Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Nikolai
Golovenkov d/b/a RusskayaReklama.com, Inc.
Claim Number: FA0109000099705
PARTIES
The Complainant is Donald J. Trump Trump Hotels & Casino Resorts, Inc., New York,
NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley LLP. The Respondent
is Nikolai Golovenkov
RusskayaReklama.com, Inc., New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <trumpplaza.net>,
registered with GANDI.
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.
Moreover,
the Panel believes it was constituted in compliance with the ICANN Rules
and has also issued a Statement of Acceptance
and Declaration of Impartiality and
Independence.
Jacques A. Léger, Q.C. as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint ("Complaint") to the National Arbitration Forum (“the
Forum”) electronically on September 13, 2001; the Forum received a hard copy of
the Complaint on September 17, 2001.
On
September 14, 2001, GANDI confirmed by e-mail to the Forum that the Domain Name <trumpplaza.net>
is registered with GANDI and that the Respondent
is the current registrant of the name.
GANDI has verified that Respondent
is bound by the GANDI 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
September 17, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 9, 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@trumpplaza.net by e-mail.
A
timely response ("Response") was received and determined to be
complete on October 8, 2001.
A
Supplemental Statement from the Complainant
was received, in a timely manner pursuant the Forum's Supplemental Rule no.7,
on October 15 2001.
On October 17
2001, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger Q.C. as
Panelist.
RELIEF SOUGHT
The Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
Complainant
alleges that Trump Hotels & Casino Resorts, Inc. (“Trump Casino”), is the
sole licensee of numerous marks containing the TRUMP and TRUMP PLAZA names used
in connection with casino and entertainment services. The licensor and owner of the marks is Donald J. Trump. Since
1984, Trump Casino has used the distinctive TRUMP and TRUMP PLAZA names and
marks in commerce in connection with casino and entertainment services.
Moreover,
Complainant alleges and provides
evidence (Exhibit A of the Complaint) that the TRUMP and TRUMP PLAZA marks have
been registered in the United States with the Patent and Trademark Office, and
have achieved “incontestable” status and that numerous “TRUMP” marks exist to
designate services ranging from casinos to real estate to golfing.
In addition, Complainant
alleges (and the Panel has verified, on a proprio
motu basis) that Trump Casino maintains a significant presence over the
Internet. Trump Casino operates several web sites using the Trump marks,
including <Trump.com>,
<Trumptaj.com>,<Trumpplaza.com>,<Trumpmarina.com> and
<Trumpindiana.com>. Complainant further maintains that
through its longstanding use of the Trump marks, the public has come to expect Domain Names and Web addresses
incorporating TRUMP, or variations thereof, to be owned by Complainant.
Complainant also
alleges that it (Donald Trump and Trump Casino) has invested millions of
dollars into promoting the TRUMP name and marks, and building its reputation
and goodwill.
Complainant
alleges that the Domain Name <trumpplaza.net> is confusingly
similar to the Complainants’ TRUMP
and TRUMP PLAZA marks as required by paragraph 4(a)(i) of the ICANN Policy
adopted by ICANN and the Uniform Domain
Name Dispute Resolution Policy adopted by the Internet Corporation for
Assigned Names and Numbers and the Uniform Domain
Name Dispute Resolution Policy adopted by GANDI (the “Policies”).
Complainant
asserts that there are only two minor differences between Complainants’ mark and the Domain
Name: the addition of the generic top-level Domain Name and the deletion of a space before the wholesale
adoption of Complainants’ TRUMP
PLAZA mark in the <trumpplaza.net>
Domain Name.
Legitimate Use
Complainant
alleges that Respondent has no
rights or legitimate interests in the Domain
Name <trumpplaza.net>
as required by paragraph 4(a)(ii) of the Policies. The Respondent is not a licensee of the Complainant, nor is he otherwise authorised to use the Complainant’s mark.
Complainant
maintains that Respondent has no
legitimate interests in the Domain Name
and has not used the mark lawfully to offer goods or services prior to notice
of the dispute and that Respondent
can present no "fair use"
or non-commercial use of the Domain Name.
In the Supplemental Complaint, Complainant responds to Respondent's arguments that he is
making a legitimate "fair use"
of the Domain Name (by conducting
criticism of Bloomberg, etc.) by alleging what has been decided in past cases
such as the following: The New York Times
Co. v. New York Internet Services, WIPO Case No. D2000-1072, stating that
even if the <newyorktimes.com> site “were purely a commentary or opinion
site, [Respondent] would not be
entitled to use THE NEW YORK TIMES mark in the Domain Name”; Aloe Vera of
America, Inc. v. Adam Norins, NAF Case No. 97291, stating that “while the
content of Respondent’s proposed web
site may enjoy First Amendment and "fair
use" protection, those protections do not equate to rights or
legitimate interest ‘with respect to a domain’ which is confusingly similar to
another’s trademark”; Lockheed Martin
Corp. v. Ning Ye, WIPO Case No. D2000-1733, rejecting Respondent’s assertion that his use of the Domain Name was a legitimate non-commercial use because he had
posted advertisements on his Web site and concluding that “the use of another
person’s mark in a Domain Name is
not protected from scrutiny simply because the user of the mark is criticising
a government”.
