Complainant is Donald J. Trump, c/o The Trump Organization, of New York, New York, United States of America (“United States”), represented by internal counsel.
Respondent is Britt Reeves of Miami Beach, Florida, United States, self-represented.
The disputed domain name <trumppalace.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2015. On May 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Response was filed with the Center on July 1, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 10, 2015. 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.
Complainant Donald Trump is a household name in the United States and in many other parts of the world. He is one of the best known businessmen in the United States. He is known, among other things, as a leading real estate developer. The TRUMP mark has been used and is registered in the United States and in many other countries to identify Complainant’s various goods and services, including famous hotels, resorts, golf courses, and residential or commercial buildings. Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the TRUMP mark, including some marks registered in 1999 and 2000.
Complainant registered the trademark TRUMP PALACE in June 2004 with the USPTO in association with “real estate services, namely listing, leasing and managing residential condominiums” as well as “real estate development and construction of residential condominiums.” The TRUMP PALACE mark was applied for in December 2001, and the first use in commerce of the TRUMP PALACE mark was also December 2001.
As indicated in the WhoIs, the Domain Name was initially registered on August 31, 2003. Respondent purchased the Domain Name for USD 800 from a prior owner in August 2010. Since 2005, Respondent has been a Florida-based licensed Realtor. Respondent has listed, sold, and leased property in the Trump Palace located in Sunny Isles, Florida. According to Respondent, “the sole purpose of this domain is to market, sell and lease apartments of owners for potential buyers at Trump Palace.”
Complainant sent Respondent a cease-and-desist letter on January 15, 2015. On February 6, 2015, Respondent sent Complainant an email stating that he had never used the Domain Name and had no plans to do so. He said he acquired it in connection with his efforts to resell units in the Sunny Isles Trump Palace. That same day, Complainant responded by email asking for a transfer of the Domain Name and offering to reimburse Respondent for his acquisition costs.
As of a certain point, unknown from the Complaint or the annexes thereto, the Domain Name was redirected to Respondent’s main website, “www.brittreeves.com”, which promoted Respondent’s real estate company, Beachfront Realty. The website indicates that Respondent’s company provides real estate services “throughout the Metro area.”
As of June 30, 2015, according to Respondent, the Domain Name resolved to a website stating, in part:
“LIST YOUR CONDO
I AM YOUR TRUMP SPECIALIST! I CAN GUIDE YOU THROGH THE SALES PROCESS IN SOUTH FLORIDA! I HAVE KNOWLEDGE REGARDING THE DEVELOPERS AND WHICH BUILDINGS ARE BETTER INVESTMENTS! (…) WE ARE NOT AFFILIATED WITH THE TRUMP ORGANIZATION. I SELL TRUMP CONDOS FOR OWNERS AND BUYERS.”
Complainant asserts that he has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent’s main contention is that he markets dwelling units at the Trump Palace and therefore has a legitimate interest in the Domain Name.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the 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) the Domain Name has been registered and is being used in bad faith.
Complainant has rights, through registration and use, in the mark TRUMP PALACE. The Domain Name is identical to the mark.
The Panel concludes that Policy paragraph 4(a)(i) has been satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant never authorized Respondent to use the TRUMP or TRUMP PALACE mark in a domain name or otherwise.
Moreover, the Panel rejects Respondent’s implicit argument that he had the right to use the Domain Name as a geographic identifier rather than as a mark. The main problem with this argument is that Respondent’s real estate website does not relate exclusively to offerings at the Sunny Isles Trump Palace. Rather, as noted above, Respondent touts his expertise in “South Florida” or “throughout the Metro area,” and touts his knowledge of the developers (plural) and which buildings are the better investments.
Under these circumstances, Respondent cannot plausibly claim to be using the Domain Name solely as a geographic indicator. It serves, rather, as a marketing lure of Internet users seeking information about Trump Palace and not necessarily about Respondent’s South Florida realty services.
The Panel concludes that Policy, paragraph 4(a)(ii) has been satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For the reasons discussed in the previous section, the Panel concludes that Respondent (who undisputedly had knowledge of Complainant and his famous family of marks at the time Respondent acquired the Domain Name in 2010) has used the Domain Name in bad faith within the meaning of the Policy. Specifically, the Panel finds, on a balance of probabilities and on the record in this case, that Respondent took advantage of Complainant’s famous marks by redirecting the Domain Name to the website promoting Respondent’s real estate business in general. The realty services offered at that site were not confined to listings at Trump Palace. As such, the Panel concludes that Respondent is in bad faith within the meaning of Policy, paragraph 4(b)(iv).
The Panel concludes that Policy, paragraph 4(a)(iii) has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <trumppalace.com>, be transferred to Complainant.
Robert A. Badgley
Date: July 16, 2015