Donald J. Trump and Trump Hotels & Casino Resorts, Inc v. Universal Internet Technologies, Inc.
Claim Number: FA0111000101578
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 Universal Technologies, Inc., London (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trumpsportsbook.com>, <trumpsportsbook.net>,
<trumpssportsbook.com>, and <trumpssportsbook.net> registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 2, 2001; the Forum received a hard copy of the Complaint on November 5, 2001.
On November 5, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> 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 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 Hon. Carolyn Marks Johnson 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 Respondent to Complainant.
A. Complainant urges the following:
The <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> 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.
B. Respondent did not submit a Response in this proceeding.
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 will be and are operated by Complainant.
Respondent registered the disputed domain names on July 26, 2000. Respondent developed websites at the disputed domain names. Respondent has engaged in a pattern of registering other famous trademarks as domain names.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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 to and/or Confusingly Similar
Complainant, through its registration and use, has established that it has rights in the TRUMP mark. Furthermore, the <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> domain names are confusingly similar to Complainant's mark because they incorporate Complainant's mark in its entirety and merely add the generic terms "sports" and "book". Descriptive terms or additional letters 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); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks). Furthermore, the addition of a top-level indicator such as "net" or "com" does not create a distinctive mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established that it has common law and legal rights in the mark contained within the disputed domain names. Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> 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”).
No evidence in this record suggests that Respondent is commonly known by Complainant’s well-known mark and Respondent has not come forward to establish that Respondent is commonly known by the mark or any of the disputed 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, no evidence in this record suggests, and Respondent has not come forward with evidence to show 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”).
Respondent has held the disputed domain name for over a year and has yet to develop a website. This behavior is evidence that Respondent is engaged in passive holding of the domain name. It has been found that the mere registration of a domain name is not enough to create rights and legitimate interests in the domain name. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and used the domain names in bad faith. The well-known nature of Complainant’s mark permits the inference that Respondent knew of the existence of Complainant's mark at the time Respondent registered the infringing domain names; Complainant’s marks were famous and distinctive at the time the disputed domain names were registered. 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 has registered other domain names infringing upon other famous trademarks. A pattern of such conduct permits the inference of bad faith. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
In addition, Respondent's registration and passive holding of the <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> domain names also supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
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 <trumpsportsbook.com>, <trumpsportsbook.net>, <trumpssportsbook.com>, <trumpssportsbook.net> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 10, 2001.
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