Donald J Trump
and Trump Hotels & Casino Resorts Inc v. Brian Graham
Claim Number: FA0110000100177
PARTIES
Complainant is Donald J. Trump and Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley LLP. Respondent is Brian Graham, Bristol, TN (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <trumptrade.com> and <trumpbarter.com>, registered with Network Solutions, Inc.
PANEL
On October 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 28, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <trumptrade.com> and <trumpbarter.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@trumptrade.com, and postmaster@trumpbarter.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <trumptrade.com> and <trumpbarter.com> domain names are confusingly similar to Complainant's famous marks.
Respondent does not have rights or legitimate interests in respect to the <trumptrade.com> and <trumpbarter.com> domain names.
Respondent registered and used the <trumptrade.com> and <trumpbarter.com> domain names in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Since 1984, Complainant has used the TRUMP mark in commerce in connection with casino and entertainment services. Complainant has invested millions of dollars into promoting the TRUMP mark and building reputation and goodwill in its services. The marks have been registered in the United States with the Patent and Trademark Office, and in addition, Complainant maintains numerous marks including the word TRUMP to designate services ranging from casinos to golfing.
Complainant also has a significant presence over the Internet. Complainant operates several websites incorporating its various marks including: <trump.com>, <trumptaj.com>, <trumpplaza.com>, and <trumpmarina.com>. Through Complainant's longstanding use of the TRUMP mark in domain names and Web addresses the public has come to expect that domain names incorporating the mark be the Complainant.
Respondent registered the disputed domain names on July 29, 2001. The two disputed domains do not resolve to websites. Respondent is not commonly known by either of the disputed domain names. Respondent offered the domain name <trumptrade.com> for sale to Complainant for $7,500 and the <trumpbarter.com> domain name for $3,500.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
Complainant, through its registration and use, has established that it has rights in the TRUMP mark. Furthermore, the <trumptrade.com>, and <trumpbarter.com> domain names are confusingly similar to Complainant's mark because they incorporate Complainant's mark in its entirety and merely adds generic terms "trade" and "barter". The generic terms do not defeat a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interest in the <trumptrade.com >, and <trumpbarter.com> domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
Furthermore, it can be inferred based on the passive holding and short time between registration and offer of sale to Complainant that the Respondent registered the domain names with the intention of selling them to the Complainant. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing domain name, because of the famous and distinctive nature of Complainant's TRUMP mark. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, Respondent's offer to sell the disputed domain names to the Complainant for $7,500 and $3,500 a sum exceeding out-of-pocket expenses resulting from registration, is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <trumptrade.com> and
<trumpbarter.com>be
transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 2, 2001
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