WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donald J. Trump v. Domain-Holdings, domain holdings
Case No. D2010-1671
1. The Parties
The Complainant is Donald J. Trump of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain-Holdings of Banff, Aberdeenshire, United Kingdom of Great Britain and Northern Ireland, in the case of <trumpscotland.com>; and domain holdings of Aberdeen, Yukon Territory, Zimbabwe in the case of <trumpinternationalscotland.com> and <trumpuk.com> (collectively “the Respondents”).
2. The Domain Names and Registrars
The disputed domain names <trumpinternationalscotland.com> and <trumpuk.com> are registered with GoDaddy.com, Inc.
The disputed domain name <trumpscotland.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2010. On October 5, 2010, the Center transmitted by email to GoDaddy.com, Inc. and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On October 5, 2010, GoDaddy.com, Inc. and Tucows Inc. transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on November 4, 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 the Respondents of the Complaint, and the proceedings commenced on November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Response was filed with the Center on November 26, 2010.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on December 9, 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.
4. Factual Background
The Complainant, Donald J. Trump, is an individual who resides in New York in the United States. He has had a long involvement in real estate development in that country and in others. He is also an hotelier, author and television personality. His property portfolio includes residential and commercial real estate, golf courses, casinos, hotels and other properties in the United States and elsewhere. Notable buildings bearing his name are located in New York and on three casinos in Atlantic City, New Jersey. See the Complaint, Exhibit F, which also contained pictures of buildings bearing the Trump name in other United States locations, as well as lists of Trump buildings in other countries, such as Seoul, Dubai, Istanbul, Toronto and Puerto Rico, and of golf properties bearing the name Trump in the United States, Puerto Rico and Scotland. More specific information on the Trump golf properties is contained in Exhibit G to the Complaint, including a proposed golf links in Scotland.
The Complainant is also the author of a number of books, chiefly on deal making and money making. These have been widely distributed and translated into a number of languages, and have been regular entrants in lists of best-selling business books.
The Complainant is also part owner (with NBC Universal) of the Miss Universe Organization which conducts the Miss Universe, Miss USA and Miss Teen USA pageants, although it is not clear to the Panel to what extent his name is directly associated with the promotion of these events.
Finally, the Complainant is the star and executive producer of the NBC television shows The Apprentice and The Celebrity Apprentice which have been broadcast in the United States and elsewhere since 2004. These shows have been very popular, and it appears that since their first showing in 2004, they have been shown in many countries, including the United Kingdom, since this time.
Further information about the Complainant’s business activities are to be found at his website “www.trump.com” which was visited by the Panel on December 21, 2010. Even on a cursory inspection of the website, it was seen that the name “Trump” is used repeatedly throughout. There are also websites specifically dedicated to the Complainant’s golf properties, in particular “www.trumpgolf.com” and location specific sites at “www.trumpnationalde.com”, “www.trumpnationallosangeles.com”, “www.trumpinternationalpalmbeaches.com”, “www.trumpinternationalphiladelphia.com”. “www.trumpinternationalwestchester.com”, and “www.trumpgolfclubpuertorico.com”. Once again, these sites prominently feature the name “Trump”, which the Panel also visited on December 22, 2010. In March 2006, the Complainant purchased land in Scotland with a view to developing a similar golf property there, and it is stated that this is due to open in the spring of 2012.
Quite apart from the above uses of the name Trump, which undoubtedly are relevant so far as any common law rights in the name as a mark are concerned, there are numerous registrations for the word TRUMP and variants thereof as service marks in different classes of services (notably classes 41 and 42) in the United States and United Kingdom,(see Exhibit K), as well as in many other countries (see Exhibit L).
So far as the Respondents are concerned, it appears from the Response that there are two individuals who carry on business under the name “Domain-Holdings” or “domain holdings”. These are William Davidson and Brian Hunter. The names of both individuals appear on the registration details of the disputed names as the relevant Administrative Contact and/or Technical Contact: Davidson in the case of <trumpscotland.com> and Hunter in the case of <trumpinternationalscotland.com> and <trumpuk.com>. From their jointly-filed Response, it does not appear that either individual disclaims responsibility and/or involvement in the registration and use of the disputed domain names, and it further appears that they work collaboratively in the areas of web design and domain name acquisition. The Response goes on to state that:
“We describe ourselves as Domain-Holdings or Domain Holdings whichever or whoever buys the chosen domain names will use one or the other and in this situation is for our own personal usage. We use the domain-Holdings name simply for the benefit of the search engines rather than use our Christian names and anyone looking for us on the search engines will see we are extremely well known for our expertise in attempting to encourage all webmasters to adopt the w3c directives for their own particular websites and we further encourage this by requesting users to place their respective websites into the w3cforum which belongs to Mr. Hunter.”
