward (instructed by Berwin Leighton Paisner LLP) for DefendantTrial on the papers
JudgmentDeputy Enterprise Judge Michaels:Introduction
[1]This is a claim by Mr Michael Ross for declarations and related relief arising out of a dispute between the parties over the registration of the domain name <playboy.london> (“the Domain Name”).[2]Directions were given by HHJ Hacon on 11 March 2016 for the statements of case to stand as the evidence in chief in the case, and for the issues identified by HHJ Hacon to be determined on paper. As a result, whilst I have had the benefit of written submissions from counsel for both parties, there was no oral hearing of the claim.[3]For the reasons set out below, I dismiss the claim and refuse the declarations and further relief sought.

Background

[4]On 27 August 2014, the Claimant, Mr Ross, applied to Webfusion Ltd to register the Domain Name. The registration agreement incorporated the Uniform Domain Name Dispute Resolution Policy (“the UDRP”) approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”).[5]The UDRP provides an administrative procedure for resolving complaints about domain name registrations. Rules, approved by ICANN, govern that procedure.[6]On 21 October 2014, the Defendant (“PEI”) wrote to Mr Ross complaining of his registration of the Domain Name. The letter, sent by PEI’s in-house IP Manager, Mr Hobson, seemingly from the USA, described PEI as “the publisher of Playboy magazine and the owner of the world-famous PLAYBOY trademark.” No trade mark registrations, whether in the UK or elsewhere, were identified in the letter. PEI claimed that the Playboy mark (“the Mark”) had “come to be associated by the general public with our company and we have acquired considerable and valuable goodwill in the Mark” but failed to specify any jurisdiction in which PEI claimed to have such goodwill. PEI asserted that the registration and use of the Domain Name was made in bad faith, was likely to cause confusion or deception and diluted the distinctive quality of the Mark. Mr Ross was asked to transfer the Domain Name immediately to PEI and cease all use of the Playboy trade mark.[7]Mr Ross replied on 31 October 2014. He said that the definition of a playboy is “a man who pursues a life of pleasure without responsibility or attachments, especially one who is of comfortable means” and claimed that he had previously been described as a playboy. He denied having registered the Domain Name in bad faith or that there was any likelihood of confusion or deception. He stated that he did not use the trade mark Playboy in connection with any goods or services. Hence, he refused to give PEI the relief requested.[8]In the light of Mr Ross’s letter of 31 October, on 25 November 2014 PEI submitted a complaint under the UDRP, seeking an administrative order that the Domain Name be transferred to it.[9]The Uniform Domain Name Dispute Resolution Policy is followed by all domain name registrars and references in it to ‘we’ and ‘us’ are to the relevant registrar. It provides in particular “3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances: … c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.) 4. Mandatory Administrative Proceeding. This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/en/dndr/udrp/approved-providers.htm (each, a "Provider"). a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and(ii) you have no rights or legitimate interests in respect of the domain name; and(iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. … i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days … before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation … that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. … If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. 5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.” (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.[10]In the UDRP complaint, PEI stated that it owned over 2,000 trade mark registrations worldwide, including a US registration for PLAYBOY in Class 16 dating from December 1954 and a PLAYBOY LONDON mark in Class 25 registered in Hong Kong in 2012. PEI annexed documents to the complaint showing the registration details of some of its US and UK Playboy marks, however these were not included in the trial bundle provided to me. I have not, therefore, seen further details of any of the registered marks upon which PEI relied before the UDRP. However, PEI also relied upon its own Playboy domain names, including <Playboylondon.com>, <Playboylondon.co.uk>, and <Londonplayboy.com>.[11]The thrust of the complaint was that PEI owned numerous registered trade marks and unregistered rights in the word Playboy, the Domain Name incorporated that word and Mr Ross had no rights or legitimate interests in the Domain Name. PEI referred to an article which had appeared in the LondonEvening Standard which reported that Mr Ross had stated his intention to keep the Domain Name for his then unborn child to use when he came of age. PEI alleged that the Domain Name had been registered in full knowledge of its rights and in bad faith.[12]Mr Ross filed a Response drafted by his counsel, Ms Lambert. This complained that PEI had failed properly to identify the earlier rights relied upon and was seeking an unwarranted monopoly in the common noun “playboy.” It stated that “as the disputed domain name has not yet been used (and will only be used as a private site for [Mr Ross’s] friends and family for at least the next 18 years) there has been (and will be) no opportunity for confusion,” explaining further “Until his son comes of age, the Respondent plans to use the disputed domain name for a website that traces the boy's childhood and adolescence. Access to the site will be limited to family and friends. Such use … will be non-commercial. …” Bad faith was, accordingly, denied.[13]The Administrative Panel's Decision (“the Decision”) was delivered on 21 January 2015, by Mr Nicholas Smith (a member of the Australian Bar based in Sydney) sitting as a sole panellist. He upheld the complaint. He found that Mr Ross had been aware of the Playboy Mark at the time he registered the Domain Name and knew that it reproduced it in its entirety. He did not accept that Mr Ross had proved that he was known by the name ‘Playboy’ nor that he had provided any bona fide reason for registering the Domain Name. Mr Smith concluded that he was using it in bad faith, noting under the UDRP Rules in some circumstances even the passive holding of a domain name could amount to use of it in bad faith.[14]The claim form in these proceedings was issued on 12 February 2015. On the same day, Mr Ross notified the WIPO Arbitration and Mediation Centre of the issue of these proceedings, describing them as "challenging the order for transfer of the domain name" in accordance with paragraph 4 (k) of the UDRP. The implementation of the Decision was accordingly suspended.

