ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Magic Men Holdings Pty Ltd v. Myles Hass Case No. D2025-3340 1. The Parties The Complainant is Magic Men Holdings Pty Ltd, Australia, self-represented by its director Carlos Fang, Australia. The Respondent is Myles Hass, United States of America (“US”). 2. The Domain Name and Registrar The disputed domain name (the “Disputed 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 August 20, 2025. On August 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 25, 2025 The Center verified that the Complaint together with the amended 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 August 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2025. The Response was filed with the Center on September 18, 2025.
page 2 The Center appointed Nick J. Gardner as the sole panelist in this matter on September 29, 2025. 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. 4. Factual Background The Complainant is an Australian company operating live entertainment shows under the trademark MAGIC MEN. The shows appear to be adult revues (or colloquially, male strippers). The Complainant was incorporated on May 5, 2014. The Complainant owns Australian Trademark Registration No. 1557693 for MAGIC MEN, filed on May 17, 2013, and registered on January 7, 2014 for “Adult entertainment services and performances, namely male revue shows, male strippers, topless waiters, hens party venue hire and hen's party event management”. This trademark is referred to as the “Australian Magic Men trademark” in this Decision. It appears this trademark was originally applied for prior to the Complainant being incorporated and was subsequently assigned to the Complainant. The Respondent is an individual who owns a US-based entertainment company that has in the past operated in the US similar live performance events to those provided by the Complainant in Australia. The Respondent holds or held trademark registrations for MAGIC MEN and MAGIC MEN LIVE in the US (Serial No. 86188718, registered on December 2, 2014), Canada (Registration No. 1753889, registered on February 2, 2017), and the United Kingdom (Registration No. UK00914809594, registered on September 13, 2016). The US trademark registration has expired and was not renewed. The Disputed Domain Name was registered on February 7, 2015. It does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends as follows. The Disputed Domain Name is confusingly similar to its MAGIC MEN trademark, incorporating the mark entirely with only the addition of the descriptive word “live.” The Respondent has no rights or legitimate interests in the Disputed Domain Name, as evidenced by the fact that the Disputed Domain Name has been inactive for over 6 years and the Respondent's U.S. trademark was cancelled for non-use. The Disputed Domain Name was registered and is being used in bad faith under the passive holding doctrine, blocking the Complainant's legitimate online presence. B. Respondent The Respondent contends as follows. The Respondent held valid trademark rights for MAGIC MEN in the US, Canada, and the United Kingdom at the time the Disputed Domain Name was registered. The Respondent has used the MAGIC MEN trademark in commerce since July 2012, predating the Complainant's trademark registration (which is in any case limited to Australia). The Respondent produces evidence supporting this claim – for example an events listing page showing scheduled performances of the
page 3 Magic Men male revue with the earliest dates being in July 2012. He also produces Facebook entries dated in July 2012 showing photographs of the revue and a brochure for a performance at Larry Flynt’s Hustler Club in August 2012. The Respondent says he has rights and legitimate interests because the Disputed Domain Name matches the Respondent's live event branding “Magic Men Live”. The evidence shows promotional use dating from July 2012 and the Respondent built a significant online presence with over 1 million social media followers by December 2015. The Complainant only began public events in February 2016, nearly 4 years after the Respondent commenced his activities. The Disputed Domain Name was not registered in bad faith, as the Respondent had valid trademark rights and operated exclusively in the US, while the Complainant operated only in Australia. The Respondent requests a finding of Reverse Domain Name Hijacking, noting that the Complainant previously contacted the Respondent directly to inquire about purchasing the Disputed Domain Name and related digital assets. 6. Discussion and Findings To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the Australian Magic Men trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). It is also established that the addition of a descriptive term (such as here “live”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