For the purposes of the present proceedings, it is clear that both individuals accept joint responsibility for the three domain names in dispute.
As for the domain names themselves, the dates on which these were registered are as follows:
<trumpscotland.com> – October 3, 2007 (WhoIs details provided in the Complaint.
<trumpinternationalscotland.com> – April 4, 2006 (WhoIs details provided in the Complaint)
<trumpuk.com> – September 30, 2007 (WhoIs details provided in the Complaint)
Each of these domain names resolves to a website controlled by one or the other of Davidson or Hunter (referred to hereafter, for the sake of convenience, as the Respondents) or by both of them. The details of these websites are referred to below in relation to the parties’ contentions as well as in the discussion and findings of the Panel. A screenshot for the first of these websites was provided in the Complaint, as well as a printout showing a “disclaimer” from the same website.
5. Parties’ Contentions
The Complainant contends that each of the requirements of paragraph 4(a) of the UDRP Policy is satisfied.
As to paragraph 4(a)(i), the Complainant points to its numerous United States and other national service mark registrations for the TRUMP mark as well as the name TRUMP as part of longer phrases forming marks such as TRUMP INTERNATIONAL GOLF CLUB. He submits further that the disputed domain names are confusingly similar, in that they comprise nothing more than the registered trade mark TRUMP together with geographic or dictionary terms such as “international”, “Scotland” and/or “UK” and, in particular, that confusion is likely to arise given that Scotland is a place where he is developing a golfing business. This likelihood of confusion is increased by reason of the wider “reputation and renown” of the Complainant arising from his multifarious business activities, in particular with respect to golf. The Complainant also notes that the GTLD suffix “.com” is to be disregarded when judging confusing similarity, referring here to Foundation Le Corbusier v Mercado M, WIPO Case No. D2004-0723 at 6.A.
As to paragraph 4(a)(ii), the Complainant asserts that the Respondents can have no legitimate interest in the disputed domain names, arguing that the onus here is on the Respondents in view of the fact that the Complainant’s use of his name significantly predates the registration of these names. The Complainant says further that the Respondents’ use of the domain names in promoting their web design and search result optimization services, with a view to ultimately selling the domain names at a profit, is neither a bona fide offering of goods or services nor a demonstration of a legitimate interest in those names. Reference is made here to Exhibit U to the Complaint which contains a printout from the website at “www.trumpscotland.com”. It is asserted that this use is unauthorized by the Complainant, and that there is no disclaimer of any relationship with the Complainant on the website (the Panel notes this is not correct, as to which see further below). It is argued that these uses are not fair, that the Respondents have no rights in the TRUMP mark and must have been well aware of it at the time of registering the domain names, doing so in the expectation that they would be able to divert traffic to their sites.
As to paragraph 4(a)(iii) (registration and use in bad faith), the Complainant argues that the initial act of registration must have been in bad faith because of the international fame attaching to his marks of which the Respondents must have been aware at the time of registering the domain names. He argues that there was no relationship between him and the Respondents of the kind that would have given rise to any possible licence or authorization on the part of the Respondents. Further, he argues that the Respondents were not commonly known by any of the disputed domain names. He also asserts that the Respondents were engaging in the practice of domain name “tasting”, that is, registering domain names in bulk but only maintaining the registrations of those which have proved capable of generating traffic sufficient to generate revenue for the Respondents; see further General Electric Company v. Marketing Total SA, WIPO Case No. D2007-1834 at 6.D.
So far as use of the disputed domain names in bad faith is concerned, the Complainant essentially reiterates his argument that the Respondents have continued to act in bad faith because they must have had knowledge of the famous TRUMP trade marks and that this is conduct falling within the circumstances outlined in sub-paragraph 4(b)(iv). The allegation is repeated that the Respondents are making use of the disputed domain names in order to confuse Internet users as to their sponsorship by, or affiliation with, the Complainant and are thereby earning revenue from these activities. The Panel notes, however, there is no specific reference here to any evidence that such revenue has been earned.
