WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.
Case No. D2010-1404
1. The Parties
Complainant is Donald J. Trump, c/o The Trump Organization, New York, New York of United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Mediaking LLC/ d/b/a Mediaking Corporation and Aaftek Domain Corp., Las Vegas, Nevada of United States of America internally represented.
2. The Domain Name and Registrar
The disputed domain name <trumplasvegas.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2010. On August 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 20, 2010, eNom 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 and contact information in the Complaint. The Center sent an email communication to Complainant on August 26, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 26, 2010. In response to a notification by the Center that the Amended Complaint was administratively deficient, Complainant filed an amended Complaint on August 27, 2010. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010. The Response was filed with the Center on September 19, 2010.1
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 30, 2010. 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.
By e-mail dated September 29, 2010, Complainant transmitted a request for the Panel to accept and consider a supplemental submission styled "Complainant’s Supplemental Submission in Support of UDRP Complaint". Complainant indicated that it could not have reasonably foreseen evidence put forward by Respondent in its Response. The Panel accepts Complainant's Supplemental Submission on grounds that it responds to information contained in the Response that was unforeseeable at the time Complainant submitted its Complaint.
By e-mail dated October 4, 2010, Respondent retransmitted its Response to improve its formatting and readability.
By e-mail dated October 14, 2010, the Center at the request of the Panel notified the parties that the due date for the Panel’s decision was extended to October 18, 2010, based on exceptional circumstances.
4. Factual Background
Complainant has registered the word trademark and service mark TRUMP on the Principal Register of the United States Patent and Trademark Office (USPTO), including (but not limited to) registration number 2240310, in International Class (IC) 43, covering "hotel services", claiming date of first use and first use in commerce of June 12, 1995; registration number 2413984, dated December 19, 2000, in IC 32, covering "spring water", and; registration number 3391095, dated March 4, 2008, in IC 41, covering "entertainment services, namely, ongoing unscripted television programs in the field of business, business disputes, and dispute resolution". Complainant has registered numerous "TRUMP-formative" word, and word and design, trademarks and service marks on the Principal Register, including (but not limited to) TRUMP INTERNATIONAL HOTEL & TOWER (registration number, 3316385, dated October 23, 2007, in IC 37) and TRUMP INTERNATIONAL PLAZA (registration number 2717677, dated May 20, 2003, in IC 36). Complainant asserts that it has registered the trademark TRUMP and various TRUMP-formative marks in countries outside the United States.2
Complainant uses the TRUMP trademark and service mark in connection with advertising and selling a range of goods and services in the United States, including hotel and casino services, clothing products, television productions and books. Complainant operates a number of commercial Internet websites identified by the TRUMP trademark, including those at internet addresses “www.trump.com”, “www.trumphotelcollection.com”, “www.trumpintl.com” and “www.trumpchicagohotel.com”. In 2004, three of Complainant's books were among the top-selling business books as ranked by BusinessWeek, with one of those books "TRUMP: HOW TO GET RICH", ranked number two. As of 2004, Complainant's TRUMP trademark and service mark was well-known in the United States, including in connection with the advertising and sale of hotel and casino services.
On or about July 30, 2004, Complainant formally announced plans to build the Trump International Hotel Las Vegas. As early as April 2002, Complainant had earlier initiated, and news reports had circulated concerning, plans to construct a condominium to be named Trump Tower Las Vegas.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to InterNic and Enom WhoIs reports provided by Complainant, the record of registration of the disputed domain name was created on January 2, 2004.
Respondent used the disputed domain name up until at least July 2008 to direct Internet users to a link farm parking page headed "Trumplasvegas.com", with links to various third-party websites offering hotel and other services in and around Las Vegas, Nevada, including, for example "Las Vegas Hotel and Tower", "Las Vegas Top Penthouse", "Hotels in Vegas 75% Off" and "Discount Vegas Tourism".
By FedEx and certified mail dated December 18, 2008, Complainant's General Counsel transmitted a cease-and-desist and transfer demand to Respondent, with follow-up on December 31, 2008.