page 4 B and C: Rights or Legitimate Interests; and Registered and Used in Bad Faith It is convenient on the facts of this case to consider these two elements together. The key point here is that on the evidence before the Panel the Respondent was – at least as between the Parties in this case – the first to use the name Magic Men in relation to male revue shows. He did so with effect from at least July 2012. The evidence shows that by December 2015, the Respondent’s revue had already toured nationally within the US and established a significant online presence with over 1 million social media followers and millions of online views. The Complainant was not formed until May 2014, and its evidence is “The Complainant has continuously used the “Magic Men” brand in commerce since its incorporation”. The Respondent says the Complainant’s first public performance was not until February 6, 2016. The Panel has not seen any evidence supporting an earlier date than this, but it does not matter – even if the Complainant did start performances in May 2014 these still post-date the Respondent’s activities On the above facts the Respondent has established it has a legitimate interest in the Disputed Domain Name – see Policy paragraph 4(c): “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” Further the facts do not establish any bad faith registration or use. It is not bad faith to register and use a domain name in support of a business interest which predates the registration of the trademark relied upon. Further the parties operate in entirely separate geographic markets (Australia and US) with no overlap and the Complainant’s trademark rights are confined to Australia. There is no reason in those circumstances why the Respondent should not have registered the Disputed Domain Name for use in connection with his pre-existing business. The Panel finds that the Respondent has a legitimate interest in the Disputed Domain Name, and the Complainant has failed to establish that the Disputed Domain Name was registered and is being used in bad faith. D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides that, 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 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. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16. The Respondent says that the Complainant has reached out to the Respondent directly to inquire about the sale of the domain and other digital assets. He provides various communications in this regard (see below). He says this proves that the Complainant is well aware of the Respondent’s legitimate trademark rights at the time of the registration of the Disputed Domain Name and that the Complainant is well aware of the strong reputation and value that the Respondent has created with the MAGIC MEN LIVE branding, social media accounts and domain name. The Respondent says this proves that the Complainant has been deliberately dishonest in this complaint in an attempt to hijack the Respondent’s domain name and all things associated with the domain’s email addresses including; email lists, business contacts and social media accounts. The correspondence the Respondent relies on is as follows. On March 9, 2023, Mr. Fang sent an Instagram message to the Respondent which says “Hey Miles quick one – are you still running magic men live - would love to have a chat about the website etc if your (sic) interested in selling it”.
page 5 On January 27, 2024, Mr. Fang sends an Instagram message to the Respondent which says “Would you be interested in having a zoom chat with Will and myself?” On February 8, 2024, the Respondent replies saying “How's it going brother. You caught me during a hectic period so apologies for the late response. Would be happy to connect at some point in the future when I get a few things off my plate”. Mr. Fang replies the same day saying “Sounds good man. We are coming over in August - would love to invite you out to a show and connect properly man... meet you in person and have you as a guest. Do you have any interest in selling the magic men website and the fb/ig? The Respondent also relies on a communication he received dated January 2023 from a broker which says “We have a client interested in purchasing Magic Men Live, the company and associated digital assets. They've asked us to reach out to you to make an offer. Considering the business is no longer active and the trademark is about to expire, would you be open to accepting a USD 50,000 cash offer to acquire the company?”. There is no evidence of any reply to this offer. The Panel cannot tell whether or not the unnamed client is the Complainant so does not take any account of this item. The Panel has clearly not been provided with the entire picture as to the relationship between the Complainant and the Respondent. They manifestly know each other, appear to be on cordial terms and have for a number of years coexisted running effectively identical businesses under virtually the same name but in geographically separate areas – Australia and the US. Use of virtually identical names may well lead to some confusion on line but given the businesses are a form of live entertainment it is not likely that there will be any diversion of one business’ customers to the other business. It appears the Respondent in recent years has let his business lapse but still retains the assets of that business including the Disputed Domain Name. It appears that the Respondent was the first to start this business (see discussion above) and clearly at some stage between 2012 and March 2023 the Complainant and the Respondent have become aware of each other and struck up some sort of contact, the details of which are not known to the Panel. The Panel does not see how the Complainant could have certified “that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate” without disclosing fully this background including the communications the Respondent has produced. The Panel considers that for these reasons the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.7. DecisionFor the foregoing reasons, the Complaint is denied. /Nick J. Gardner/ Nick J. Gardner Sole Panelist Date: October 13, 2025
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