Donald J Trump and Trump Hotels & Casino Resorts Inc v. Cybergaming Inc
Claim Number: FA0110000101533
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 Cybergaming, Inc., St. John's , CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trumpcasino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>,
<cyber-trump-card.com>, registered with Tucows, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 30, 2001; the Forum received a hard copy of the Complaint on October 31, 2001.
On November 5, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trump-casino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>, <cyber-trump-card.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 November 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org 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.
On November 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
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.
Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trump-casino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>, <cyber-trump-card.com> domain names are confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered the disputed domain names in bad faith.
Respondent failed to submit a Response.
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 March 14, 2000. When the Internet user types in any of the disputed domain names he or she is directed to "citywebsites" web page. The page lists various cities around the globe and provides various links to lodging and entertainment for each city. The website features alternating banner advertisements for "House of Gambling" online casino and "VIP Concerts" websites.
Respondent is the owner of the "House of Gambling" online casino.
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 <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trump-casino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>, <cyber-trump-card.com> domain names are confusingly similar to Complainant's mark because they incorporate Complainant's mark in its entirety and merely adds the generic terms "card", "casino", "cyber", and "online". The use of generic terms does not create a distinctive mark, especially when the terms are descriptive of Complainant's business. 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
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 disputed 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 on the record, and Respondent has not come forward to establish that it is commonly known by any of the <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trump-casino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>, <cyber-trump-card.com> domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, based on the fame of Complainant's TRUMP mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the disputed domain names, using Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Furthermore, Respondent has linked the disputed domain names to an online casino and an advertising website. It has been found that the use of a confusingly similar domain name as a link to gambling and advertisement websites does not create rights and legitimate interests. See Société des Bains de Mer v. International Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
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 names, 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’”).
The domain names are confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trump-casino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>, <cyber-trump-card.com> domain names is evidence of bad faith. See 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 has registered several infringing domain names at the same time, which is evidence of bad faith. See Time Warner Inc. & EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net and warneremi.org in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <trumpcardcasinoonline.com>, <trumpcardonlinecasino.com>, <trump-card-casino.com>, <cyber-trumpcasino.com>, <cybertrumpcardcasino.com>, <cybertrumpcard.com>,
<cyber-trump-card.com>, domain names be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 3, 2001
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