WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donald J. Trump v. SD Dillon
Case No. D2015-0077
1. The Parties
The Complainant is Donald J. Trump of New York, New York, United States of America (“United States”), represented internally.
The Respondent is SD Dillon of Dorking, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by UDRP POLICE DBS, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <trumpcard.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 20, 2015. The Center also received email communications from email addresses associated with the Respondent on January 19, 2015 and January 21, 2015. The Complainant filed a supplemental filing on January 27, 2015.
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 Respondent of the Complaint, and the proceedings commenced on February 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2015. The Response was filed with the Center on February 25, 2015. The Complainant filed a further supplemental filing on March 2, 2015. The Respondent filed a supplemental filing on March 3, 2015.
The Center appointed John Swinson as the sole panelist in this matter on March 4, 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.
4. Factual Background
The Complainant is Donald J. Trump of the United States. The Complainant is a well-known businessman, real estate developer, hotelier, author and television personality.
The Complainant owns numerous registered trade marks for TRUMP, dating from April 20, 1999 (United States Registration No. 2,240,310). The Complainant is also the registered owner of United States Registration No. 2,414,739 for TRUMP CARD, registered on December 19, 2000.
The Respondent is SD Dillon of the United Kingdom. In correspondence with the Center, an individual named Brian Dillon-Ferris has identified himself as the proper respondent. Mr. Dillon-Ferris claims that the registration is mistakenly in his son’s name. The Panel has reviewed the relevant correspondence with the Center, and accepts that Mr. Dillon-Ferris is the proper Respondent to the proceeding.
The Respondent registered the Disputed Domain Name on January 19, 1998. The website at the Disputed Domain Name currently displays an error message.
5. Parties’ Contentions
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant has registered trade mark rights in TRUMP and TRUMP CARD.
The Disputed Domain Name is identical to the TRUMP CARD trade mark and confusingly similar to the TRUMP trade mark.
Rights or Legitimate Interests
The use of the Disputed Domain Name violates the Complainant’s trade mark rights. The Respondent has not used the website at the Disputed Domain Name for any legitimate purpose. Upon clicking the landing page, Internet users are taken to a website that is an exact copy of the Complainant’s “Trump Hotel Collection” website. The Complainant has not authorized the Respondent to use his trade marks.
The Complainant claims that his use of the trade marks predates the registration of the Disputed Domain Name. The Respondent would have been on notice of the Complainant’s rights when he registered the Disputed Domain Name.
The Complainant submits that the Respondent is using the Disputed Domain Name to either mislead the public into thinking that the website is associated with the Respondent, to collect private information from Internet users or to sell the Disputed Domain Name.
Registered and Used in Bad Faith
Given the Complainant’s reputation, the Respondent would have been aware of the Complainant when he registered the Disputed Domain Name. The Respondent’s decision to register the Disputed Domain Name without authorization is evidence of bad faith.
The Respondent has unfairly capitalized on the goodwill and fame of the Complainant (see paragraph 4(b)(iv) of the Policy). Upon information and belief, the Respondent has earned revenue by directing consumers to his website.
The Respondent’s contentions are as follows.
Identical or Confusingly Similar
The Respondent does not contest this point, but notes that the Complainant’s trade mark registrations post-date the registration of the Disputed Domain Name.
Rights or Legitimate Interests
The Complainant’s trade mark registrations do not give him a monopoly over the descriptive term “trump card”. The Respondent has a right to use the term in its common descriptive sense.
The Respondent registered the Disputed Domain Name to start an online card game site. The Respondent used the Disputed Domain Name as part of an affiliate arrangement with other web based card game sites, such as “www.partypoker.com”, whilst seeking potential joint venture partners.
Registered and Used in Bad Faith
The date of first use of the TRUMP CARD mark was not June 30, 1989. The Complainant’s “TRUMP CARD” loyalty program was only introduced in 2012 (the Respondent provided the Complainant’s press release).
The Complainant had no rights in TRUMP CARD prior to 1998, when the Respondent registered the Disputed Domain Name. There is no basis for concluding that the Respondent was taking advantage of a non-existent right in a descriptive mark.
The Complainant’s lawyers first contacted the Respondent in 2011, threatening legal action. The Respondent replied, but received no further correspondence until January 2015. During this time, the Respondent took measures to ensure that Internet users looking for the Complainant could find the Complainant’s website. This was done through the use of a disclaimer and a redirection.
The Respondent offered to transfer the Disputed Domain Name if proof of bad faith could be provided. The Complainant has not offered any proof.
Reverse Domain Name Hijacking (RDNH)
The Complainant is engaging in RDNH. The Complainant brought the Complaint even though he knew that he would be unable to prove the second and third elements of the Policy. These proceedings have caused inconvenience and financial loss to the Respondent.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Supplementary Submissions
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.
Here, both the Complainant and the Respondent have provided supplementary submissions that offer rebuttal arguments. These submissions do not offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.
In any event, even if the Panel accepted these submissions, it would not have changed the outcome of this case.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant holds registered trade marks for both TRUMP and TRUMP CARD.
The Disputed Domain Name is identical to the Complainant’s TRUMP CARD trade mark.
