WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Estate of Redmond Barry LLC v. Registration Private, Domains by Proxy, LLC / Myles Hass, Premier Events Entertainment, LLC
Case No. D2020-0115
1. The Parties
Complainant is The Estate of Redmond Barry LLC, United States of America (“U.S.A.”), represented by Fross Zelnick Lehrman & Zissu, PC, U.S.A.
Respondent (collectively) is Registration Private, Domains by Proxy, LLC. U.S.A / Myles Hass, Premier Events Entertainment, LLC, U.S.A., represented by Traverse Legal, PLC, U.S.A.
2. The Domain Name and Registrar
The disputed domain name <magicmikelive.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. On February 11, 2020, Respondent requested the automatic 4-day Response extension, in accordance with paragraph 5(b) of the Rules. On February 21, 2020, Respondent requested a 30-day Response extension, in accordance with paragraph 5(e) of the Rules and on March 20, 2020, Respondent requested a further 30-day extension to file the Response. In accordance with paragraph 5(e) of the Rules, the Center extended the Response due date to April 23, 2020. The Response was filed with the Center on April 23, 2020. The Center received an unsolicited supplemental filling from Complainant on April 27, 2020 titled Complainant’s Supplemental Submission in Support of Complaint (“Supplemental Filing”).
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 18, 2020. 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.
On May 27, 2020, the Center issued an order from the Panel inviting Respondent to comment solely on Complainant’s Supplemental Filing no later than June 5, 2020. Respondent filed a timely response.
4. Factual Background
Complainant, The Estate of Redmond Barry LLC, owns all copyright and trademark rights in the 2012 “Magic Mike movie” and the 2015 sequel “Magic Mike XXL”. The Magic Mike movie is a fictional story inspired by its star Channing Tatum’s work as a male stripper early in his career. It was first mentioned in press reports (e.g., Variety, April 29, 2011) and first shown as the closing film for the 2012 Los Angeles Film Festival on June 24, 2012, before officially premiering on June 29, 2012. Following its theatrical release, the movie was distributed on DVD and Blue Ray (October 2012), television, digital download, and streaming services. It ultimately had worldwide gross box office receipts of over USD 167,000,000. Magic Mike XXL was first announced in an interview with Channing Tatum that appeared in Glamour magazine on July 11, 2012. That movie was released on July 1, 2015 and had worldwide gross box office receipts of over USD 117,000,000.
The Magic Mike movie was included on many critics’ lists of the best movies of 2012, and the movie or actors in the movie received several awards and/or nominations. The success of that movie led to the development of the sequel Magic Mike XXL. Press concerning the sequel appeared as early as July 11, 2012 in Glamour magazine. Other pre-release promotion included release of the official movie title and plot synopsis on September 29, 2014, as well as the official announcement of its release date. In 2013, press reports announced that a musical version of the story was being developed, with the ultimate goal of bringing the show to a Broadway stage.
Complainant owns a trademark registration for the MAGIC MIKE Mark (i.e., European Union Trademark Registration No. 17378597, registered April 20, 2018), and trademark registrations for the MAGIC MIKE LIVE Mark (i.e., European Union Trademark Registration No.17378605, registered April 23, 2018; and U.S.A Trademark Registration No. 5,312,535, registered October 17, 2017).
Respondent, Premier Events Entertainment, LLC is a Michigan limited liability company that was formed on July 27, 2010 by its owner and sole managing member, Myles Hass, for purposes of “party planning and entertainment”. Respondent does business under the assumed name of “Magic Men”. In July 2015, the Michigan Department of Licensing and Regulatory Affairs issued a “Filing Endorsement” certifying that the “Certificate of Assumed Name” for Respondent to transact business under the assumed name of “Magic Men” was endorsed. Respondent owns trademark registrations for the MAGIC MEN Mark for services such as live exotic male entertainment, revues, and dance performances (including U.S. Registration No. 4,648,143 (registered December 2, 2014) and European Union Trademark Registration No. 014809594 (registered September 13, 2016).
Respondent previously operated from the website “premiergentlemen.com” and currently operates from the website “magicmenlive.com”, which it registered on February 7, 2015. That same day, Respondent also registered the Domain Name, using it to forward to Respondent’s primary website “magicmenlive.com”. When Respondent registered the Domain Name, Mr. Hass was aware of the Magic Mike movie, but apparently unaware of Complainant’s intention for there to be a Magic Mike live revue show. Visitors to the website associated with the Domain Name (“Respondent’s website”) used to be redirected to the website appearing at <magicmenlive.com>, which promotes a male strip show. Respondent deactivated the Domain Name sometime during the course of these proceedings so it no longer redirects the public to its website.
