Donald J Trump
and Trump Hotels & Casino Resorts Inc v. Benji Rafaeli dba Benji
Claim Number: FA0110000100238
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 Benji Rafaeli d/b/a Benji, New York, NY (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <trumpinternational.net>,
<trumphouse.net>, <trumpland.net>, <trumpskys.com>,
<trumpalace.com>, <trumplace.com>,
<trumpair.com>, <trumptown.com>, registered with Register.com.
PANEL
On November 1, 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 October 2, 2001; the Forum received a hard copy of the Complaint on October 3, 2001.
On October 3, 2001, Register.com
confirmed by e-mail to the Forum that the domain names <trumpinternational.net>,<trumphouse.net>,<trumpland.net>,
<trumpskys.com>,<trumpalace.com>,<trumplace.com>,
<trumpair.com>,<trumptown.com> are registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 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@trumpinternational.net, postmaster@trumphouse.net, postmaster@trumpland.net, postmaster@trumpskys.com, postmaster@trumpalace.com, postmaster@trumplace.com, postmaster@trumpair.com, postmaster@trumptown.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 disputed domain names are confusingly similar to Complainant's famous marks.
Respondent does not have rights or legitimate interests in respect to the disputed domain names.
Respondent registered the disputed 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 <trumpair.com>, <trumpalace.com>, <trumphouse.net>, <trumpinternational.net>, <trumplace.com>, <trumpland.net>, <trumpskys.com>, and <trumptown.com> domain names on January 10, 2001. Currently, there is no website at any of the disputed domain names.
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 disputed
domain names are confusingly similar to Complainant's mark because they
incorporate Complainant's mark in its entirety and merely add the generic terms
"air", "palace", "house", "international",
"place", "land", "skys" and
"town." Some of the generic
terms are descriptive of businesses the Complainant is engaged in and therefore
associated with the Complainant. 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 disputed domain names. 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).
Furthermore, Respondent has no rights and legitimate interests because it has held the disputed domain names for almost a year and has failed to develop a website on any one of them. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
Respondent's passive holding of the disputed domain names does not constitute a bona fide offering of goods and services, pursuant to Policy ¶ 4(c)(i). See 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Because of the famous and distinctive nature of Complainant's TRUMP mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing domain names. 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”).
Respondent's registration and passive holding of the disputed domain names supports a finding of bad faith. 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).
Furthermore, Respondent has registered several infringing domain names at one time, which is evidence of bad faith. See 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.
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
<trumpinternational.net>,
<trumphouse.net>, <trumpland.net>, <trumpskys.com>,
<trumpalace.com>, <trumplace.com>,
<trumpair.com>, <trumptown.com> domain names be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 6, 2001
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