WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donald J. Trump v. eStore of New York
Case No. D2007-0119
1. The Parties
The Complainant is Donald J. Trump, New York, NY, United States of America, represented by Proskauer Rose, LLP, United States of America.
The Respondent is eStore of Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <trumpfurniture.com> (the “Disputed Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2007. On February 1, 2007, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 1, 2007, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 2, 2007.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 16, 2007. 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
Complainant states that he (sometimes referred herein as “Mr. Trump”) is “a world famous real estate developer and business executive” who “is famous for his endeavors not only in real estate, but in sports, gaming, entertainment, and recreation.” Complainant states that he is “continually expanding his business endeavors” and “has developed significant goodwill and trademark significance” in his name. Complainant states that he filed on May 6, 2002, an intent-to-use trademark application, Serial No. 76/404,179, in the United States Patent and Trademark Office for the mark TRUMP FURNITURE in connection with a variety of home furniture and furnishings. Complainant states that he “has imminent plans to produce a line of furniture under the mark TRUMP FURNITURE.” Complainant states that Respondent is using the Disputed Domain Name in connection with a website that sells furniture.
The Disputed Domain Name was registered on February 9, 2005.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name “is identical in substantive part to Complainant’s pending trademark application S.N. 76/404,179. Also the dominant portion of the domain name, TRUMP, is identical to Mr. Trumps’s well-known TRUMP Mark that identifies a wide range of products and services. Respondent has essentially taken the well-known TRUMP mark and added the descriptive word FURNITURE – rendering the Domain Name confusingly similar to Mr. Trump’s well-known TRUMP mark and identical to Mr. Trump’s pending trademark application for TRUMP FURNITURE.”
- “Respondent has no rights or legitimate interests in the Domain Name. Given Mr. Trump’s allowed trademark application with a filing date of May 6, 2002, given that a registration will likely issue shortly after the product line launches this summer, and given the strength and renown of the TRUMP mark on a wide variety of goods and services, Respondent can have no rights or legitimate interests in the Domain Name.”
- “Respondent is deliberately using the TRUMP name and trademark to attract people to his web site and to his on-line furniture and store business” although Respondent is not doing business under the name TRUMP FURNITURE. “The only purpose Respondent can have for using the Domain Name is to benefit from any Internet traffic… through people looking for products originating with Mr. Trump.” As a result, Respondent’s use of the Disputed Domain Name creates a likelihood of confusion and initial-interest confusion.” Further, “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate” (internal punctuation omitted).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second or third elements of the Policy.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that “[its] domain name is identical or confusingly similar to a trademark or service mark in which [it] has rights.”
As counsel for Complainant notes, a previous decision under the Policy found that “[t]he distinctive quality of the TRUMP mark, as evidenced by registration and use, is beyond question.” Donald J. Trump v. Daniel Maciel, WIPO Case No. D2005-0918. And, given Complainant’s fame and widespread use of the TRUMP name as described in the Complaint, it seems clear that Complainant has likely established common-law trademark rights in the TRUMP mark. Further, although counsel for Complainant failed to cite any federal trademark registrations, the Panel’s own research reveals that Complainant has obtained numerous federal trademark registrations that consist of or include the mark TRUMP in the United States, owned by Complainant.
However, Complainant has not proven that it has established any trademark rights in the mark TRUMP FURNITURE. Rather, Complainant cites only a pending federal application for the trademark TRUMP FURNITURE in the United States, Serial No. 76/404,179. This application was filed under Section 1(b) of the U.S. Lanham Act, which applies to “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce.” 15 U.S.C. § 1051(b) (emphasis added). In other words, an applicant for such a mark not only lacks a federal registration but also represents (until it has filed a statement of use or an amendment to allege use with the United States Patent and Trademark Office) that it has not used the mark that is the subject of the application. “[T]he application merely establish[es] that, on the date that [it was] filed,… applicant intended to use the mark as a trademark. The [application] do[es] not, standing alone, evidence use of a mark.” Viva Group, Inc. v. Peter Best, Jr., WIPO Case No. D2006-1151. See also Friends of Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0451 (denying complaint where “[n]o document showing actual use of the alleged mark is in the record”); and PC Mall, Inc. v. Pygmy Computer Systems, Inc, WIPO Case No. D2004-0437 (“Complainant may not rely on the constructive use date of its [intent-to-use] application”).
Accordingly, it would be improper for the Panel to compare the relevant portion of the Disputed Domain Name (i.e., “trumpfurniture”) to the mark TRUMP FURNITURE for purposes of ascertaining the existence of “confusing similar[ity]” under Paragraph 4(a)(i) of the Policy, because Complainant has not shown that it has rights in the mark TRUMP FURNITURE.
Rather, the Panel will proceed to compare the relevant portion of the Disputed Domain Name (i.e., “trumpfurniture”) to the only mark in which Complainant has shown in the Complaint that it has rights (i.e., TRUMP). There are numerous cases under the Policy in which a domain name containing a trademark plus another word has been found confusingly similar to a trademark in which a complainant has rights. See, e.g., Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC, WIPO Case No. D2007-0034 (“adding an additional word or phrase when the dominant feature of the disputed domain names is complainant’s mark does not obviate any confusion”). However, the Panel is not convinced that a domain name containing a trademark plus another word is necessarily confusingly similar to a trademark in which a complainant has rights, particularly where counsel for Complainant states only, without substantive argument or citation to any relevant decisions under the Policy, that “the dominant portion of the domain name, TRUMP, is identical to Mr. Trump’s well-known TRUMP Mark that identifies a wide range of products and services.”
Counsel for Complainant states that Mr. Trump is “famous for his endeavors not only in real estate, but in sports, gaming, entertainment, and recreation” – endeavors that are not obviously related to furniture. This distinction is important here because “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748). Here, the nature of the “other word” – i.e., “furniture” – is not obviously related to the Complainant’s current endeavors as described in the complaint. This case is unlike Donald J. Trump v. Daniel Maciel, WIPO Case No. D2005-0918, in which the nature of the other words – “lending” and “loans”, in the domain names <trumplending.com> and <trumploans.com> – were clearly related to Mr. Trump’s real estate endeavors.
The nature of the “other word” is particularly important where the trademark is not exclusive to the complainant. In this case, the Panel observes that the TRUMP trademark is also an English word with multiple meanings (including, for example, to “produce a sound as if from a trumpet”; “playing card in the suit that has been declared trumps”; “outdo”; “proclaim or announce with or as if with a fanfare”) and also a part of trademarks owned by parties other than Complainant (including U.S. Reg. Nos. 2,240,180 for TRUMP; 2,010,785 for TRUMP; and 1,083,939 for TRUMP).
In light of the above, the Panel is not persuaded on the record before it that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. The Panel makes no judgment on whether Complainant would prevail under a subsequent complaint under the Policy after its pending intent-to-use trademark application for TRUMP FURNITURE matures into a registration, or whether such a subsequent complaint would be proper.
B. Rights or Legitimate Interests
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.
C. Registered and Used in Bad Faith
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Dated: March 26, 2007