These proceedings

[15]The statements of case, duly verified by statements of truth, stand as the evidence in this claim.[16]The Particulars of Claim were drafted by Ms Lambert and were filed on 12 February 2015. The main points raised were:a. Mr Ross is a director of a number of property development companies.b. Earlier in his life he was, and was described in the press as, a playboy.c. Mr Ross accepted that his registration of the Domain Name was regulated by the UDRP.d. Mr Ross admitted that when he entered into the Registration Agreement for the Domain name he was aware of PEI, its corporate name and the nature of its business. Further, the Particulars of Claim stated at paragraph 8 that Mr Ross surmised when registering the Domain Name that [PEI] was likely “to have registered the word PLAYBOY … as trade marks in the UK and elsewhere in relation to the goods and services that it supplied …” and “to enjoy goodwill or reputation in relation to the goods and/or services that it supplied by reference to the PLAYBOY sign and that the supply by others of such goods or services under such sign would amount to passing off."e. Having referred to paragraph 2 of the UDRP (which requires a domain name registrant to represent that he will not knowingly use the domain name in violation of any third party rights), Mr Ross was said to have “resolved never to use or threaten to use (nor allow, authorize, enable, encourage or permit others to use or threaten to use) the Domain Name in relation to the supply of goods or services.”f. Mr Ross’s intentions “as a former playboy” were stated to be “to use the Domain Name ironically as the universal resource locator for a website chronicling the childhood and adolescence of his children to which access will be restricted by user name and password to close friends and relations.”g. The details of the Complaint and the Decision were pleaded and the essential documents were exhibited to the Particulars of Claim. The UDRP process was described as an interlocutory procedure pending final determination of the dispute by a court. Mr Ross claimed to be entitled to keep the Domain Name unless this Court were to find that he has infringed, threatens or intends to infringe (etc) PEI’s trade marks or to pass off goods and services as those of PEI.h. Mr Ross was said to be “ready and willing to undertake” never to use the Domain Name in relation to the supply of goods or services.i. PEI’s letter of 21 October 2014 was said to amount to a threat to bring trade mark infringement proceedings against Mr Ross, who was a person aggrieved who had done (and threatened to do) nothing amounting to infringement. Mr Ross was said to have suffered loss or damage by reason of such threats, “the precise nature and full extent of which can only be determined upon an inquiry.”[17]Mr Ross sought declarations that 1) By his registration, use to date and proposed use of the Domain Name he has not(a) infringed (and will not infringe) any trade mark of PEI or(b) passed off or threatened to pass off any goods or services as or for those of the Defendant; 2) Mr Ross is entitled to keep the Domain Name; and 3) The threats in the letter of 21 October are unjustifiable. He also sought an injunction against repetition of the threats and an inquiry as to damages for the unjustified threats, together with interest and costs.[18]The main points of PEI’s Defence were:a. The Playboy brand was said to be global and of huge renown, a household name.b. PEI has held trade mark registrations for Playboy since at least 1953, including various UK marks, details of which were given in Schedule 1 to the Defence. In particular, six marks consisting of the word ‘playboy’ were identified, they had been filed at dates between 1986 and 2004, and covered goods and services (not further specified in the Schedule) in Classes 3, 4, 6, 8, 9, 11 12, 24, 25, and 43.c. PEI also owns a large number of domain names involving the word ‘playboy,’ such as playboy.com and playboylondon.com.d. PEI asserted that the public’s immediate response to the word ‘playboy’ is to bring to mind PEI and its business.e. PEI denied that Mr Ross had offered any undertakings to it in the terms set out at 14(h), or to restrict his use of the Domain Name as indicated in 14 (f) above; further, that he had not claimed not to intend to sell the Domain Name for financial gain, nor undertaken not to do so.f. PEI denied that Mr Ross’s proposed use of the Domain Name would overcome the public’s reaction of an association with PEI.g. PEI denied that the UDRP procedure was interlocutory or (if so alleged) that the Court has power to overturn the Decision, save (if at all) in cases of manifest error, none being alleged here.h. In any event, PEI maintained its position that the Domain Name was an instrument of deception.i. The allegation of unjustified threats was denied. If Mr Ross did not intend to make commercial use of the Domain Name, he was not a “person aggrieved” and had suffered no loss. Otherwise any threat of infringement proceedings was justified.[19]Mr Ross filed a Reply. This included a “promise” not to “allow, authorize, enable, encourage or permit others to use or threaten to use the Domain Name” and not to “sell or threaten to sell the Domain Name to another or others for financial gain.” Otherwise, the Reply dealt with various legal arguments.