The individuals (Davidson and Hunter) have filed a Response on behalf of the Respondents (see above) in relation to the Complaint. It responds in detail to each paragraph of the Amended Complaint and essentially denies each allegation. There is considerable repetition in the Response, and what follows is a summary of its principal points.
First, as a general matter, both Respondents stress repeatedly that they do not have financial motives in their activities, but are rather dedicated towards promoting better web design in accordance with w3c standards and specifications. Much of their work is done on behalf of charitable organizations for which no fee is charged. They also stress their concern with Scottish culture and local affairs.
As to sub-paragraph 4(a)(i) of the Policy, there is a number of responses made (some of these overlap with matters that are relevant for sub-paragraphs 4(a)(ii) and (iii)):
1. They say that their registration of the disputed domain names was done without knowledge of the Complainants and his marks.
2. That the word Trump in Scotland is associated with an ancient card game going back to 1529 and this is how the word would be commonly understood in Scotland.
3. The domain names were acquired strictly for the purposes of pushing the benefits of w3c directives.
4. That <trumpinternationalscotland.com> was turned into a very popular blog for the people of Scotland, particularly in the North East, so that “they could air and voice their views on the new contentious plans” (this appears to be a reference to the proposed Trump golf property in that part of Scotland).
5. That there can be no confusion between the domain names and the TRUMP marks as the domain names and their websites are directed at quite different activities from those of the Complainant.
6. Their acquisition of the domain names preceded the Complainant’s golf property development in Scotland, the Complainant having no planning permission for the project at that time.
7. There is a somewhat ambiguous reference to them having “checked with the UK IPO offices” who apparently assured them that it would be very unlikely that Mr. Trump would ever be able to use as trademarks the terms “trumpscotland” or “trumpuk”. The date of this “checking” is unclear, but it appears referable to the time at which the domain names were registered. No evidence of this assurance from the UK IPO is provided.
As to sub-paragraph 4(a)(ii), the Respondents stress the noncommercial nature of their activities and also draw attention to the number of visits to their websites, noting that these are far more extensive than visits to “www.trumpgolfscotland.com”, a website belonging to the Trump organization. They also say that “www.trumpinternationalscotland.com” is an informational website with little chance of visitors being confused as to any link with the Complainant. They indeed suggest that the popularity of the website indicates that the Complainant is seeking to “reverse hijack and cherry pick our domains”. It should also be noted that there is, in fact, a short disclaimer of any connection with <trump.com> on “www.trumpscotland.com”.
As to sub-paragraph 4(a)(iii), the Respondents state that they had not heard of the Trump organization until around December/January 2007/ 2008 when news of the Trump proposals for a golf course in North East Scotland were “leaked to the local press”. They go on to state that planning permission for this was not obtained until 2010, some years after their registration of the disputed domain names, and that they have always sought to make “crystal clear” that there is no connection between them and the Complainant. They also deny the allegation of “tasting”, saying that they retain ownership of any domain name they buy for a minimum of one year but usually longer, and deny again that they are earning any revenue from the websites. They also stress that the choice of “trump” was a reference to the old Scottish card game of that name, and not to an American company, and that for “Scottish people recognition of old against new takes years and may take many years before the people of Scotland recognize the word TRUMP as being something outside of their culture describing old original card games.” They state again that they are not profiting from the websites, which are concerned with promoting charitable or public service websites. They are not competing with the Complainant in any relevant sector, and the fact that visitors to their websites stay “five times longer” than those going to the Complainant’s websites indicates that there is no confusion on the part of Internet users, and hence diversion of their potential customers.
More generally, the Respondents assert their good faith in adopting and using the disputed domain names, and reject any possibility of confusion.
6. Discussion and Findings
In order to succeed in its complaint, the Complainant must satisfy each of the requirements set out in paragraph 4(a) of the UDRP. These are cumulative, not separate or alternative, requirements, and are dealt with in turn below.