Complainant alleges that Respondent registered the Domain Name in bad faith because he
knew of the Complainants’ widely
famous mark when he registered the Domain
Name. See AltaVista
Company v. Grandtotal Finances Limited, et. al., WIPO Case No. D2000-0848 (“the Panel is of the opinion
that the Domain Names are so
obviously connected with the Complainant
and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad
faith”)
Complainant alleges that
Arbitration panels have found that a Respondent’s use of a Complainant’s mark to
redirect Internet Users to a web site disparaging Complainant shows bad faith.
See Exhibit H (showing screen
shots of the anti-gambling page an Internet user is redirected to after typing
in the <trumpplaza.net>
domain address).
Moreover,
Complainant alleges that Respondent’s bad faith is shown by his
registering the Domain Name
primarily for the purpose of selling it to the Complainant for $525.00, a sum in excess of the registration fees.
In
addition, Complainant alleges that
the fact that the Respondent
provided false registration information supports a finding of bad faith. See
Noodle Time, Inc v. Max Marketing, eResolution Case No. AF-0100 (finding
bad faith because given the famous nature of the trademark, the panel concluded
that the Respondent must have
falsely represented that the registration of the Domain Name did not infringe on another’s rights)
Complainant
alleges that Trump Casino has used the TRUMP and TRUMP PLAZA marks continuously
since 1984, decades before Respondent’s
registration of the Domain Name. The famous nature of the TRUMP and TRUMP
PLAZA marks suggests that the Respondent
knew when he registered the nearly identical <trumpplaza.net> Domain
Name that he infringed Complainant’s TRUMP and TRUMP PLAZA marks.
Respondent maintains in his
Response that " On its face, the Domain Name registered by the Respondent is confusingly similar to Complainant's Mark, Trump Plaza. It not
only is confusingly similar, it reflects exactly the Complainant trademark.
Unfortunately, I could not register Trump.com".
Respondent alleges that he
has used, is using and intends to use the Domain
Name with a web site in the following manner, "I intend to use it as a
non-profit site, which will be dedicated to persona of Donald Trump, his
political aspirations and nature of his business. The Domain Name was redirected to an anti-gambling site, now it is
redirected to my site Bloomberg-TV.com, which mentions Mr. Trump and I intend
to dedicate some more space to him as I am making the site".
Respondent
alleges that his registration and use of the Domain Name does not qualify as a legitimate non-commercial use or
"fair use". Respondent
further alleges that “As a general proposition, “the
same facts establishing "fair use" and the exercise of free speech
negate a finding of bad faith intent.” Bridgestone
at § 6 (citing Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.
Supp. 2d at 535-536). By submitting
evidence that the disputed name is being used in connection with a free speech
web site, the Respondent has
effectively foreclosed the Complainant’s
ability to prove bad faith".
As far
as "Reverse Domain Name
Hijacking " is concerned, Respondent
simply alleges that this case is an example of such behaviour and requests that
the "panel grants the Respondent the decision that, this case
is given a status of a ‘reversed Domain
Name hijacking”.
To the allegation of "Reverse Domain Name Hijacking ", Complainant alleges that Respondent has failed to demonstrate
any aspect of this kind of behaviour and further alleges that Complainant has, "not acted in bad
faith by filing a Complaint requesting the transfer of a Domain Name, which incorporates, wholesale, Complainants’ famous marks".
DISCUSSION & FINDINGS
Pursuant to paragraph 4(a) of the
Uniform Domain Name Dispute
Resolution Policy [hereinafter the ICANN
Policy] the Complainant must
convince the Panel of three elements. In order to have the Domain Name transferred to this end, it is incumbent upon the Complainant to cumulatively show:
i) that the Domain Name is identical or confusingly similar to a trademark in
which the it holds rights; and
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered
below. However, before addressing the key issues of
the case at hand, the Panel deems it
appropriate to reiterate the fact that all the allegations,
arguments and documents in support
thereof submitted by the parties were examined and
considered prior to the Panel
deciding the case on the merits. The Complaint and its
attached exhibits, the Response as
well as the Supplemental Statement of Complainants
and its attached exhibits influenced
the outcome of the decision. The Supplemental
Statement of Complainants basically addresses and responds to the arguments
raised by
the Respondent concerning (i) the characterisation of his use of the Domain Name as "fair
use" (due to his right to free
speech), (ii) his registration and use of the Domain Name in
good faith, pursuant to Bridgestone
Corp. v. Jack Myers, WIPO Case No. D-2000-0190,
and (iii) the allegation that Complainant has engaged in what is
known as Reverse
Domain Name
Hijacking.