The Issues to be decided

[20]A list of issues, which I summarise in the sub-headings below, was appended to the case management order of HHJ Hacon dated 11 March 2016. The full issues were: 1. Whether the Court has jurisdiction to overturn the Decision that the Domain Name is to be transferred to the Defendant and, if so, whether this jurisdiction is limited to:a. A situation in which a manifest error is identified in the Decision (on the basis that the Decision is expert determination); orb. A situation in which an error of law is identified in the Decision that renders the Decision wrong (on the basis that the Decision is in the nature of a decision in an arbitration). 2. If so, and in any event, whether the UDRP panellist was entitled to reach the decision that he did. 3. In relation to the letter dated 21 October 2014 sent by the Defendant to the Claimant: a. Whether the Claimant is a ‘person aggrieved’ within the meaning of s 21(1) of the Trade Marks Act 1994. b. Whether the threat of proceedings for trade mark infringement was justified.c. Whether the Claimant has sustained any loss or damage by way of the letter. 4. Whether the Claimant is entitled to a declaration that the registration, use to date and proposed use of the Domain Name has not infringed (and will not infringe) any trade mark of the Defendant. 5. Whether the Claimant is entitled to a declaration that the registration, use to date and proposed use of the Domain Name has not passed off or threatened to pass off any goods or services as or for those of the Defendant.

Issue 1: does the Court have jurisdiction to overturn the decision of the UDRP panellist?