The Disputed Domain Name is also a combination of the Complainant’s TRUMP trade mark and the descriptive term “card”. The Panel finds that the TRUMP mark remains the dominant element in the Disputed Domain Name. The addition of the descriptive term “card” does nothing to prevent the confusing similarity of the Disputed Domain Name with the TRUMP mark (see, e.g., Nicole Richie v. Sonny Ahuja, WIPO Case No. D2012-0500 and the cases cited therein), particularly given that “trump card” is a gambling term and the Complainant has been connected with casinos and gambling in the past (see, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 and Donald J. Trump v. Fountainhead Entertainment LLC, WIPO Case No. D2004-0429).
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- the Complainant has not authorized the Respondent to use his trade marks;
- the Respondent is not commonly known by the Disputed Domain Name; and
- the Respondent has not been making a noncommercial or fair use of the Disputed Domain Name.
The Respondent submits that he has rights in the Disputed Domain Name, as it comprises a descriptive term (i.e., “trump card”) and he has been using that term in its common descriptive sense. On this point, paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
The Panel accepts that “trump card” is a descriptive term, used in relation to gambling. It refers to a card in the trump suit (i.e., a winning card).
The Respondent submits that he registered the Disputed Domain Name to start an online card game site and that he has been seeking joint venture partners. The Respondent provided insufficient evidence of this business plan. (He annexed an email dated February 8, 2007, which states he is looking for an “operational partner”, but provides no evidence regarding what steps were being taken to find such a partner.) The Panel finds that the Respondent has not demonstrated use of the Disputed Domain Name in connection with the relied-upon meaning. Nor has the Respondent evidenced “demonstrable preparations to use” the Disputed Domain Name (see paragraph 4(c)(i) of the Policy).
The Complainant has submitted that, as set out in the records of the United States Patent and Trademark Office, the date of first use of the TRUMP CARD trade mark was June 30, 1989. The dates of first use and first use in commerce claimed on a US trademark application do not establish evidence of date of first use as a trade mark – documentary or other evidence is also required (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033 and Saltworks, Inc. v. Gary Pedersen, Salt Works, WIPO Case No. D2013-0984).
The Respondent submits that the Complainant’s “TRUMP CARD” loyalty program was not launched until 2012. At the time the Respondent registered the Disputed Domain Name, the Complainant had long-standing common law rights in his TRUMP mark, including in relation to casinos. At that time, the Complainant was a very well-known celebrity businessman who had a strong association with property and casino developments. For example, Harrah’s at Trump Plaza (which included a 60,000 square foot casino) opened on May 26, 1984. It was a joint venture between the Complainant and Harrah’s Atlantic City. (This complex was closed in 2014, and no longer bears the TRUMP mark). Further, in 1995, the Complainant established the publicly traded company Trump Hotels and Casino Resorts. (The Complainant no longer runs this company, now known as Trump Entertainment Resorts.) At the time the Disputed Domain Name was registered, the Complainant owned registered trade marks incorporating TRUMP, such as TRUMP PLAZA (registered in 1990), TRUMP TOWER (registered in 1992) and TRUMP TAJ MAHAL CASINO RESORT (registered in 1993). In light of the above, the Panel finds that the Respondent would have been aware of the Complainant, his business and his trade mark rights in TRUMP at the time that the Respondent registered the Disputed Domain Name.
The Respondent generated revenue by linking Internet users to affiliate sites, such as “www.partypoker.com”. It is reasonable to infer that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights in his TRUMP mark. This is not use in connection with a bona fide offering of goods and services (see paragraph 4(c)(i) of the Policy).
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The fame and reputation of a complainant’s trade mark is persuasive in determining a respondent’s bad faith intent (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent has submitted that it registered the Disputed Domain Name prior to the launch of the Complainant’s “TRUMP CARD” loyalty card program. As outlined above, this does not paint the full picture. The Complainant is a very famous businessman, with a distinctive and long-standing brand. As such, as discussed below, it is reasonable for the Panel to conclude that the Respondent was aware of the Complainant, his business and his trade marks when the Respondent registered the Disputed Domain Name in 1998. At this time, among other things, the Complainant had already written three best-selling books and had interests in a number of hotels and casinos.
As discussed above, the Respondent profited from customer confusion through its affiliate arrangements. It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation. This constitutes bad faith (see, e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454 and cases cited therein).
In the past, the website at the Disputed Domain Name has displayed the following text (or a variation thereof):
“‘The only way to make money in a casino is to own one’, so says Steve Wynn, head of one of the world’s largest casino empires. To beat the competition at online poker start with a distinguished brand. It’s time to play your trumpcard. Trumpcard.com is available for sale or joint venture. Click here to request more information.”
Under the circumstances, the offer of the Disputed Domain Name for sale to the public may further evidence bad faith (see, e.g., O2 Holdings Limited v. Profile Group, DNS Manager, WIPO Case No. D2013-1340 and cases cited therein).
The Complainant alleges that the Respondent created webpages that were exact copies of the Complainant’s “Trump Hotel Collection” website. The Complainant annexed screenshots of these webpages to the Complaint. The Respondent denies this allegation, and provides a number of suggestions as to how the screenshots may have come about. The Panel does not have sufficient evidence to determine the legitimacy of the parties’ submissions on this point. However, in light of the findings above, the Panel does not need to address this issue.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <trumpcard.com>, be transferred to the Complainant.
Date: March 19, 2015