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the
trademark TRUMP PLAZA and finds that the Complainant
has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's
Domain Name, the second-level part
of the Domain Name,
"trumpplaza", is phonetically and visually identical to the Complainant's trademark TRUMP
PLAZA. Thus an average Internet user
who has knowledge or recollection of the name, TRUMP PLAZA, might easily
mistake the Respondent’s web site
associated with the Domain Name, as
being somehow affiliated, sponsored or owned by the Complainant. The Panel is of the opinion that this fact alone is sufficient
to conclude that the Domain Name is
confusingly similar to Complainant's
TRUMP PLAZA trademark.
The
Panel further finds it reasonable to apply the same reasoning as in Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3,
2001), where the panel found that Respondent’s
Domain Name
<customcommerce.com> was identical to Complainant’s CUSTOM COMMERCE trademark registration); as well as
in Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) where the panel found that <pomellato.com>
to be identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
In any
case, this point is moot since the Respondent
has made a judicial admission in his pleadings to the effect that "On its
face, the Domain Name registered by
the Respondent is confusingly
similar to Complainant's Mark, Trump
Plaza. It not only is confusingly similar, it reflects exactly the Complainant trademark".
The
Panel is therefore of the opinion that the Complainant
has met its burden of proof as required by paragraph 4(a)(i) of the ICANN
Policy.
Paragraph
4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate
interests vested in the Domain Name. Paragraph 4(c) provides examples of
circumstances that can demonstrate the existence of such rights or legitimate
interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by
the Domain Name; and (iii)
legitimate non-commercial or "fair
use" of the Domain Name.
The
Panel is of the opinion that there is no evidence to support any finding of a
legitimate right or interest in the Domain
Name on behalf of the Respondent. The Respondent
has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has he attempted to
show that he has commonly been known by the Domain Name nor has he attempted to show a legitimate
non-commercial or "fair use"
of the Domain Name.
Moreover,
the Panel shares the ratio decidendi
of the following cases to the effect that the Respondent has no rights or legitimate interests in respect to the
disputed Domain Name since Respondent is not a licensee of Complainant and is not using the mark
in connection with a bona fide offering of goods or services, or making a
non-commercial or "fair use"
of the disputed Domain Name.
The New York Times Co. v. New York Internet
Services, WIPO Case
No. D2000-1072, stating that even if the newyorktimes.com site “were purely a
commentary or opinion site, [Respondent]
would not be entitled to use THE NEW YORK TIMES mark in the Domain Name” (taken from Supplemental
Statements of Complainant).
Aloe Vera of America, Inc. v. Adam Norins, NAF Case No. 97291, stating that “while the
content of Respondent’s proposed web
site may enjoy First Amendment and "fair
use" protection, those protections do not equate to rights or legitimate
interest ‘with respect to a domain’ which is confusingly similar to another’s
trademark” (taken from Supplemental Statements of Complainant).
Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733, rejecting Respondent’s assertion that his use of
the Domain Name was a legitimate
non-commercial use because he had posted advertisements on his Web site and
concluding that “the use of another person’s mark in a Domain Name is not protected from scrutiny simply because the user
of the mark is criticising a government” (taken from Supplemental Statements of
Complainant).
In Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) the Panel
found that the Respondent did not
have any rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s
prior rights in the Domain Name
precede Respondent’s registration;
(3) Respondent is not commonly known
by the Domain Name in question.
The Respondent believes and asserts that he
is in fact making a non-commercial "fair
use" of the Domain Name. Respondent contends that it intends to
use the disputed Domain Name as a
web site providing criticism of Donald Trump and gambling in general. Respondent supports this contention by
citing Bridgestone Firestone, Inc. v.
Myers, D2000-0190 (WIPO July 6, 2000). In this case, the Panel found that
the Respondent had free speech
rights and legitimate First Amendment interests in the Domain Name <bridgestone-firestone.net> where the Respondent linked the Domain Name to a “complaint” website
about the Complainant’s products.
Nevertheless, the Panel is of the same opinion as the one expressed in Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) where the panel
found that “[i]n Domain Name
disputes it is critical whether the accused Domain Name itself signifies parodic or critical purposes, as
opposed to imitation of trademark”. In the case at issue, the Domain Name itself does not signify a
parodic or critical purpose (i.e <trumpplazasucks.net>). Furthermore, the
Panel has researched the content of the site linked to the Domain Name, on a proprio
motu basis. It seems that, as was mentioned by the Complainant (Supplemental Complaint), the Domain Name is linked to a critiquing site, which not only fails to
mention Trump Plaza, it simply mentions the name "Donald Trump" in
one innocuous sentence, which does not constitute evidence of the use being
claimed by Respondent.
