Ross v Playboy Enterprises International, Inc

A court cannot use ordinary declaratory jurisdiction to overturn or indirectly suspend a decision made under the UDRP. A registrant seeking relief under section 21 of the Trade Marks Act 1994 must show a real adverse effect on commercial interests. Private, non-commercial use does not suffice. Trade mark infringement requires use in the course of trade in relation to goods or services, but mere registration of a highly distinctive domain name may constitute passing off where the public would infer a connection with the goodwill owner. Declaratory relief remains discretionary and should serve a useful purpose.

Michael Ross registered playboy.london under an agreement incorporating the UDRP. Playboy Enterprises International, Inc. complained under that policy, and the administrative panel ordered transfer of the domain name. Ross then sought declarations concerning trade mark infringement, passing off and his entitlement to retain the domain name, together with relief for unjustified threats under section 21 of the Trade Marks Act 1994.

The claim was tried on the papers. The principal issues were whether the High Court could overturn or effectively neutralise the UDRP decision, whether Ross was a person aggrieved by the threat, whether the threat was justified, and whether the proposed use involved trade mark infringement or passing off.

1. UDRP decision. The claim was dismissed. Ross conceded that the court had no jurisdiction to review or overturn the UDRP decision, and no separate cause of action justified an entitlement declaration. Paragraph 4(k) did not permit the court indirectly to reverse the panel’s decision. The registrar was to determine what steps, if any, should follow the decision and the court’s judgment.
2. Threats. A person aggrieved under section 21(1) must show that commercial interests are or are likely to be adversely affected in a real, rather than fanciful or minimal, way. Ross’s pleaded intention was private and non-commercial use, so he lacked the necessary commercial interest. Alternatively, the threat was unjustified because its vague wording did not identify conduct clearly falling within section 21(1)(a)–(c), and PEI had not proved infringement. No loss or damage was proved.
3. Infringement and passing off. Section 10 of the Trade Marks Act 1994 requires use of a sign in the course of trade in relation to goods or services. Ross’s disclosed non-commercial use therefore did not infringe PEI’s UK registrations. Applying BT v One in a Million, the court held that mere registration of a domain name may amount to passing off where the distinctive element would lead a substantial proportion of the public to infer a connection with the goodwill owner. Although “playboy” is an ordinary English word, Playboy was highly distinctive in the UK.
4. Declarations. The court had power in principle under CPR 40.20 to grant a declaration of non-infringement, but relief was discretionary and had to serve a useful purpose. The declaration was refused because it would not do so and would indirectly circumvent the court’s inability to revisit the UDRP decision.

First-instance decision. The claim was tried on the papers and dismissed by the High Court (Intellectual Property Enterprise Court).