[21]The submissions on behalf of Mr Ross commence by disclaiming any contention that the Court has jurisdiction to review the Decision, indeed, they emphasise that the claim is neither an appeal from nor a review of the Decision. The Claimant accepts that there is no right of appeal from or review of a UDRP panellist’s decision, “as such.” That concession reflected the relief claimed by Mr Ross in these proceedings, as he did not seek a declaration directly overturning the Decision, but instead asked for a declaration (the “Entitlement Declaration”)that he is entitled to keep the Domain Name.[22]In my judgment the Claimant’s concessions dispose of Issue 1: the issue is whether the Court has jurisdiction to overturn the Decision, and it is conceded that it does not.[23]In case I am wrong on that point, I will consider the additional arguments made on behalf of Mr Ross, in particular that a UDRP decision is in effect provisional, not conclusive, since if the Court finds that there is no infringement of the UDRP complainant’s rights, the domain name registrar is obliged to restore the domain name to the register. That is on the basis that paragraph 4(k) of the UDRP reserves the right of the domain name registrant to apply to the Court to determine the dispute, and specifically to determine whether the trade mark or other rights of the complainant have been infringed. Mr Ross claims that in those circumstances the Court has the power to make the Entitlement Declaration and his counsel relied upon Prince Plc v Prince Sports Group Inc [1998] F.S.R. 21 as authority for the proposition that the Court may grant that declaration even though it has no power to review or reverse the Decision.[24]A number of decisions of the High Court have considered the interplay between decisions under the UDRP or equivalent policies and the Courts. Prince (supra) was a decision of Neuberger J (as he then was) in a summary judgment application. Ms Lambert submitted that I could distinguish this case from the later decisions in Toth v Emirates [2012] EWHC 517,[2012] F.S.R. 26 and Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509, [2016] F.S.R. 18 both of which were relied upon by PEI, together with Patel v Allos Therapeutics Inc [2008] E.T.M.R. 75.[25]In Prince a claim was brought by a domain name registrant. The Defendant had written to complain about the domain name and had commenced proceedings under the Domain Name Dispute Policy operated by the registrar, Network Solutions Inc. The Claimant sought summary judgment for relief of various kinds arising out of an allegedly unjustified threat of trade mark infringement proceedings, pursuant to section 21, as well as a declaration that the Claimant’s registration/use of its domain name did not infringe the Defendant’s registered UK trade marks. Ms Lambert relied upon the fact that the learned judge’s reasons for refusing that declaration did not include a conclusion that the Court lacked jurisdiction to make such a declaration. That is so, and is a point which may be relevant to Issue 4. However, it does not seem to me to shed any light on the Court’s power to make the Entitlement Declaration, which I consider is significantly different to a declaration of non-infringement.[26]Paragraph 4(k) provides expressly that a decision to transfer a domain name may be implemented once any Court proceedings have been resolved between the parties, the proceedings have been dismissed or withdrawn, or the Court has ordered that the registrant does not have the right to continue to use the disputed domain name. The provision does not say what is to happen if the Court proceedings are resolved in favour of the registrant, nor does it expressly deal with the possibility that the Court might declare that the registrant has the right to use the domain name. Nevertheless, none of the authorities to which I was directed has resulted in the making of an Entitlement Declaration in favour of the domain name registrant. On the contrary, in my judgment, the decisions in Patel, Toth, and Yoyo are all authority for there being no scope for the Court to make such a declaration.[27]In [15] of Proudman J’s judgment in Patel she held:
“If … the complaint is upheld the burden is not on the complainant to establish infringement. It is for the registrant to plead and prove a cause of action giving him an interest in retaining the domain name. An unsuccessful registrant therefore faces considerable difficulty in identifying a cause of action upon which the Panel's decision can be challenged.”
[28]In Toth, Mann J considered the effect of Rule 17c of the Nominet “DRS” which was in very similar terms to paragraph 4(k) of the UDRP. The registrant had started proceedings in the Patents County Court for negative declaratory and other relief. HHJ Birss QC, as he then was, had refused to strike out the claims for declarations. In allowing an appeal from that decision, Mann J held that the DRS did not create a cause of action, saying at [48]:
“the court can have no role to play in any determination about abusive registration. The contract creates and completely regulates the dispute in such a way as to leave nothing for the court to bite on.”