Pursuant to the
above-mentioned reasons and in accordance with the aforementioned jurisprudence,
the Panel concludes that, on balance of probabilities, that the Complainant has discharged its burden
to show that the Respondent has no
rights or legitimate interests in the Domain
Name.
Pursuant
to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove, on the balance of
probabilities, that the Respondent
has registered and is using the Domain
Name in Bad Faith. Paragraph 4(b)
of the ICANN Policy provides a number of non-exhaustive circumstances which, if
found to be present, are evidence of the registration and use of a Domain Name in bad faith. In
particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the
circumstances tend to indicate that by using the Domain Name the Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
his web site, by creating a likelihood of confusion with the Complainant's mark as to the source,
sponsorship, affiliation, or endorsement of the Respondent’s web site, then this might be evidence of bad faith
registration and use on behalf of the Respondent.
The
Panel has taken note of uncontested evidence (partly admitted to by the Respondent in his Response), which
indicates that after registering the Domain, the Respondent was willing to transfer it to Complainant for at least $250.00 US, which would compensate Respondent for the reasonable expenses
his company had incurred thus far. However, when confronted by the Complainant to produce any kind of
proof for these expenses, Respondent
refused to do so unless it was paid additional undisclosed amounts for his
efforts. Notwithstanding the amount offered, the Panel is of the opinion that,
as in Little Six, Inc v. Domain For Sale, FA 96967 (Nat.
Arb. Forum Apr. 30, 2001), the Respondent's
offer to sell the Domain Name at
issue to Complainant constituted
evidence of bad faith. The Panel also shares the opinion expressed in American
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), where
the panel found that “general offers to sell the Domain Name, even if no certain price is demanded, are evidence of
bad faith”.
The
Panel is of the opinion that the Complainant
has satisfied its burden to establish, on these grounds alone, that the Respondent was intending to demand more
than his out-of-pocket costs directly related to the registration of the Domain Name, a necessary component of a
finding of bad faith when offering a Domain
Name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.
Furthermore,
the Panel is of the opinion that the Domain
Name is so obviously connected with the Complainant and its services that its very use by someone with no
connection with the Complainant
suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier
Garcia Quintas and Christiandior.net
WIPO Case No. D2000‑0226 and Veuve Cliquot
Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163), followed by this Panel in LLS
International vs. Mark Freeman,
WIPO Case No. D-2000-1080, and Altavista Company v. Grandtotal
Finances Ltd., WIPO Case No. D-2000-0848.
For
the foregoing reasons, the Panel concludes that the Complainant has met its burden of proof and has proven that the Respondent’s actions have been in bad
faith pursuant to paragraphs 4(b)i and 4(b)(iv) of the ICANN policy.
REVERSE DOMAIN NAME HIJACKING
Respondent requests that
the Panel make a finding that Complainant
is engaged in reverse Domain Name
hijacking with respect to the disputed Domain
Name. Concerning this claim, the
Panel shares the opinion of the presiding panel in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), which found that to
prevail on a claim of reverse Domain
Name hijacking, Respondent must
(i) show that Complainant brought
the claim in bad faith, despite its knowledge that Respondent has an unassailable right or legitimate interest in the
disputed Domain Name; (ii) show that
Respondent lacks the necessary bad
faith registration and illegitimate use of the disputed Domain Name. Furthermore, the Panel shares the opinion
expressed by the panel in Smart Design
LLC v. Hughes, WIPO Case No. D-2000-0993, that, "reverse Domain Name hijacking…encompasses both
intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate
interests".
In the matter at issue, it is apparent that the Respondent other than simply requesting that a situation of Reverse
Domain Name Hijacking is present, has not established any of the
above-mentioned criteria and/or provided evidence in support of said request.
Consequently, the Respondent has failed to relieve itself of its burden of
proof regarding this notion and no finding of Reverse Domain Name Hijacking,
against Complainant, will be made.
For
the foregoing reasons, the Panel decides:
- That the Domain Name registered by the Respondent
is confusingly similar to the trademarks in which the Complainant has rights;
- That
the Respondent has no rights or
legitimate interests in respect of the Domain
Name; and
- The
Domain Name has been registered and
is being used by the Respondent in
bad faith; and finally,
- That the Complainant has not participated in any
kind of Reverse Domain Name
Hijacking
Accordingly,
pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the
registration of the Domain Name:
<TRUMPPLAZA.NET>
be transferred to the Complainant
by the Registrar, GANDI.
Jacques
A. Léger, Q.C., Panelist
October
31, 2001
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