As of August 2010, the disputed domain name was used to direct Internet users to a website headed "SFI". The website content indicated that individuals who joined SFI would be provided the opportunity to profit from Internet businesses run from their own homes. SFI apparently offers to sell and ship products on behalf of persons who join the network. On the website of the SFI operation, there was as of August 2010 some comparative and critical reference to an organization owned and operated by Complainant, the "Trump Network", which Complainant describes as "a marketing network whose products include … ‘highly-advanced, scientifically-proven health and wellness products …". 3
Respondent has offered to sell and transfer the disputed domain name to Complainant for $30,000, which Respondent has described as "a fair investment expense reimbursement" (Letter to Complainant of May 20, 2010 from J. Greg Peterson).
The registration agreement in effect between Respondent and eNom subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges rights in the trademark and service mark (hereinafter "trademark") TRUMP based on use in commerce in the United States and as evidenced by registration on the Principal Register of the USPTO.
Complainant argues that the disputed domain name, <trumplasvegas.com>, is confusingly similar to its trademark because it combines Complainant's well-known trademark with a geographical identifier that Internet users would expect to be associated with Complainant and its hotel, condominium and casino businesses.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant rejects Respondent’s factual assertion that it has been known by the disputed domain name since prior to its registration, and/or that it was purchased on behalf of an individual named John D. Trump. Complainant indicates that Respondent has never been authorized by Complainant to use its trademark in the disputed domain name. Complainant argues that Respondent's uses of the disputed domain name do not establish rights or legitimate interests.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant contends that Respondent's initial use in connection with a pay-per-click link farm parking page sought to take advantage of Complainant's well-known mark by creating Internet user confusion as to Complainant's sponsorship or association with the parking page, and that Complainant's subsequent use in connection with a website promoting a business directly competitive with that of Complainant is confusing to Internet users and intended to disrupt a rival. Complainant further argues that Respondent’s offer to sell and transfer the disputed domain name for $30,000 indicates that it was registered with the intent to sell it to Complainant for a price substantially in excess of Respondent’s out-of-pocket expenses.
In its supplemental submission, Complainant presented the results of investigation of the "facts" alleged by Respondent with respect to the existence of an individual named "John D. Trump" and his business activities. The results of the investigations indicate that the facts alleged by Respondent are not true.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Response transmitted by Respondent far exceeds the 5000 word limit prescribed by the WIPO Supplemental Rules. The word count of Respondent's retransmitted Response shows 15,040 words.
Rejection of the Response is warranted by its excessive length. The Panel nonetheless has read the document, but will not summarize it other than to restate Respondent’s main relatively germane arguments.
Respondent does not dispute Complainant's rights in the TRUMP trademark.
Respondent argues that the term "trump" is a common dictionary word with meanings other than those of designating Complainant and its products and services. Respondent argues that it is entitled to use the term "trump" in the disputed domain name because it is not referring to Complainant, and Respondent's use does not establish a likelihood of confusion. Respondent also argues that Complainant does not have rights in the geographic identifier "Las Vegas", and that Complainant does not have trademark rights in the combination term "TRUMP Las Vegas".
Respondent asserts that it is operating a business on behalf of an individual named "John D. Trump", and that John D. Trump has operated a business using the mark "Trumplasvegas" to identify an international business since as early as 1994.
Respondent states that it did not register the disputed domain name with the intention to sell it to Complainant, but made its offer as a legitimate basis for settling a dispute. Moreover, Respondent argues that it registered the disputed domain name before Complainant's hotel existed so that it could not have registered and used the disputed domain name to take advantage of goodwill associated with that project.
Respondent requests the Panel to reject Complainant's demand for an order for transfer, and further requests the Panel to make a finding of reverse domain name hijacking against Complainant.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of its use of the TRUMP trademark in commerce in the United States, and has provided evidence of registration of that trademark on the Principal Register of the USPTO (see Factual Background supra). Respondent has not challenged the fact of Complainant's ownership of rights in the TRUMP trademark. The Panel finds that Complainant has rights in the trademark TRUMP.
The disputed domain name adds the geographic identifier "Las Vegas" to Complainant's trademark to form <trumplasvegas.com>. The addition of the geographic identifier "Las Vegas" to the TRUMP trademark well known to be used in connection with hotel, condominium and casino properties does not serve to distinguish the trademark from the disputed domain name. Internet users would expect the combination of Complainant's well-known mark and the geographic identifier "Las Vegas" to refer to real estate properties and/or casino services provided by Complainant.4 The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark for purposes of the Policy.