5. Parties’ Contentions
Before the Domain Name was registered, the Magic Mike movie was released to commercial success and critical acclaim. The MAGIC MIKE Mark was used in the film, on DVDs, in advertisements and promotional materials for that movie and by third parties. Through these activities, Complainant established common law rights in the MAGIC MIKE Mark so as to create a lasting association in the minds of moviegoers between MAGIC MIKE and Complainant’s films and related projects.
The Domain Name incorporates in its entirety Complainant’s MAGIC MIKE Mark, plus the non-distinctive term “live” and the generic Top-Level Domain “.com” (gTLD). The “.com” gTLD extension need not be taken into consideration when adjudging confusing similarity. Adding the term “live” does not create a distinguishable mark but merely suggests it is the live version of the Magic Mike film experience. The confusion created by the similarities between the Domain Name and the MAGIC MIKE Mark undoubtedly will cause Internet users seeking Complainant’s website but who reach Respondent’s website to mistakenly believe that an affiliation exists between Complainant and Respondent when in fact no such relationship exists. This is especially likely given that similar domain names including <magicmikelivelasvegas.com> and <magicmikelive.com.au> already are associated with Complainant or its productions and that Respondent’s services are designed to look like the live version of Complainant’s film.
Complainant never authorized Respondent to use the MAGIC MIKE Mark or any mark confusingly similar to it, or to otherwise use the Domain Name to advertise or promote Complainant’s goods or services. Complainant has no relationship or association with Respondent. Accordingly, any use that Respondent makes of the Domain Name which is confusingly similar to the MAGIC MIKE Mark in connection with a website that alludes to Complainant’s films violates Complainant’s common law rights as well as the exclusive trademark rights that Complainant has now acquired in registered trademarks. There is no evidence of record that Respondent is or has ever been known by the Domain Name. Respondent uses the name Magic Men Live for its services, relying on the confusingly similar Domain Name to redirect traffic to the website at “www.magicmenlive.com”. Respondent is not associated with any business incorporating the names MAGIC MIKE or MAGIC MIKE LIVE, nor does Respondent offer any bona fide goods or services under that name. Instead, the Domain Name refers exclusively to Complainant and using it allows Respondent to trade on Complainant’s fame and goodwill in the MAGIC MIKE Mark to commercially benefit from a performance that directly competes with Complainant’s live productions around the world.
Respondent, aware of Complainant’s films, and clearly appreciating the resulting widespread recognition of the MAGIC MIKE Mark, registered the Domain Name to misappropriate the recognition that Complainant had created in the MAGIC MIKE Mark and to use that recognition to generate interest in and traffic to its website to commercially benefit its own exotic male dance show. The Domain Name redirects traffic to Respondent’s “magicmenlive.com” website which promotes a production that clearly is similar to the MAGIC MIKE LIVE shows that are currently being produced around the world and that is derived from and based on Complainant’s movie. The characters and dance numbers featured at Respondent’s website mimic those depicted in the Magic Mike film – including the sailor, the fireman, the cowboy, and the “bad boy” – many of whom perform in virtually identical costumes to those worn by the characters in the film. Using a confusingly similar Domain Name to redirect visitors to a website for a virtually identical exotic dance revue makes clear that Respondent is seeking to profit from the Domain Name. There is no disclaimer posted on Respondent’s website but if there were, such confusion cannot be cured by way of a fine print disclaimer. And using a privacy protection service also suggests bad faith.
Since Respondent began conducting business in 2010, it has been referring to itself and its male dancers as the “Magic Men”. Mr. Hass garnered inspiration for the Magic Men show after working as an office manager for his uncle who had been in the male live entertainment business since 1989, which included an all-male show called “Men in Motion”. The Magic Men show title was derived as a play on the words “fantasy” and “men”, since Respondent’s live show largely deals with fulfilling and depicting fantasies about men.
Respondent started as a private-party agency, booking the Magic Men for private live male performances at least as early as 2010. In or around 2012, Respondent started booking the Magic Men for larger club gigs, such as the Magic Men Revue events at Larry Flynt’s Hustler Club Detroit on July 15, 2012 and August 12, 2012. In or around 2015, the Magic Men Live show began touring across the United States. As of today, Magic Men Live shows have occurred in over 155 cities throughout the United States and they have garnered over two million fans cumulatively across social media platforms such as Facebook, Instagram, Snapchat, TikTok, YouTube, and Twitter.