A. Identical or Confusingly Similar
As to the first limb of paragraph 4(a)(i), there is no doubt that the Complainant has “rights” in a trade mark or service mark comprising the name “Trump” or the name “Trump” with various suffixes: see further Complaint, Exhibits K (United States registrations) and L (registrations in other countries). These are primarily registered with respect to services within classes 41 and 42, although they also cover other classes, such as classes 35 ands 36. In the case of the UK, there is a number of registrations for the word TRUMP, the earliest being July 26, 2002, as well as for TRUMP INTERNATIONAL GOLF CLUB (February 6, 2004) and TRUMP INTERNATIONAL GOLF LINKS SCOTLAND (May 9, 2006). While there is no requirement under paragraph 4(a)(i) that the complainant’s mark should subsist or be registered in the same jurisdiction as that of the Respondent, the United Kingdom registrations are noteworthy and can clearly be regarded as providing some public notice of the Complainant’s rights within the United Kingdom, as opposed to other jurisdictions (this also is relevant for the purposes of sub-paragraphs 4(a)(ii) and (iii) – see further below). Furthermore, the evidence provided of the widespread use of the Complainant’s name as a mark in relation to property development and entertainment services indicates that he has “rights” that could doubtless be enforced through actions of passing off and/or unfair competition, depending on the jurisdiction involved. On the basis of this material, the Panel has no difficulty in concluding that the Complainant has shown that he has “rights” in a series of marks, both registered and unregistered, and comprising the name Trump on its own or as part of as larger combination of words beginning with that name.
As to whether the disputed domain names are “confusingly similar” with these marks, once again the Panel has little difficulty in finding this to be so. The predominant component of each domain name is the word “trump” which occurs unchanged in each domain name and is also the first element in each. Each of the suffixes is of a geographical kind, thereby highlighting the distinctive character of the name “trump”, so the likelihood of confusion for a person seeing one (the mark) and then the other (the domain name) is high. This is particularly so in the case of <trumpinternationalscotland.com> when comparison is made with United Kingdom registered marks Nos. 2,355,216B (TRUMP INTERNATIONAL GOLF CLUB, registered February 4, 2006) and 2,421,427 (TRUMP INTERNATIONAL GOLF LINKS SCOTLAND, registered May 9, 2006). Finally, it is a long accepted practice among WIPO UDRP Panels to disregard the “.com” suffix as a point of distinction when carrying out the comparison with the Complainants’ marks, as this is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc, WIPO Case No. D2005-0728 and Deutsche Welle v. DiamondWare Limited., WIPO Case No. D2000-1202.
Accordingly, the Panel finds that the requirements of sub-paragraph 4(a)(i) are satisfied here.
B. Rights or Legitimate Interests
Further assistance as to the meaning of this requirement is given in paragraph 4(c) which provides that:
“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 [the Respondent’s] 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.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration by way of affirmative defences, although the initial burden is obviously upon a complainant to show a prima facie case that the use in question cannot be legitimate, eg. by showing that there has been no authorization or permission to use the mark and that the registration of the domain name in question postdates the complainant’s rights.
In the present case, there is no suggestion in the Response that sub-paragraph 4(c)(ii) is applicable in the present case. However, as noted above, the Respondents have pointed to a number of factors that potentially fall within the other two sub-paragraphs.
As to sub-paragraph 4(c)(i), there appear to be two kinds of businesses carried on at the websites under the disputed domain names. In the case of <trumpscotland.com> and <trumpuk.com> these are concerned with the promotion of web design services and the acquisition and sale of domain names, although a close examination of these sites (visited by the Panel on December 22, 2010) indicates that they operate more by way of advertisements for the Respondents as the providers of such services and do not provide direct links, such as email or other addresses, for users to avail themselves of those services. In the case of <trumpinternationalscotland.com>, this website appears to operate as an information site, principally concerned with the proposed Trump golf development in North East Scotland and other local issues – in a general sense, this could be described as the provision of “information services”. It is unclear when these activities began to be conducted at these sites, i.e. whether they commenced at the time of registration or have begun subsequently. Leaving aside the question of whether or not these activities were begun with knowledge of the Complainant’s marks (see further below), it is clear that formal notice of a dispute between the Respondents and the Complainant was not given until April 7, 2009 when the Complainant’s lawyers first communicated in fairly strong terms with the Respondents: see Exhibit R. On the assumption that the Respondents’ websites were active prior to this time, the only question must be whether, at this time, they were making a bona fide offering of goods or services by reference to the domain names. While it may be possible to characterize the offerings here as being bona fide in the sense that services (web design and information) were being promoted at those sites, the words bona fide must also be referable to the way the domain names were actually being used in relation to those services. In view of the prior existing TRUMP registered marks in both the United States and the United Kingdom, as well as the widespread recognition of the Complainant through his property, entertainment and authorship activities, it is difficult to conclude that the Respondents’ services were ignorant of the Complainant’s existence, notwithstanding their assertions to the contrary, and their explanation for the adoption of the Trump (by reference to an ancient card game) appears somewhat fanciful. On balance, therefore, the Panel finds that the Respondents have not succeeded in showing that their use of the domain names was in relation to a bona fide offering of goods or services within the terms of sub-paragraph 4(c)(i). This means that if they have any claim to a right or legitimate interest in the disputed domain names, it must therefore fall within sub-paragraph 4(c)(iii), and it is to that sub-paragraph that we must now turn.