The Panel determines that Complainant has demonstrated rights in the trademark TRUMP, and that the disputed domain name <trumplasvegas.com> is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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):
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent was not commonly known by the disputed domain name, was not authorized by Complainant to use its trademark in the disputed domain name, and because Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that initial use of the disputed domain name in connection with a link farm parking page that includes links to competitors of Complainant is not fair use of the disputed domain name. Complainant has further argued that Respondent's subsequent use of the disputed domain name in connection with a website offering third-party services competitive with those of Complainant does not establish rights or legitimate interests. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has argued that it has rights in the disputed domain name because it operated a business on behalf of an individual named "John D. Trump" under the name "Trumplasvegas" substantially prior to its registration of the disputed domain name. Complainant has provided substantial evidence that facts alleged by Respondent are not true, including by providing copies of property and building records from the State of Nevada, Clark County and the City of Las Vegas, that show that the person identified as John D. Trump could not have resided at the addresses Respondent specified for him. Moreover, Respondent failed to provide evidence to support its claims of usage of the disputed domain name in connection with a business prior to its registration. The evidence of Respondent alleged to support that it was commonly known by the disputed domain name is unpersuasive.
Respondent has used the name in connection with a link farm parking page advertising the services of third parties in competition with Complainant. It is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925: Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Respondent’s more recent use of the disputed domain name in connection with a website offering the services of SFI is plainly commercial, and does not constitute "fair use" of Complainant's trademark. Respondent is using Complainant's well-known trademark to attract Internet users to a website offering goods and services competitive with those of a business operated by Complainant. At some stage, Respondent’s SFI website offered criticism of Complainant's "Trump Network". This does not provide a fair use justification for use of Complainant's trademark in the disputed domain name. Respondent’s predominant purpose in using Complainant's trademark in the disputed domain name was and is to confuse Internet users into visiting its website by suggesting sponsorship or endorsement by Complainant. Respondent’s unflattering comparison of Complainant's business was a minor and ancillary part of that sales effort, and does not justify using Complainant's well-known trademark as the principal address of its website.
Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent has argued that it registered the disputed domain name prior to Complainant’s formal announcement of the construction of a Las Vegas hotel and casino using its trademark, and that Respondent therefore could not have acted in bad faith to take advantage of Complainant's trademark. It is correct that as a general rule under the Policy the registrant of a domain name cannot have acted in bad faith in respect to a party that had not established rights in a trademark. But, Complainant had rights in the TRUMP trademark long before it announced plans to construct the Trump International Hotel Las Vegas, and Complainant was already well-known for the operation of hotels and casinos before its specific plans with respect to that hotel were announced. In this dispute, Complainant has not relied on trademark rights in "Trump Las Vegas", but rather on trademark rights in TRUMP. The Panel has determined that the disputed domain name <trumplasvegas.com> is confusingly similar to TRUMP. Respondent does not avoid a finding of bad faith based on the date of Complainant's announcement of plans to construct the Trump International Hotel Las Vegas.
Respondent has used the disputed domain name, first, to direct Internet users to a link farm parking page offering goods and services competitive with those of Complainant and second, to direct Internet users to a website offering goods and services directly competitive with those of Complainant. Both of these uses employ Complainant's well-known trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This constitutes bad faith registration and use of the disputed domain name.
Respondent offered to sell the disputed domain name to Complainant for a price substantially in excess of any reasonable out-of-pocket expenses associated with the disputed domain name. This provides further evidence of Respondent’s registration and use of the disputed domain name in bad faith.
The Panel determines that Complainant has established that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <trumplasvegas.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: October 16, 2010
1 The Response was transmitted on the evening of September 19, 2010, Pacific Time, from Nevada in the United States, and received by the WIPO Center on the morning of September 20, 2010. Paragraph 2 (f)(iii) of the Rules provides that an Internet communication will be considered to have been made at the time of transmission, provided the transmission is verifiable. In light of the time of receipt of the Response at the Center, it is reasonable to consider the time of transmission as verified.
2 Complainant has not provided evidence of such registrations. The establishment of the fact of such registrations is not material to this proceeding.
3 Information concerning the "Trump Network" operated by Complainant can be found at “http://www.trump.com/Trump_Network/Trump_Network.asp”. According to the home page of that website, "The Trump Network’s mission is to encourage its Independent Marketers to achieve personal financial independence." Panel visit of October 16, 2010.
4 Addition of the gTLD “.com” does not serve to distinguish the trademark from the disputed domain name in contexts such as this under the Policy.