When Respondent registered the Domain Name in 2015, Complainant was not making a similar use (i.e., live exotic male revue shows) of Magic Mike. Respondent acknowledges that Complainant has registered trademark rights to MAGIC MIKE XXL and MAGIC MIKE LIVE (which arose after Respondent’s registration of the Domain Name), but disputes Complainant’s claims related to its alleged common law trademark rights to the movie title Magic Mike commencing in 2012 for use in association with goods such as “the film”, on DVDs, in advertisements and promotional materials and by third parties. Complainant allegedly developed common law rights to Magic Mike in 2012, at which time Respondent had priority rights in the dominant word “Magic” and overall mark “Magic Men” as it related to live male revue shows. Also, the MAGIC MIKE Mark contains the descriptive term “Mike”, which further calls into question whether such common law rights to Magic Mike even existed in 2012. Generally, movie titles are not registrable as trademarks and are not protectable as common law trademarks unless they have acquired secondary meaning. Here, Complainant has provided conclusory statements regarding revenue generated by the movie and awards received. It barely provides any support for the long list of factors considered by a court when determining whether a movie title has achieved secondary meaning to be recognized as a common law trademark.
Even if Complainant had common law trademark rights to Magic Mike as early as the movie’s premier at the Los Angeles Film Festival on June 24, 2012, it would have been in association with the film, on DVDs, in advertisements and promotional materials and by third parties, which, as Complainant describes, is about a fictional story. Complainant would not have developed rights to Magic Mike in association with live exotic male revue shows in 2012. The Magic Mike Live show was not announced until May 4, 2016 (which is different and much later than the June 28, 2012 announcement date cited by Complainant for a Magic Mike Musical, a production that was ultimately cancelled, and the Mark MAGIC MIKE LIVE was not actually used in commerce for live shows until April 21, 2017). A movie about a fictional character who stars in live exotic male revue shows and actually hosting live exotic male revue shows are notably different uses and goes against a finding of confusing similarity.
Forwarding the Domain Name to Respondent’s website at <magicmenlive.com>, a site dedicated to showcasing information related to its Magic Men Live show, which includes depictions of characters such as navy, fireman, SWAT team, Tarzan, and cowboy, among other references to pop culture, does not create confusing similarity. All male revue shows, including competitors Chippendales and Thunder from Down Under, utilize versions of these types of characters in their live shows. And there are other several other male strip shows that use similar titles and domain names, such as the “Magic Male XXL Show” at “www.magicmalexxltheshow.com” and “Magic Male Revue” at “www.magicmalerevue.com”.
Long before Respondent received any notice of this dispute, it was using the Domain Name in connection with a bona fide offering of services, namely providing live exotic male entertainment, revues, and dance performances since 2010 under the name Magic Men. Starting in 2012, Respondent began booking larger Magic Men gigs and thereafter increased its touring as Magic Men Live in 2015. To protect its trademark rights, Respondent registered both <magicmenlive.com> and the Domain Name on February 7, 2015, about five years before Respondent’s notice of this dispute. Respondent’s registration and use of the Domain Name occurred before Complainant’s use of Magic Mike in connection with live exotic male entertainment shows. Registration of the Domain Name was defensive to protect its registered trademark rights to MAGIC MEN and its Magic Men Live show. Using the Domain Name “defensively” to forward to Respondent’s website to protect from infringement on its MAGIC MEN trademark and Magic Men Live show was a good faith effort to protect its mark.
Respondent has never attempted to contact Complainant regarding the Domain Name until the present dispute was filed. Complainant tried to acquire the Domain Name from Respondent via letter but Respondent did not engage in such discussions. Further, Respondent has never attempted to sell the Domain Name to any other third-parties, including competitors. This supports Respondent’s good faith in registering the Domain Name in addition to its defensive registration. When Respondent registered the Domain Name, Complainant and Respondent were not competitors and the Domain Name was not registered by Respondent primarily to disrupt Complainant’s business. At that time, Respondent was not aware of Complainant’s intention to create a Magic Mike Live show – such an intention was not announced until May 4, 2016, which is an irrelevant date under trademark law. The only date that matters here is that Complainant’s first use of MAGIC MEN LIVE in commerce with regard to a male revue show did not occur April 21, 2017, years after Respondent’s first use date and years after Respondent’s registration of the Domain Name. The fact that Respondent’s contact information was allegedly privacy-protected when Complainant initiated this dispute is not per se suggestive of bad faith intent, especially given Respondent’s legitimate use of the Domain Name and lack of bad faith articulated above. When Respondent first registered the Domain Name on February 7, 2015, the contact information for Mr. Hass was plainly discoverable via a public WHOIS search, Respondent’s contact information was not privacy protected on WHOIS until June 21, 2017. Further, when conducting a WHOIS search today via the Registrar, Respondent’s contact information is plainly visible.