Sub-paragraph 4(c)(iii) speaks of the making of 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”. The Response throughout refers to the Respondents’ lack of commercial or financial interest in their websites. While this seems correct with respect to <trumpinternationalscotland.com>, it is less clear in the case of the other two websites which were visited by the Panel on December 22, 2010. Both these promote the use of proper web design principles, including those consistent with w3c, and offer advice on obtaining domain names and building websites. However, they both contain statements that “we are in the business of domain names…” and that they specialize in unusual domain names such as <trumpuk.com> or difficult to get web site names that can fill most requirements for web site builders needing business or personal web pages. ”While there are further references to websites that they have constructed that are clearly of a charitable nature, e.g. “www.dadsworks.org.uk” and “www.streetdrummers.org.uk”, the inference is that their services are available to business users as well. Furthermore, the websites appear more as advertisements for the Respondents’ services generally, and, as noted above, it is not clear how these services are to be accessed, i.e. there appears to be no email address or other contact given. Accordingly, there is a commercial “tinge” to each of these sites, an ambiguity that is not dispelled by the Respondents’ vehement denial in their Response of any financial motive. Given the confusing similarity between these two domain names and the Complainant’s marks, the conclusion must follow that users will be led to these sites in the belief that they are in some way associated with, or linked to, the Complainant and will therefore be diverted from accessing his services. This must lead, in turn, to the inevitable tarnishment or blurring of the Complainants’ marks. Overall, therefore, the Panel is unable to make a finding that these two sites are operated for “legitimate noncommercial” purposes within the terms set out in sub-paragraph 4(c)(iii).
This is not the case, however, with <trumpinternationalscotland.com> which appears to be purely concerned with the provision of information about local matters, including commentary and news and/or commentary on the proposed Trump golf development. The relevant question in this instance, then, is whether this is a “legitimate fair use” of the TRUMP mark. While there are many panel decisions that have considered criticism and comment sites, there are differing views as to whether these are legitimate fair uses of a domain name in relation to such sites. Some decisions have held that there can be no fair use where there is nothing in the domain name that has been adopted to suggest the nature or character of the site to which it resolves: see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; Justice for Children v. R neetso / Robert W. O'Steen, WIPO Case No. D2004-0175; and the various cases listed and described in D Lindsay, International Domain Law: ICANN and the UDRP, Hart Publishing, Oxford and Portland, Oregon, 2007, pp 337-339. By contrast, there are other decisions in which regard has been had to the character of the respondent’s site and whether this reflects true criticism or review, as in the case of a complaints site. In such cases, the fact that the domain name is confusingly similar to the complainant’s trade or service mark has been deferred to the free speech and fair comment interests involved: see, further, Howard Jarvis Taxpayers Association v Paul McCauley, WIPO Case No. D2004-0014; Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190; and see further the cases reviewed and discussed by Lindsay, op cit, pp 341-342. Other cases have sought to strike a midway position, looking at the totality of the circumstances: see, for example; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, but it will be noted that these cases have still focused mainly on a comparison between the domain name and the complainant’s mark. On such an approach, the addition of a suffix such as “sucks” or “review” would indicate a legitimate fair use, even if otherwise confusingly similar as it does point to the character of the site as a criticism or “attack” site (a further issue, of course, will be whether the site does, in fact, fulfil its function of a proper review or criticism site).
