Timing proves key: amateur US magician trumps Australian business in UDRP registration complaint

• Registration predated trademark rights by over 10 years, meaning bad faith could not be established
• WIPO panel finds that passive holding of a domain name is not bad faith without evidence of trademark reputation or distinctiveness
• Complaint was deemed reverse domain name hijacking because the complainant should have known it could not succeed

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before WIPO, a panel denied a UDRP complaint brought in relation to the disputed domain name ‘magicmen.com’ owing to the absence of evidence that the respondent registered and used the disputed domain name in bad faith. A key factor leading to this decision was the panel’s finding that the respondent’s registration of the domain name predated the complainant’s trademark rights by more than 10 years.

The complainant, Magic Men Holdings Pty Ltd, was an Australian-based company and the owner of the trademark MAGIC MEN in Australia, registered in 2014, although having effect from the date of filing in 2013. It provided no evidence as to its business activity.

The respondent was an individual based in the United States who claimed to have registered the domain name in April 2002 in connection with a personal magic hobby, with a view to using it for a website that would promote a small amateur magic act. The respondent provided what the panel deemed to be ‘a remarkable collection of evidence regarding its involvement in the magic hobby from the late 1990s’, including a photograph of three magic newsletters and a receipt from a magic supplies shop.

Although the disputed domain name was registered on 2 April 2002, there was no evidence of it ever having resolved to an active website.

Before filing the complaint on 6 August 2025, the complainant attempted to purchase the domain name via a domain name broker, on or around 24 July 2025. The respondent did not reply.

To succeed under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the policy, namely:

(i) [the disputed] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name; and

(iii) [the disputed] domain name has been registered and is being used in bad faith.

The complainant argued that the disputed domain name was identical to its trademark. The complainant further contended that the domain name was registered after the registration of its trademark and that it was passively held by the respondent, notably for the purpose of selling, renting or transferring it for valuable consideration. According to the complainant, the passive holding had previously been recognised as bad faith under the UDRP. In its supplemental filings, the complainant further insisted that the absence of archived website content, coupled with the lack of evidence of an alleged magic act, did not amount to a bona fide offering of goods and services. The complainant also asserted, without evidence, that its trademark was distinctive and had acquired a reputation in the entertainment industry.

The respondent argued that it had owned the domain name continuously since its registration on 6 April 2002, and that it did so with a view to creating a website to promote performances of a small amateur magic act the respondent shared with a friend. The respondent further submitted that the complainant’s business was incorporated many years after the registration of the domain name, making it impossible for the respondent to have registered the domain name to target the complainant’s business. Additionally, the respondent provided dated proof of its personal involvement in magic as a hobby to justify its choice of words in the domain name.

As far as the first element was concerned, the panel agreed that the complainant had established rights in the trademark MAGIC MEN, and found that the domain name <magicmen.com> was identical to the complainant’s trademark. The complainant therefore satisfied the requirements of paragraph 4(a)(i) of the policy. The panel noted that the first element of the policy does not require a complainant’s trademark rights to predate the registration of the domain name, although this may be relevant under the second and third elements.

The panel declined to make a finding under the second element, owing to its findings under the third element.

In relation to the third element, the panel accepted the evidence provided by the respondent documenting its long-standing interest in magic and its argument that it registered the domain name in pursuit of that same hobby. The panel was satisfied on the evidence that it was reasonable to infer that the domain name was registered by the respondent in 2002, insofar as the complainant had failed to provide any evidence to the contrary (ie, third-party use or historic who.is entries). In the panel’s view, the complainant’s trademark rights postdated the registration of the domain name and there were no exceptional circumstances in the present case relating to domain names having been registered in anticipation of trademark rights. In view of the lack of bad faith registration, the question of bad faith use was moot, given the conjunctive requirement of bad faith registration and use under the UDRP.

However, for the sake of completeness, the panel also dismissed the complainant’s argument that the domain name was used in bad faith under the doctrine of passive holding, given the lack of evidence provided by the complainant as to the degree of distinctiveness or reputation of its trademark and in light of the submission of the response by the respondent. The panel further found that the respondent’s contemplated good faith use of the domain name was entirely plausible. The complaint was therefore denied.

Finally, based on its previous findings, the WIPO panel found that the complaint had been brought in an attempt at reverse domain name hijacking (RDNH), defined in the UDRP Rules as ‘using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name’. The panel found that the complainant knew, or should have known, that it could not succeed under the UDRP as the respondent could not have anticipated the complainant’s rights when registering the domain name in 2002, long before the complainant was established. The panel concluded that such a case should never have been brought under the policy and acknowledged the difficulties the respondent likely had faced in collecting evidence from the late 1990s.

Comment

This case highlights that timing matters. Seeking to establish that a disputed domain name was registered in bad faith by relying on trademark rights accrued long after the registration of the domain name and when the complainant itself was established long after the registration of the disputed domain name is rarely likely to succeed under the UDRP. Finally, it is worth noting that passive holding of a domain name does not inherently constitute bad faith, in particular in the absence of clear evidence of reputation; conclusory allegations are not sufficient.