C. Complainant’s Supplemental Filing
Respondent has provided no evidence of any relevant trademark rights that predate Complainant’s rights in the MAGIC MIKE Mark before registering the Domain Name. Respondent’s timeline makes clear that Complainant’s rights predate the creation of the Domain Name. Further, Respondent admits that at the time Respondent registered the Domain Name, Mr. Hass was aware of the Magic Mike movie. While Respondent disputes Complainant’s claim of rights, it offers no facts or evidence to counter Complainant’s showing that it acquired rights in the MAGIC MIKE Mark by no later than 2012 as a result of press reports about the film of that name which first appeared in 2011, the movie’s release in 2012, and related press coverage, ticket sales, and critical and financial success. Respondent’s alleged acquisition of rights in a different mark (MAGIC MEN) as of 2010, has no bearing on whether and when Complainant acquired rights in the MAGIC MIKE Mark. Further, Respondent has not established that its rights in MAGIC MEN predate Complainant’s rights in the MAGIC MIKE Mark. Before this proceeding, Respondent represented to the United States Patent and Trademark Office (“Trademark Office”) that its first use of MAGIC MEN was July 15, 2012, three weeks after Complainant’s Magic Mike movie had been released. Only after this proceeding was brought has Respondent tried to push back that date.
Respondent’s focus on its alleged rights in MAGIC MEN, has no bearing on confusing similarity. The suggested distinction that because Complainant’s trademark rights are in connection with filmed entertainment about a male strip revue and Respondent’s use of the Domain Name is in connection with a live male revue is irrelevant for establishing confusing similarity where the Domain Name encompasses the entirety of the MAGIC MIKE Mark.
Respondent’s registrations or rights in MAGIC MEN do not create a legitimate interest in the use of the Domain Name which includes the different mark MAGIC MIKE. Also, Respondent’s claim that its registration of the Domain Name was based on a legitimate interest because it was done for defensive purposes is without merit. Defensive domain name registrations generally are the result of a practice of registering many domain names, often across multiple TLDs, in varied grammatical formats of the mark owned by the registering party primarily to protect trademarks from abuse such as cybersquatting. The Domain Name does not consist of the MAGIC MEN Mark or any mark that is a typo or misspelling or formative or pejorative version of it. There is nothing to show that Respondent registered the Domain Name or any other domain names for the legitimate purpose of protecting its MAGIC MEN Mark. Further, unlike cases where defensive registration of domain names was deemed to constitute a legitimate interest, here the Domain Name was registered 5 years after Respondent claims to have adopted MAGIC MEN, three years after Complainant first used its MAGIC MIKE Mark, and it was registered with full awareness of Complainant’s movie and MAGIC MIKE Mark, to divert consumers to Respondent’s website where it fashioned its live revue after the Magic Mike movie. Further, as Respondent’s own documentary evidence shows, its rights in MAGIC MEN were acquired after Complainant had acquired rights in MAGIC MIKE.
Regarding Respondent’s claims that the Domain Name includes “Mike” which is a common term, registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on Respondent. Respondent has no trademark registrations consisting of the MAGIC MIKE Mark. The evidence presented by Respondent does not show that it is commonly known as MAGIC MIKE, nor does it show Respondent was even doing business under the MAGIC MEN name before the release of Complainant’s Magic Mike movie. The only evidence submitted showing any use of MAGIC MEN occurred after the Magic Mike movie debuted to critical acclaim. A claim that a domain name is used for defensive purposes may not be sufficient to create rights or legitimate interests in the disputed domain name. The timeline presented by Respondent shows that he did not begin to promote the name MAGIC MEN until after Complainant had released the Magic Mike film and had established rights in MAGIC MIKE; that Respondent did not register the Domain Name until after Complainant had established rights in the name MAGIC MIKE; and that Respondent has never done anything with the Domain Name other than use it to attract consumers to Respondent’s website for commercial gain. On balance, the facts here compel a finding by the Panel that on the balance of probabilities Respondent registered the Domain Name to target Complainant’s MAGIC MIKE Mark.