In the present proceeding, it must be said that there is nothing in the domain name <trumpinternationalscotland.com> to suggest the nature of the site to which it resolves. While this becomes once the site is accessed, as did the Panel on December 22, 2010, there is nothing here to differentiate it from other websites that are associated with the Complainant, such as “www.trump.com” and “www.trumpgolfscotland.com”. While the content of the site is fairly bland, and far from overtly critical of the Complainant, the ultimate question must be whether the use of the actual domain name is fair, and, in this instance, it must be the case that some Internet users will be attracted to the site in the belief that it is somehow associated with the Complainant. The fact that they are disabused of this notion once they are there, or that they appear to stay longer than users do on the Complainant’s own sites, is beside the point: they have been led to “www.trumpinternationalscotland.com” because this appears to be similar to the marks and domain names used by the Complainant. Indeed, the heading of the home page of “www.trumpinternationalscotland.com” maintains this impression, and it is only when one reads the material posted there that the nature of the site becomes clear. Accordingly, the Panel finds that this is not a legitimate fair use of the domain name <trumpinternationalscotland.com> within the terms of sub-paragraph 4(a)(iii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the third element that must be shown by the Complainant is that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those provisions. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, supra; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, there is no evidence suggesting that the circumstances referred in sub-paragraph 4(b)(i) are present. Likewise, although there is a suggestion by the Complainant that the circumstances referred to in sub-paragraph 4(b)(iii) arise, in that the Respondents engage in the practice of domain name “tasting”, this is denied by the Respondents, and there is no specific evidence to advance this allegation, one way or other. Sub-paragraph 4(b)(iii) is also inapplicable as there is no suggestion that the Complainant and Respondents are business competitors. As noted above, these three sub-paragraphs appear to apply more specifically to the time of registration of a domain name, rather than its use. However, they are not stated to be inclusive, and other facts may point to registration in bad faith (use of the domain names post-registration is considered further below, together with sub-paragraph 4(b)(iv)).
So far as the time of registration is concerned, the most significant factor in the present case relates to the Respondents’ knowledge of the TRUMP marks at this time. They deny any knowledge as at September/October 2007, but this is hard to accept given the previous registrations of the TRUMP marks in both the United States and United Kingdom (see above), the broadcasting of The Apprentice in both countries as from 2004, the publication of the Complainant’s books, and, more particularly, the launching of the Trump Scottish golf development in 2006 (see Exhibit N), a fact which the Respondents acknowledge they became aware of at or around the time they registered the domain names. There is also the ambiguous statement by the Respondents that they sought guidance from the UK IPO in that they “checked with the UK IPO offices” who assured us that it would be very unlikely that Mr. Trump would ever be able to use to Trademark “trumpscotland” or “trumpuk”. The timing of this inquiry is unclear, but it appears to suggest awareness of the Complainant and the fact that he may have had relevant rights to be considered. Furthermore, there is no credible explanation as to why the Respondents should choose the word Trump for the two websites that promote their website and domain name selection abilities: it is not a name that relates either to them or their purported business. In addition, the suggestion that this was simply a random choice that was referable to the old Scottish card game of that name seems fanciful, even though apparently supported by pages on each site that record the history of the game. This is doubly so in the case of <trumpinternationalscotland.com> which is a site that is largely concerned with the operations of the Complainant and his organization in Scotland and which seems to be a response to those developments.
In light of all the above, the Panel finds that the registration of each of the domain names was made in bad faith. It finds further that, in the case of <trumpscotland.com> and <trumpuk.com>, there has been post-registration use in bad faith within the terms of sub-paragraph 4(b)(iv). The reasons for this conclusion have been set out above in relation to sub-paragraph 4(a)((ii), namely that the promotional activities on these websites are not unambiguously noncommercial and that users will be misled into thinking that there is an association or link between these and the Complainant’s business. Such uses, moreover, will inevitably tarnish or blur the Complainant’s marks. As for <trumpinternationalscotland.com>, the Panel finds also that this has continued to be used in bad faith following registration, in that it is clear that the Respondents have had clear knowledge of the Complainant and have not sought to distinguish the domain name in any way from one that appears to be associated with the Complainant. In this regard, the addition of disclaimers on the website makes no difference as users have already reached the website in the belief that it is associated with the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <trumpinternationalscotland.com>, < trumpscotland.com> and <trumpuk.com> be transferred to the Complainant.
Dated: January 24, 2011