He also held that the question of whether there had been an abusive registration was for the expert appointed in accordance with the DRS, there was no room for parallel court proceedings on the point for the detailed reasons he gave in [53], and there was no basis for or practical utility in granting the declarations sought (including that there had been groundless threats of trade mark infringement) where the DRS left the question of abusive registration to the expert.[29]Similarly, in Yoyo, which did concern the UDRP complaints procedure,HHJ Dight QC(sitting as a Deputy Judge of the Chancery Division)found that registration of the domain names by the Claimant amounted to passing off. HHJ Dight QC expressly found at [31] that paragraph 4(k) did not give rise to a separate cause of action in favour of the Claimant in that case, who, like Mr Ross, had a UDRP decision against him, and held that the High Court had no power to act as an appeal or review body from the decision. He too considered that there was no practical utility in granting the various declarations sought by the registrant, which included an Entitlement Declaration, because the UDRP scheme had dealt with the issue between the parties.[30]In my view, the Court may have power to determine the substantive dispute between the parties, but it is a matter for the domain name registrar to decide what (if any) steps should be taken in the light of the Decision and the Court’s judgment. No separate cause of action has been identified here to justify the grant of such a declaration, which would, in my view, be tantamount to granting an appeal against the Decision, something which this Claimant accepts cannot be done. In the circumstances, in my judgment the answer to Issue 1 is that the Court does not have the power to overturn the Decision. Issue 2: Ifso, and in any event, whether the UDRP panellist was entitled to reach the decision that he did.[31]No error on the part of Mr Smith was alleged in the Particulars of Claim, and in its trial submissions the Claimant accepted that he was entitled to reach the Decision. In the light of that admission and my finding as to Issue 1,in my judgment the answer to Issue 2 is that the UDRP panellist was entitled to reach the Decision.a. Whether the Claimant is a ‘person aggrieved’ within the meaning of s 21(1).b. Whether the threat of proceedings for trade mark infringement was justified.c. Whether the Claimant has sustained any loss or damage by way of the letter.[32]Section 21 of the 1994 Act provides, so far as relevant: “(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than—(a) the application of the mark to goods or their packaging,(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or(c) the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section. (2) The relief which may be applied for is any of the following— (a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by the threats; and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned. (3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.” (a) the application of the mark to goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c) the supply of services under the mark, (a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by the threats;[33]PEI responded to the claim that it had made an unjustified threat under section 21 by denying that Mr Ross is a ‘person aggrieved’ if (as he claimed) he had no commercial interest in the Domain Name; if he did have such an interest, PEI asserted that the threat of trade mark infringement proceedings was justified. Hence, PEI accepted that (subject to those points) the letter dated 21 October 2014 contained a threat of infringement proceedings. On the other hand, PEI argued that the letter was not actionable under s 21(1), because on a fair reading of the letter, it addressed concerns about the application of the mark to goods or the supply of services under the mark. I have real doubts as to whether that last contention is correct, given the vague terms in which the letter was couched, but as I explain below, in this case it seems to me that it makes no difference.[34]In Prince, Neuberger J referred to the judgment of Aldous L.J. in Brain [1996] F.S.R. 341, an action concerning s 70 of the Patents Act 1977, at page 351 in which he held that the question of whether or not a person is aggrieved by a threat is a question of fact to be established by evidence. Laddie J. said in the same case at [1997] F.S.R. 511 at 519 that he would have taken the view that “… the inclusion of “person aggrieved” in [the relevant] section is to exclude frivolous applications or applications by busybodies who have no real personal interest in the threats…” Having considered the decision of Romer J. in John Summers & Sons v. The Cold Metal Process Co. (1948) 65 R.P.C. 75, Laddie J concluded at 520:
“For the purpose of demonstrating that he has status to sue, what [the plaintiff] has to do is show that his commercial interests are or are likely to be adversely affected in a real as opposed to a fanciful or minimal way. [ …] I do not think the court should be astute to find that a complainant has not been affected in his commercial activities where it is clear that the purpose of the threat was to do so.”
(emphasis added).[35]In Prince, Neuberger J concluded that:
“save perhaps in very exceptional circumstances, where a threat of the sort contemplated by section 21(1) is made directly to the person who is alleged to be the infringer, that person may bring proceedings as a “person aggrieved” without further ado.”