Respondent’s use of the Domain Name shows that it was selected and used by Respondent in bad faith, with the intent to attract for commercial gain Internet users to its website. This evidence includes: (1) the fact that the Domain Name was redirected to the “www.magicmenlive.com” website; and (2) the fact that Respondent’s webpage reached through redirection of the Domain Name was designed to conjure up and copy elements of Complainant’s MAGIC MIKE movie. The use of images of “navy, fireman, SWAT team, Tarzan, and cowboy” are not mere tropes common to the male exotic revue industry, but rather the images used at Respondent’s website were clearly styled and presented in a manner meant to conjure images from Complainant’s movie and advertising and to create an association between Complainant’s movie and Respondent’s revue. Where use of a domain name intentionally trades on the fame of another, it cannot constitute a bona fide offering of goods or services and cannot constitute a legitimate interest in a domain name. Adopting and using the MAGIC MEN name, for which Respondent has only provided proof of use dating beginning mere weeks after the release of Complainant’s Magic Mike movie and in the wake of the substantial financial and critical success of the picture, makes it impossible to avoid an inference of bad faith. Respondent even admits that it was aware of the movie and registered the Domain Name having known about the Magic Mike movie.
D. Respondent’s Comment to Complainant’s Supplemental Filing
Reiterating his previous arguments in response to the Complaint, Respondent posits this case involves a legitimate trademark dispute which is outside the scope of the UDRP.1 In this regard he notes: Complainant has failed to establish common law trademark rights in the Mark in June 2012 when the movie first premiered; the Mark contains the descriptive term “Mike” which further calls into question whether such common law rights to “Magic Mike” even existed in 2012; and for common law marks that are comprised solely of descriptive terms which are not inherently distinctive there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
Respondent argues that the first element of the Policy functions primarily as a standing requirement and does not equate to success on the merits of a UDRP claim. In this regard he maintains that the side-by side comparison portion of the confusing similarity test is less relevant when Respondent has superior trademark rights and is seeking to protect its own customers from confusion caused by Complainant’s activity. In this regard Respondent argues that it is Complainant who started using a confusingly similar mark after Respondent, which violates Respondent’s long-standing trademark rights related to the words “Magic” and “MAGIC MEN” for live male revue shows.
Reiterating his previous arguments in response to the Complaint, Respondent argues in pertinent part his bona fide use of the Domain Name has been by offering live male revue shows using the Domain Name before Complainant had trademarks rights to “Magic Mike” or “MAGIC MIKE LIVE”. In this regard, Respondent maintains that he has common law rights to “MAGIC MEN” dating back to 2010, and a registered trademark with use dating back to 2012 that he has used in association with live male revue shows. Respondent repeats his defensive use arguments.
With regard to bad faith use and registration, Respondent argues among other things that he did not register the Domain Name to disrupt the business of a competitor because when Respondent registered the Domain Name, Complainant was not a competitor as it would not offer live male revue shows until two years after the Domain Name was registered. Further Respondent posits he did not register the Domain Name for commercial gain because no trademark rights existed in the Domain Name at the time he registered it insofar as a movie title – even if creating protection for sequels – did not translate into broad rights for all potential uses, and certainly did not create priority rights over Respondent.
6. Discussion and Findings
A. Supplemental Filing
As indicated above, the Center received Complainant’s unsolicited Supplemental Filling on April 27, 2020. Neither the Policy nor the Rules, provide for supplemental filings by either party except in a few narrow instances. The Panel has the sole discretion to determine the admissibility of the Supplemental Filing. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (denying a supplemental submission because, among other things, it did not sufficiently identify the alleged new facts and misstatements to satisfy the panel that they were indeed new facts or misstatements which required a reply).
Applying these principles to the present case, the Panel notes Complainant’s reason for filing the Supplemental Filing: “The submission by Respondent appears to be arguing an issue not presented in the UDRP, namely whether it has rights in MAGIC MEN, a mark not at issue in this proceeding, and whether there is a basis for an infringement claim as it relates to Respondent’s claimed rights in MAGIC MEN and Complainant’s rights in MAGIC MIKE.” Complainant might have been able to address these issues in its Complaint already, but especially had Respondent permitted communications with Complainant before the filing of the Complaint here. Based on Complainant’s representation and the pre-filing circumstances, the Panel has accepted and considered the Supplemental Filing and Respondent’s Comment to Complainant’s Supplemental Filing (“Respondent’s Comment”).
