MAGIC BRA Can’t Find Support With UDRP Panel

Let this be another lesson to domain dispute attorneys, simply having a U.S. trademark registration is not always enough. In the recent domain name dispute of A & H Sportswear Co., Inc. v. Hu Yanlin (WIPO D2010-0476, May 12, 2010) a single member Panel was faced with an interesting international dispute over the domain www.magicbra.com. Complainant is the manufacturer and designer of women’s apparel. Complainant is the owner of two trademark registrations for MAGIC BRA, 2756417 and 3335611 dating from as early as 1994. The Respondent filed a response and raised numerous objections. Some of Respondent noteworthy arguments include the following:

[T]he 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….Complainant has no registered trade mark rights in China and to his knowledge does not sell its MAGIC BRA products in that country….[E]ven 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…..

Interestingly when on looks at the USPTO database, there is another company who has two other trademark registrations, MAGIC BRA COLLECTION SWIM (Reg. No. 3552163) and MAGIC BRA COLLECTION (Reg. No. 3593248). The owner of those marks appears to maintain a website at www.magicbraswim.com. As Respondent noted, it does not appear as though Complainant is operating a website of their own.  The Panel agreed with the Respondent noting as follows:

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.

The Panel accepted Respondent’s assertions that it did not know about Complainant before registering the domain. Additionally, the Panel noted that since the disputed domain was written entirely in Chinese, and Complainant had failed to provide any evidence of registration or use in China, it would be unlikely to compete with Complainant. The Panel recognized that it was being used for a prking site, it was unclear to the Panel if that domain had been parked since its registration and if so, why Complainant waited seven years to complain. The Panel found that the two operated in separate geographical markets and found Complainant failed to submit evidence of bad faith. For all these reasons, the Panel DENIED the request for transfer.

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