The Complainant is A & H Sportswear Co., Inc. of Pennsylvania, United States of America represented by Chernow Katz, LLC of United States of America.
The Respondent is Hu Yanlin of Beijing, the People's Republic of China.
The disputed domain name <magicbra.com> (“Disputed Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2010. On March 29, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Disputed Domain Name. On March 30, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2010. The Response was filed with the Center on April 22, 2010
The Center appointed Alistair Payne as the sole panelist in this matter on April 29, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a designer and manufacturer of apparel and owns two United States trade mark registrations for the word mark MAGIC BRA being trade marks 2756417 and 3335611 dating from as early as 1994.
The Respondent registered the Disputed Domain Name on February 5, 2001.
The Complainant submits that it is the owner of the two United States word mark registrations for MAGIC BRA as noted above and that the Disputed Domain Name is confusingly similar to these marks. It says that it is well-known as a designer and manufacturer of apparel and in particular in relation to its MAGIC BRA brand in which it has developed a considerable reputation since filing in 1994.
Further, the Complainant says that as a result of its exclusive use of its MAGIC BRA trade mark over the years, this mark has come to indicate A&H as the source of goods under the brand and that no-one else has the right to use the mark without its authority. The Complainant says it has not given the Respondent such permission and that therefore it has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that its MAGIC BRA mark is extremely well-known and that it is extremely unlikely that the Respondent would not have been aware of this fact. It says that the Respondent is capitalising on this fame in order to attract traffic to its website and that this amounts to intentionally attracting people to the Respondent's website for its own commercial gain and therefore constitutes bad faith under the Policy.
The Respondent based in China disputes that the Complainant's mark is well-known and says that he certainly was never aware of it and based on his own web search that he cannot even find the Complainant's “office website”.
The Respondent submits that the term “magic bra” is a descriptive term which not only refers to a brassiere which will make breasts look bigger but also refers to different methods of breast enlargement such as by nutritional, sports or medial operative means and the Complainant cannot claim exclusive rights over general and descriptive words which are used in accordance with their natural meaning. He says that the Complainant has no registered trade mark rights in China and to his knowledge does not sell its MAGIC BRA products in that country.
He further says that even in the United States there appears to be several trade marks which incorporate the words “magic bra” and therefore even in the United States the term is common or descriptive and the Respondent does not have exclusive rights in relation to their use.
The Respondent says that he registered the Disputed Domain Name for the purpose of providing information through a portal site about various methods of breast enlargement including by nutritional, sporting and medical means and he has demonstrated plans to develop this website in the near future.
In the meantime he says that he does not advertise or sell brassieres himself but that the Disputed Domain Name currently resolves to a parking site provided by Whypark.com The information provided on this site comprises tips on wearing or selecting a bra and in general the site statistics indicate that there are only 2 visitors to the website per day.
The Respondent says that he has not acted in bad faith in any way , does not compete with the Complainant and has not attempted to sell the Disputed Domain Name to the Complainant or to any other party. Nor did he intentionally register or set out to use the Disputed Domain Name for any of the alleged bad faith purposes under paragraph 4(b)(iv) of the Policy.
The Disputed Domain Name is clearly identical to the Complainant's registered United States word marks for MAGIC BRA namely trade mark registrations 2756417 and 3335611. Accordingly, the Complaint succeeds in relation to the first element of the Policy.
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant asserts that its MAGIC BRA mark is well-known and that it owns exclusive rights in relation to the mark and that people would associate the mark with products produced by the Complainant and that it has not authorised the Respondent to use its mark and essentially that the Respondent is using its mark to attract traffic to its website. However, none of these bald assertions are supported by any evidence or even by circumstantial evidence which would allow the Panel to draw appropriate inferences.
There is no evidence that the Complainant owns registered trade mark rights in China, the market in which the Respondent lives and in which it plans to do business. Nor is there any evidence that the Complainant has used its mark in China, sells product under the MAGIC BRA trade mark in China or has developed any goodwill there. The Respondent submits that the term “magic bra" is descriptive and composed of commonly used English words and is in common use, even in the United States. In light of the above circumstances the Panel is inclined to agree with the Respondent and accepts the Respondent's submission that it was not aware of the Complainant's mark when it registered the Disputed Domain Name some 7 years after the Complainant's initial trade mark registration.
Further, the Complainant does not assert that the Respondent is competing with the Complainant and has filed no supplementary response to suggest that the format proposed by the Respondent for its future website is other than what the Respondent suggests it is (substantially an informational site) or in any concrete way is intended to confuse consumers. Considering that the proposed website is written entirely in the Chinese language this only reinforces the Panel's view that it is most probably aimed at consumers based in China and therefore is unlikely to compete with the Complainant's offering or to confuse United States based customers.
Although the Disputed Domain Name defers to a parking site which features information on brassieres and possibly has links to vendor sites, it is unclear to the Panel whether it has been in existence since registration of the Disputed Domain name and if so, then why the Complainant has waited around 7 years to bring this Complaint. In the overall circumstances that the Complainant has been unable to point to evidence of bad faith or use which is otherwise not legitimate and considering that the Respondent appears to be seeking to operate in a separate geographical and largely Chinese language market far removed from the Complainant's market (based on the scant evidence before the Panel), the Panel considers that the Complainant has not on the present record made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel therefore finds that the Complaint does not on the provided record succeed under this element of the Policy and it is unnecessary for it to go on to consider the third element under the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: May 12, 2010