[36]Moreover, in Brain v Ingledew, Laddie J held that damages are not a necessary prerequisite to the bringing of a threats action, as did the Court of Appeal in Best Buy Co Inc v Worldwide Sales Corporation España SL [2011] EWCA Civ 618, [2011] F.S.R. 30.[37]Mr Ross’s pleaded position as to his intended use of the Domain Name (which I have set out above) shows, in my judgment, an intention to use it for private rather than commercial purposes. That, coupled with Mr Ross’s pleaded willingness to undertake not to use the Domain Name in relation to the supply of goods or services, leads me to conclude that he has no commercial interests which were or were likely to have been adversely affected in any real way by the letter of 21 October. Any trade mark infringement proceedings under s 10 of the 1994 Act could only have related to use of the Domain Name in relation to goods or services of some kind. In my judgment, therefore, Mr Ross is not a ‘person aggrieved’ within the meaning of s 21(1).[38]In case I am wrong on Issue 3(a), I will go on to consider Issues 3 (b) and (c). PEI submitted that if Mr Ross intended to make any use of the Domain Name in the course of trade, this would lead to trade mark infringement, such that the threat of infringement proceedings was justifiable. The letter of 21 October had referred to infringement by causing confusion or dilution. In the light, presumably, of Mr Ross’s indication that the Domain Name would not be used in relation to supplying any (let alone any specific) goods or services, PEI did not plead any more specific basis on which the allegation of trade mark infringement would have been justified. However, it pleaded that infringement had been admitted, presumably having in mind paragraph 8 of the Particulars of Claim (summarised at paragraph 16(d)) above.[39]I think it would be unfair to hold that Mr Ross had gone as far as to admit that use of the Domain Name in relation to any goods or services whatsoever would have infringed one or more of PEI’s registered marks. The onus was upon PEI to justify the threats in the letter. It does not seem to me that it did so. The vagueness of the allegations in the letter did not bring it clearly within s 21(1)(a), (b) or (c). If I am wrong about Issue 3(a), then I would have decided Issue 3 (b) in Mr Ross’s favour and found that the threat was not justified.[40]Issue 3(c) is whether Mr Ross suffered any loss or damage by reason of the letter. None was pleaded, so that there is no evidence of any such loss or damage. In her submissions, which were not supported by the pleading or any evidence, Ms Lambert said that Mr Ross had incurred legal costs as a result of the letter, and had put his plans for the website at the disputed domain on hold. I cannot see how the delay in setting up the website can have caused any loss at all. As for the legal costs, it seems to me that the costs of dealing with the letter would properly be recoverable in these proceedings as costs, not as damages.[41]Ms Lambert invited this Court to give Mr Ross an opportunity to adduce evidence of loss and damage following delivery of this judgment, relying upon the approach of Neuberger J in Prince. The position there was, however, very different. The learned judge was dealing with an application for summary judgment and wished to bring finality to the proceedings. His primary view was that as there was “no evidence, and no pleading other than in the most general terms, to support a claim for damages,” he should not order an inquiry. However, as it was only an application for summary judgment, he was concerned that refusing to order the inquiry could have resulted in a costly exercise if the claimant pursued the claim to trial purely for an inquiry. Neuberger J concluded that it was better all round to give the claimant a final opportunity to put forward its evidence to support a claim for an inquiry. The reasons for permitting the claimant in that case to have a further opportunity to adduce evidence of loss and damage do not apply here and I consider that in the absence of any pleaded basis of loss, and given Mr Ross’s non-commercial intentions for the domain name, I should not permit Mr Ross a further opportunity to make good a claim to have suffered actual loss and damage.[42]I would therefore have answered Issue 3(c) in the negative. Issue 4: Whether the Claimant is entitled to a declaration that the registration, use to date and proposed use of the Domain Name has not infringed (and will not infringe) any trade mark of the Defendant. And Issue 5: Whether the Claimant is entitled to a declaration that the registration, use to date and proposed use of the Domain Name has not passed off or threatened to pass off any goods or services as or for those of the Defendant.[43]It is convenient to deal with these issues to a large extent together.[44]There is no objection in principle to granting a declaration of non-infringement of a trade mark in a suitable case, in exercise of the Court’s powers under CPR 40.20, see for instance, Messier-Dowty v Sabena [2000] 1 WLR 2040. However, PEI submitted that, in this case, the declaration sought would serve no useful purpose. Mr Ward referred me to another judgment of Neuberger J, Financial Services Authority v Rourke [2002] C.P. Rep. 14. The learned