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, a complainant must demonstrate rights in the mark to which it asserts the disputed domain name is identical or confusingly similar. Here, Complainant has rights in the MAGIC MIKE Mark by virtue of its European Union Trademark Registration No. 17378597 that was registered on April 20, 2018. And Complainant has rights in the MAGIC MIKE LIVE Mark by virtue of European Union Trademark Registration No.17378605 (registered April 23, 2018) and U.S. Trademark Registration No. 5,312,535 (registered October 17, 2017).
That said, Respondent registered the Domain Name on February 7, 2015, before Complainant’s trademark registrations issued. Thus, in addition to its registered trademark rights, Complainant is relying on its unregistered or common law trademark rights in the MAGIC MIKE Mark. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered and unregistered marks. See, e.g., True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 1.1.1 (hereinafter, “WIPO Overview 3.0”). Respondent questions, however, whether Complainant had common law rights in the MAGIC MIKE Mark as early as 2012.
To establish unregistered or common law rights as a trademark in MAGIC MIKE, Complainant must show it acquired secondary meaning, i.e., that the public associates the asserted mark with Complainant’s goods and services. See CPP, Inc. v. Nokta Internet Technologies, WIPO Case No. D2008-0591 (holding that when relying on unregistered or common law rights in UDRP proceedings, “the Complainant must adduce sufficient evidence to demonstrate that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with the Complainant’s goods or services in a definable market”); see also WIPO Overview 3.0, section 1.3 (“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”.). Respondent argues that Complainant has provided merely conclusory statements regarding revenue generated by the movie and awards received and that it barely provides any support for the long list of factors considered by a court when determining whether a movie title has achieved secondary meaning to be recognized as a common law trademark. The Panel disagrees.
Complainant asserts that in this case, before Respondent registered the Domain Name, the Magic Mike movie had been released to commercial success and critical acclaim, and the MAGIC MIKE Mark was used in the movie, on DVDs, in advertisements and promotional materials and by third parties. Through these activities, Complainant maintains that it has established common law rights in the MAGIC MIKE Mark so as to create a lasting association in the minds of moviegoers between it and Complainant’s films and related projects. More specifically Complainant has made of record the following evidence that is dated as noted: (1) An article from Variety magazine dated April 29, 2011 announcing that a movie titled Magic Mike was in the works along with who was involved in script writing and producing it and the subject matter of the movie; (2) the Magic Mike movie which was released June 29, 2012 in the United States made upon opening USD 39,127,170 and grossed USD 113,721,571. The movie grossed internationally (Europe, Middle East, Africa, Latin America, Asia Pacific) USD 53,500,000, and its worldwide gross box office receipts were USD 167,000,000; (3) various lists, articles and interviews (New York Times, Daily News, Grantland, The New Yorker, Entertainment) by movie critics dated in the December 2012 early 2013 timeframe discussing the best movies of 2012, all including the Magic Mike movie on the lists; (4) various awards that the Magic Mike movie or actors in the movie were nominated for or won (2013 MTV Movie Awards – multiple nominations for the Magic Mike movie, as well as nominations for Best Male Performance, Best Shirtless Performance, and Best Musical Moment; 28th Independent Spirit Awards held February 23, 2013 (won for Best Supporting Male); 2012 National Society of Film Critics Awards (won for Best Supporting Actor); 2012 New York Film Critics Circle Awards (won for Best Supporting Actor); 39th People's Choice Awards held January 9, 3013 (nominated for Favorite Drama Movie, Favorite Movie Actor). The awards and related award shows were highly publicized in the 2012 to early 2013 time frame; (5) articles dated July 11, 2012, June 26, 2013, February 10, 2014, April 15, 2014, August 27, 2014, September 1, 2014, September 29, 2014, and September 30, 2014 discussing the sequel to the Magic Mike movie in its various stages of development (i.e., Magic Mike XXL); (6) the Magic Mike XXL movie was released on July 1, 2015 and its opening in the United States made USD 12,857,184, grossing USD 66,013,057. Internationally (i.e., Europe, Middle East, Africa, Latin America, Asia Pacific) the film grossed USD 51,800,000; and (7) articles dated June 28, 2012, July 19, 2013 and July 25, 2013 discussing the development of a stage musical based on the “Magic Mike” movie. Respondent has not controverted this evidence. In fact, Respondent provided his own “Timeline of Relevant Events” in which he acknowledges significant activities related to the use of the MAGIC MIKE Mark before Respondent registered the Domain Name, namely: April 29, 2011/Press Report about upcoming Magic Mike film inspired by Channing Tatum’s experiences as a stripper; June 24, 2012 Magic Mike movie premieres at Los Angeles Film Festival; June 28, 2012/Article regarding planned “Magic Mike: The Musical”; and June 29, 2012/Magic Mike movie premiers worldwide. By virtue of the dated evidence made of record and summarized above, the Panel finds Complainant has demonstrated acquired distinctiveness sufficient to establish unregistered or common law trademark rights in the MAGIC MIKE Mark before Respondent registered the Domain Name.
