DECISION

 

Donald J. Trump and Trump Hotels & Casino Resorts Inc v. Baltic Consultants Limited

Claim Number: FA0111000101814

 

PARTIES

Complainants are 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 Baltic Consultants Limited, Tortola (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <wwwtrumptaj.com> and <wwwtrumpcardcasino.com>, registered with Tucows, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 8, 2001; the Forum received a hard copy of the Complaint on November 8, 2001.

 

On November 8, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <wwwtrumptaj.com> and <wwwtrumpcardcasino.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  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 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 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@wwwtrumptaj.com and postmaster@wwwtrumpcardcasino.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.

 

On December 6, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names are confusingly similar to marks owned by Complainant.

 

Respondent has no rights or legitimate interests in respect of the disputed domain names.

 

The disputed domain names were registered and have been used in bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Complainant holds registered marks in several names incorporating the words TRUMP and TAJ MAHAL, including TRUMP, TRUMP TAJ MAHAL, TAJ MAHAL, TRUMP CASINO, and TRUMP CARD.  Complainant is also the owner of several other marks incorporating the word TRUMP, including TRUMP CASTLE, TRUMP MARINA, and TRUMP INTERNATIONAL PLAZA. 

 

Complainant maintains a significant presence over the Internet as the owner of several websites incorporating its marks including: <trump.com>, <trumptaj.com>, <trumpplaza.com>, <trumpmarina.com>, and <trumpindiana.com>.  The Complainant has expended considerable time and money on these sites and marks and the public has come to expect that anything bearing the TRUMP mark on the Internet is owned by Complainant. 

 

Respondent registered the disputed domain names <wwwtrumptaj.com> and <wwwtrumpcardcasino.com> on August 22, 2000 and August 23, 2000 respectively.  Visitors to the sites hosted therein are redirected to the Supreme Casino and Grand Banks Casino, both online commercial gambling sites.  The Supreme Casino appears to be owned by Respondent.

 

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

The <wwwtrumptaj.com> domain is confusingly similar to Complainant’s TRUMP TAJ MAHAL mark.  The mere deletion of the word “MAHAL” is insignificant, given the notoriety of Complainant’s marks and Complainant’s extensive use of the TRUMP mark.  See Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.com> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

 

The <wwwtrumpcardcasino.com> is also confusingly similar to Complainant’s TRUMP and TRUMP CARD marks.  The addition of the generic term “casino” is merely descriptive of Complainant’s business and only enhances the domain name’s confusing similarity.  See Donald J. Trump & Trump Hotels & Casino Resorts, Inc. v. Larry Thom, FA 99714 (Nat. Arb. Forum Oct. 22, 2001) (finding the generic term “casino” to be descriptive of businesses the Complainant is engaged in and therefore associated with the Complainant); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding the <hoylecasino.net> domain name to be confusingly similar to Complainant’s HOYLE mark).

 

Further, as to both of the disputed domain names, the addition of “www” to Complainant’s marks is insignificant in the determination of confusing similarity.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark “Bank of America” because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).  It is likewise not significant that Respondent added “.com” to the marks.  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).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Because the Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  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).

 

Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), nor is Respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess). 

 

Further, it cannot be said that Respondent’s use of the domain name to promote its own casino is a bona fide offering of goods or services under ¶ 4(c)(i) of the Policy.  See North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

 

Finally, Complainant’s claim that Respondent holds no rights or legitimate interests is supported by Respondent’s choice of a confusingly similar variation of Complainant's famous marks.  See Donald J. Trump & Trump Hotels & Casino Resorts, Inc. v. Volk Amit d/b/a Cafe au Lait, FA 99688 (Nat. Arb. Forum Oct. 15, 2001) (finding Respondent's choice of a confusingly similar variation of Complainant's famous marks to support a finding of a lack of rights or legitimate interests). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect of the disputed domain names.

 

Registration and Use in Bad Faith

Complainant’s TRUMP marks are both “famous” and “distinctive.”  Donald J. Trump & Trump Hotels & Casino Resorts, Inc. v. James Tate d/b/a trumphotelcasino.com, FA 99708 (Nat. Arb. Forum Oct. 22, 2001).  As such, Respondent is considered to have been on notice as to the existence of Complainant’s marks.  Id.  By registering and using domain names that were confusingly similar to Complainant’s marks without regard for those marks, Respondent acted with “opportunistic bad faith.”  Id., citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the use and registration of domain names by anyone other than Complainants when they are so obviously connected with Complainants suggests “opportunistic bad faith”).

 

Respondent’s pattern of registering and using multiple infringing domain names also indicates bad faith under Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intent to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

Further, Respondent’s use of the disputed domain names to direct consumers to its competing casino site illustrates bad faith under Policy ¶ 4(b)(iii) & (iv).  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).

 

Finally, the addition of “www” to Complainant’s marks in an effort to capitalize on users’ probable typographical mistakes (a practice known as “typosquatting”) has also been held to constitute bad faith.  See e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding “wwwalavista.com”, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names “wwwdowjones.com”, “wwwwsj.com”, “wwwbarrons.com” and “wwwbarronsmag.com” to Complainants).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the domain names <wwwtrumptaj.com> and <wwwtrumpcardcasino.com> be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: December 10, 2001