judge commented:

“… so far as the CPR are concerned, the power to make declarations appears to be unfettered. As between the parties in the section, it seems to me that the court can grant a declaration as to their rights, or as to the existence of facts, or as to a principle of law, where those rights, facts, or principles have been established to the court's satisfaction. The court should not, however, grant any declarations merely because the rights, facts or principles have been established and one party asks for a declaration. The court has to consider whether, in all the circumstances, it is appropriate to make such an order.”
He went on:
“It seems to me that, when considering whether to grant a declaration or not, the court should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration.”

Trade mark infringement

[45]As to Issue 4, infringement under s 10 of the 1994 Act arises only where there is use of a sign in the course of trade in relation to some goods or services. PEI has not put forward any explanation of how such use of the Domain Name would infringe any of its registered UK trade marks. Mr Ross does not intend to trade from the URL himself, nor does he intend to sell the Domain Name for financial gain. In those circumstances, in my judgment, whilst the Domain Name is owned by Mr Ross, and has not been used, or will be used only for the non-commercial purpose he has disclosed, it will not have infringed PEI’s registered UK marks.[46]On the other hand, Mr Ross has not undertaken not to part with ownership of the Domain Name other than by sale for gain, so he might give it away, whether in due course to his child, or to another family member or anyone else. A future owner might, of course, choose to use the Domain Name for different purposes.

Passing off

[47]As to Issue 5, PEI relied upon BT v One in a Million [1999] FSR 1, in which the Court of Appeal held that the mere registration of a domain name consisting of a distinctive business name would make a false representation of a connection to the rights holder, and would amount to passing off. That ruling was followed and applied in Vertical Leisure [2014] EWHC 2077 (IPEC) and Yoyo; in both cases the Court rejected arguments that the development of the internet meant that One in a Million was not good law. HHJ Dight QC summarised the premise as follows at [14]:
“the mere registration of the Domain Names, which are distinctive names, makes a representation to persons who consult the register that the registrant is connected or associated with the names registered and thus the owner of the goodwill in the names and would believe that the registered owners were connected or associated with the owner of the goodwill in the domain name they had registered.”
Such a misrepresentation would lead to damage and thus to passing off.[48]Mr Ross’s case is that the Domain Name is not the kind of case caught by One in a Million, as the word “playboy” is a normal English word, and not solely or primarily a distinctive business or trade name like Marks & Spencer, or“NatWest” (one of the names at issue in Yoyo). He argues that its mere registration would not, therefore, lead to any such misrepresentation.[49]I accept that the word ‘playboy’ is a word which may be found in a dictionary and is not solely a trade or business name. However, it is not disputed by Mr Ross that Playboy is a very well-known and long-established mark in the UK and is highly distinctive to the UK public. I consider that there is force in PEI’s claim that the public’s immediate response to the word ‘playboy’ is to bring to mind PEI and its business. In addition, I take into account that Mr Ross’s intentions “as a former playboy” were stated to be “to use the Domain Name ironically as the universal resource locator for a website chronicling the childhood and adolescence of his children to which access will be restricted by user name and password to close friends and relations.” I can see no reason why such use of the Domain Name would be “ironic” were it not for the contrast which would arise between use of the Playboy Mark, which is well-known for essentially adult entertainment, and the innocent family website which Mr Ross contemplates setting up. In my judgment, such irony would rely upon the reputation and goodwill in the Playboy mark.[50]In my judgment, in the circumstances, the use of the word Playboy as the distinctive part of the Domain Name would be liable to be seen by a substantial proportion of members of the public in the UK as indicating some sort of connection to PEI and its extremely well-known goods and services.[51]I conclude that the mere registration of the Domain Name would lead to passing off.