Respondent insists that it has rights in MAGIC MEN for private male revue performances beginning in 2010 that predate any common law rights Complainant may have in the MAGIC MIKE Mark. It bears noting that the date of first use and first use in commerce Respondent provided to the U.S. Trademark Office to obtain its federal registration for the MAGIC MEN mark was July 15, 2012, not 2010. In any event, Respondent’s alleged common law rights in a different mark (MAGIC MEN) has no bearing here regarding whether and when Complainant acquired its rights in the MAGIC MIKE Mark, which is the mark at issue here.
Respondent further insists that even if Complainant has the requisite common law rights in the MAGIC MIKE Mark, the case here must fail because Complainant had not developed rights to that Mark in association with live exotic male revue shows in 2012 before Respondent registered the Domain Name. This argument misses the mark insofar as for purposes of the Policy, how Complainant was using the MAGIC MIKE Mark before Respondent registered the Domain Name is inconsequential. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367 (“Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue.”); see also Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 (“it is appropriate to assess whether the Domain Names are confusingly similar to the Complainant’s mark on the basis of a comparison between the names and mark, without considering whether the Domain Names are or could be used in a way which avoids or might avoid confusion”).
As prior panels have recognized, incorporating a trademark in its entirety in a domain name is generally sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark for purposes of the Policy. Insofar as the Domain Name <magicmikelive.com> incorporates verbatim the MAGIC MIKE Mark in which Complainant has established rights, the Panel finds the Domain Name is at least confusingly similar to that Mark. See WIPO Overview 3.0, section 1.7 (The test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”). Adding the word “live” and the gTLD “.com” after the MAGIC MIKE Mark does not prevent a finding of confusion similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (holding that it is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks); see also section 1.8 of the WIPO Overview 3.0 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). Here, the addition of “live” suggests it is the live version of the Magic Mike film experience and does not prevent a finding of confusing similarity.
When comparing a disputed domain name and a trademark, the addition of the “.com” suffix may be disregarded for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
It is uncontroverted that Complainant neither has a relationship or association with Respondent nor has it ever authorized Respondent to use the MAGIC MIKE Mark, or any mark confusingly similar thereto, in connection with any goods or services. Furthermore, Claimant maintains there is no evidence of record that Respondent is or has ever been known by the Domain Name, noting Respondent uses the name Magic Men Live for its services including in its domain name <magicmenlive.com>. Of further note is that Respondent is not associated with any business incorporating the MAGIC MIKE Mark or MAGIC MIKE LIVE Mark.
Claimant also argues that Respondent has been using the confusingly similar Domain Name to redirect the public to a website that refers to and clearly imitates Complainant’s productions (e.g., similar costumes and poses) and through its use of the Domain Name and the associated fame and goodwill associated with the MAGIC MIKE Mark, Respondent is trading on Complainant’s rights for its own commercial gain – to benefit a performance that directly competes with Complainant’s live productions around the world. Moreover, Complainant argues that because of the appearance of Respondent’s website and its use and clear allusions to Complainant’s productions, the public is inevitably going to mistakenly believe that an affiliation of some sort exists between Complainant and Respondent or that Complainant endorses the company or the services advertised on the site.
Because Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, the burden shifts to Respondent to allege specific facts establishing rights or legitimate interests. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
According to a declaration filed in this matter by Mr. Myles Hass, the owner and sole managing member of Respondent Premier Events Entertainment, Respondent is a Michigan limited liability company formed on July 27, 2010. Since its inception, Respondent has been referring to itself and its male dancers as the “Magic Men”. According to Mr. Hass, Respondent previously operated from the website <premiergentlemen.com> but it currently operates from the website <magicmenlive.com>, which it registered on February 7, 2015 (the same day it registered the Domain Name). Thus, Respondent has confirmed that it has not been commonly known by the Domain Name. Furthermore, before Respondent received notice of this dispute it was not making use of the Domain Name in connection with a bona fide offering of services, rather: (1) it was providing “live exotic male entertainment, revues, and dance performances” under the moniker “Magic Men”, not MAGIC MIKE or MAGIC MIKE LIVE; and (2) the use of the Domain Name is infringing, not bona fide.
