WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miles-Bramwell Executive Services Limited v. Garth Piesse

Case No. D2017-0431

1. The Parties

The Complainant is Miles-Bramwell Executive Services Limited of Alfreton, Derbyshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Swindell & Pearson, UK.

The Respondent is Garth Piesse of Palmerston North, Manawatu, New Zealand, represented by Adlex Solicitors, UK.

2. The Domain Name and Registrar

The disputed domain name < bodymagic.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2017. On March 24, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to April 8, 2017. The Response was filed with the Center April 5, 2017.

The Center appointed Warwick A. Rothnie, Tony Willoughby and The Hon Neil Brown Q.C. as panelists in this matter on May 8, 2017. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant is a company incorporated in the UK. According to the Complaint, the Complainant has been trading under the name Slimming World since 1969. Its operations have also extended into the United States of America (“United States”). It has registered the trademark BODY MAGIC in a number of jurisdictions:

- European Union Trademark No. 003556693, which has been registered from March 16, 2005 in respect of a wide range of goods and services in International Classes 5, 7, 8, 9, 10, 11, 16, 25, 28, 29, 30, 32, 41 and 44;

- European Union Trademark No. 009207937, which has been registered from March 6, 2011 in respect of a wide range of goods and services in International Classes 5, 7, 8, 9, 10, 11, 16, 25, 28, 29, 30, 32, 41 and 44;

- European Union Trademark No. 010615771, which has been registered from September 15, 2012 in respect of a wide range of goods and services in International Classes 5, 7, 8, 9, 10, 11, 16, 25, 28, 29, 30, 32, 41 and 44;

- United States Trademark No. 3506836, which has been registered from September 30, 2008 in respect of a range of goods and services in International Classes 16, 41 and 44;

- Australian Trademark No. 1039789, which has been registered from January 30, 2005 in respect of a range of goods and services in International Classes 16, 41 and 44;

- Canadian Trademark No. TMA734765, which has been registered since January 31, 2005 in relation to a range of goods and services corresponding to those in the United States and Australian registrations.

Annex 9 to the Complaint contains a print-out from the Complainant’s website at “www.slimmingworld.co.uk” showing how the Complainant uses its BODY MAGIC trademark: it is a “unique activity program” to help people engage in “a more active lifestyle”. There also appears to be a book, or book “pack” associated with the program.

The Complainant also points out that it’s service is the first four listings returned by a search of the expression “body magic” in the Google search engine. As the Respondent points out, other links on the print out point to other businesses using the expression in connection with a line of “shape wear” clothing.

The Complainant relies on the evidence of its use and the high rankings achieved in a Google search to claim its trademark is well-known.

The Respondent is based in New Zealand. He has a business in buying and selling domain names.

On October 1, 2015, he purchased the right to the domain name <bodymagic.co.uk>. At that time, he already had a portfolio of 35 domain names based on “body” plus some other descriptive term and six domain names based on some descriptive term plus “magic” which he had been amassing since 2006. Subsequently, the disputed domain name also became available for purchase in March 2016 and on March 23, 2016 the Respondent acquired it. The Respondent has also acquired a further 34 “body +” domain names and six other domain names in which “magic” is the suffix.

In July 2016, the Complainant (through its patent agents) approached the Respondent to inquire if the disputed domain name was for sale. After the Respondent replied seeking a price of USD 35,000, the Complainant’s patent agents complained that the price was too high, revealed the identity of the Complainant and its registered trademarks and warned that the Complainant would pursue the Respondent under the Policy if a suitable price was not agreed.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

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

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Disregarding the generic Top-Level component as a functional component of the domain naming system, the disputed domain name is identical to the Complainant’s proven trademarks.

B. Registered and Used in Bad Faith

In the circumstances of this case, it is appropriate to consider the third requirement under the Policy next.

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The Complainant points out that the disputed domain name is not in use. The only use made of it, and intended to be made, by the Respondent is to offer it for sale for a profit. As noted in section 4 above, the Complainant asserts that its BODY MAGIC trademark is well-known and contends that the Respondent must have been aware of the Complainant’s trademark when acquiring the disputed domain name for purposes of reselling it.

The Respondent denies prior knowledge of the Complainant or its trademark. He points to his long established strategy of registering domain names which include “body” and some other descriptive or generic term which he hopes will be appealing to a wide range of businesses. When the domain name <bodymagic.co.uk> came on to the market, he acquired it as part of that strategy. The Respondent points out that the Complainant has provided only limited evidence of use of its trademark. On the evidence submitted, the Complainant appears to use the trademark only in the UK in connection with a relatively minor service offered as part of a much larger, well-established business. Further, the Respondent has also provided evidence which shows that a Google search of the expression “body magic” conducted in September 2015 (when the Respondent was preparing to buy the domain name <bodymagic.co.uk>) through “www.google.co.nz” did not disclose the Complainant or its BODY MAGIC line. It did disclose, however, numerous other businesses, unassociated with the Complainant, who use the expression.

In these circumstances, the Panel does not have a sufficient basis to disbelieve the Respondent’s denial of awareness of the Complainant or its trademark. Accordingly, the Panel finds that the Complainant has not proved that the Respondent registered the disputed domain name in bad faith. The Complaint, therefore, must fail.

C. Rights or Legitimate Interests

As the Complaint cannot succeed, no purpose would be served by addressing the second issue under the Policy.

D. Reverse Domain Name Hijacking

The Respondent seeks a ruling that the Complainant has engaged in Reverse Domain Name Hijacking.

Paragraph 15(e) of the Rules provides, in part:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

And paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

The Respondent argues that Reverse Domain Name Hijacking should be found because the Complainant has failed by a large margin and should have known it could not succeed. Secondly, the Respondent says the Complainant lacked candour in failing to disclose the pre-action correspondence. Thirdly, the Respondent says the failure of the Complainant to disclose its trademark “without giving the slightest hint that it possessed any kind of legal claim relating to the disputed domain name” when it first approached the Respondent is a “classic ‘Plan B’ case” and shows that the Complaint was motivated by a highly improper purpose.

The Panel has given careful consideration to these arguments, but on balance is of the view that it is not appropriate to make a finding of Reverse Domain Name Hijacking. On the one hand, it would have been wiser for the Complainant to have exhibited the correspondence between the parties (rather than merely to have referred to it) so that all of the facts were before the Panel from the beginning. On the other hand, the totality of the circumstances suggests that although its case was weak, the Complainant was motivated primarily by a desire to defend its trademarks in its own way, which it was perfectly entitled to do, rather than by an intention “to harass the domain name holder” or to use the Policy “in bad faith”, which are the tests the Panel is obliged to apply, having regard to the above provisions of the Rules. Accordingly, the Panel does not find that the Complainant has engaged in Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A Rothnie
Presiding Panelist

Tony Willoughby
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: May 19, 2017