Should I grant the declarations sought?

[52]The application for a declaration that there has been no passing off must be rejected. However, in the light of my views as to the lack of justification of the threat of trade mark proceedings, and as to the lack of past or current trade mark infringements, I must consider whether to grant the declaration sought in relation to Issue 4.[53]I have serious doubts as to the practical utility of such a declaration, given my findings on Issue 5, and also given the fact that the Decision was not based, so far as I can see, solely upon Playboy’s UK rights.[54]In Prince, the claimant sought not only a declaration and injunction under s 21, but also sought a declaration to the effect that the claimant had not infringed the defendant’s UK trade marks. Neuberger refused to grant such a declaration, in part because he thought that it might be misinterpreted in parallel US proceedings, but he added at pages 41-42:
“it is one thing for the plaintiff to seek the section 21 declaration, on the basis that the principal letter constitutes a threat, where the onus is on the defendant to justify it; it appears to me to be quite another thing for the plaintiff to be seeking the further declaration, in respect of which, as I see it, the onus is on the plaintiff. In this connection, I note that the plaintiff has not put forward any positive evidence to support its claim. I add this. It would appear to me to be undesirable as a matter of practice, save in unusual circumstances, to grant relief such as the further declaration to a plaintiff against whom an unjustified threat under section 21 is made. The legislature has decided what declaratory relief is appropriate to such a person: it is set out in section 21(2). Unless there is an unusual reason for so doing, it appears to me that it would be somewhat oppressive on the person who has made the threat that he should have to face relief which goes further than that which the section contemplates. In all the circumstances, I think it inappropriate to grant the plaintiff the declaration it seeks in paragraph 1 of its summons, at any rate at this summary stage.”
[55]In addition, in Toth (supra), one of several declarations sought by the domain name registrant was a declaration that he had not infringed Emirates’ marks. At paragraphs [61]-[65], Mann J considered the merits of the claim to the declarations in the light of his finding that the possibility of bringing court proceedings did not make the panellist’s decision “provisional.” Counsel relied on the jurisdiction of the court to grant declarations as to the existence of a state of fact or law, and the provisions of CPR 40.20. Mann J rejected the argument in the following terms:
“64 Mr Turner sought to combine the principles to be extracted from these cases to demonstrate that he could still apply for a declaration. The declaration was juridically sound, and it would serve a useful purpose. It is true that it would not technically reverse the finding of the appeal panel, which would still stand. However, it would serve a useful function in that the “stay”, provided for in para.17c if proceedings were started, would in effect become perpetual because the conditions for removing it (specified by para.17c) could never come about. Thus the requirement to transfer the Domain Name to Emirates would remain suspended for ever. 65 This argument only works for Mr Turner if the contract constituted by the DRS leaves it open to the court to grant a declaration. If it is a contract which leaves the question of abusive registration to the expert (and appeal panel) then the court must decline to grant a declaration, either as a matter of jurisdiction, or as a matter of discretion (it does not matter which). I have already held that that is the effect of the contract, so the declaration route is not open to Mr Toth. In fact, his explanation of how the declaration would work is a further point which supports the case for saying that the DRS does not permit the court a role. To have the court decision operating in such an indirect manner would be a very odd position to put the court in. If it was intended that the court should have a role then one would have expected the contract to be structured so as to give it a more direct one.”
[56]It seems to me that to grant the declaration sought by Mr Ross that he has not infringed the Playboy UK trade marks would have exactly the effect which Mann J deprecated in Toth, amounting to an attempt to circumvent this Court’s lack of any jurisdiction to revisit the Decision. In addition, in the absence of a matching declaration relating to passing off it seems highly doubtful that such a declaration would serve any useful purpose. In all the circumstances, I do not consider that it would be appropriate to make the declaration sought.[57]The claim fails.