Respondent claims prior rights in the Domain Name because it registered and used the Domain Name before Complainant used “Magic Mike” in connection with live exotic male entertainment shows. This argument is of no avail to Respondent because any rights it has is in “Magic Men” not MAGIC MIKE. Moreover, as determined above, Complainant has established for purposes here rights in the MAGIC MIKE Mark that predate the registration of the Domain Name thus, Respondent is infringing Complainant’s rights in the MAGIC MIKE Mark regardless of how Complainant has been using that Mark (e.g., for movies, Broadway show, other live shows).
Respondent also maintains that it registered the Domain Name for defensive purposes – to protect its registered trademark rights to “MAGIC MEN” and its “Magic Men Live” show. The Panel finds this claim is not supported here. Complainant points out that defensive domain name registrations generally are the result of a practice of registering many domain names, often across multiple TLDs, in varied grammatical formats of the mark owned by the registering party, including domain names consisting of common misspellings and typographical errors associated with the mark of the registering party; singular and plural versions of the mark; and the mark in combination with pejorative terms. According to Complainant, the primary goal is to protect trademarks from abuse such as cybersquatting citing Shoeby Franchise B.V. v. Shoebuy.com, Inc. / SHOEBUY.COM, WIPO Case No. D2010-2142, which Respondent also relies upon. In that case the Panel found the respondent registered the domain name <shoeby.com> in 1999 as part of a policy of protecting itself against cybersquatters by the defensive registration of a large number of domain names similar to its own domain name (<shoebuy.com>) which might be used (if registered by others) to divert its customers or otherwise to damage its business. Id. The Panel further found that the respondent directed the domain name to its website at “www.shoebuy.com” through which it has carried on a business of selling shoes since 1999. Here, Respondent has not registered a Domain Name that is some grammatical format (e.g., typo, misspelling, formative) of “Magic Men”. The Domain Name consists of an entirely different mark and, indeed, a mark owned by Complainant. And unlike the Shoeby case, there is no evidence showing Respondent registered the Domain Name and other domain names as a policy of protecting its MAGIC MEN Mark early on against cybersquatters. Respondent registered the Domain Name five years after it claims to have begun using the MAGIC MEN Mark, aware of Complainant’s Magic Mike movie, to divert Internet users to its website where it sells tickets for a male strip show akin to Complainant’s live male strip show.
Complainant put forth a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name that Respondent has failed to rebut. For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Respondent registered the Domain Name on February 7, 2015 well after Complainant had established rights in the MAGIC MIKE Mark. Given (1) the well-publicized use of the MAGIC MIKE Mark around the world to promote the Magic Mike movie about male strippers; (2) Respondent’s incorporation of the MAGIC MIKE Mark in its entirety in the Domain Name; (3) Respondent’s lack of rights or legitimate interests in the MAGIC MIKE Mark as detailed above; (4) Respondent’s use of the MAGIC MIKE Mark on a website promoting male strippers; and (5) Mr. Hass, Respondent’s owner and sole managing member, acknowledges in the declaration he submitted in this matter that he was aware of the Magic Mike movie at the time he registered the Domain Name. For all of these reasons the Panel finds Respondent registered the Domain Name in bad faith.
With regard to bad faith use, Respondent is using a confusingly similar Domain Name <magicmikelive.com> to host a site that advertises and sells tickets for a touring male strip show (Magic Men Live) that is akin to Complainant’s Magic Mike movies, and the Magic Mike Live male strip shows (derived from the Magic Mike movies) that Complainant is currently producing around the world. Indeed, on Respondent’s website associated with the Domain Name the male strippers reflect characters that overlap in theme, have similar costumes, and use similar poses to those characters depicted on advertising for the Magic Mike movies and Complainant’s touring show. The look and feel of at least one prominent page on Respondent’s website is very similar to one of the pages on Complainant’s website advertising its touring male strip show. Based on the evidence of record the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MAGIC MIKE Mark as to the source, sponsorship, affiliation or endorsement of such site and the services advertised on such site, within the meaning of the Policy.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <magicmikelive.com> be transferred to Complainant.
Harrie R. Samaras
Date: June 12, 2020
1 As indicated by the decision and reasoning above, Complainant raised here a dispute that falls within the ambit of the Policy. In response, Respondent has raised issues that are not suitable for resolution in a UDRP proceeding.