Donald J.
Trump and Trump Hotel & Casino Resorts, Inc. v. olegevtushenko a/k/a Oleg
Evtushenko
Claim Number: FA0110000101509
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 olegevtushenko a/k/a Oleg Evtushenko, Kiiv, Ukraine (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <porntrumps.com>, registered with Parava Networks 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 29, 2001; the Forum received a hard copy of the Complaint on October 30, 2001.
On November 2, 2001, Parava Networks Inc. confirmed by e-mail to the Forum that the domain name <porntrumps.com> is registered with Parava Networks Inc. and that Respondent is the current registrant of the name. Parava Networks Inc. has verified that Respondent is bound by the Parava Networks 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 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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@porntrumps.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 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <porntrumps.com> domain name is confusingly similar to Complainant's marks.
Respondent has not rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name 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 on the Internet. Complainant operates several websites incorporating its various marks including: <trump.com>, <trumptaj.com>, <trumpplaza.com>, and <trumpmarina.com>.
Respondent registered the disputed domain name on February 6, 2001. The <porntrumps.com> domain name leads to a pornographic video website offering "extreme XXX" pornographic videos. The website solicits Internet users to become members of the pornographic video club for $11.95 a month.
This having been said, the question becomes whether <porntrumps.com> is identical or confusingly similar to the Complainant’s TRUMP mark. If so, a related question is whether there is the likelihood that similarity would confuse the web surfing public. The Complainant does not seem to directly address the latter question except to suggest that there may be initial interest confusion because of the use of a form of the word “trump.”
While the Complainant is a well known personage whose name is internationally recognized, and while the TRUMP mark has successfully been registered in various international classes, the word “trump” predates Donald J. Trump by many centuries and has a myriad of common uses in language unrelated to any trademark use.
For example, the Merriam-Webster’s Collegiate Dictionary defines the noun “trump” as:
1 a : a card of a
suit any of whose cards will win over a card that is not of this suit b :
the suit whose cards are trumps
for a particular hand -- often used in plural
2 : a decisive overriding factor or final resource
3 : a dependable and exemplary person .
The verb “trump” is defined as:
1 : to get the better
of : OUTDO
2 : to play a trump on (a card or trick) when another suit was
led
intransitive senses : to play a trump when another suit was led.
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. However, in light of the common use of the word “trump,” both as a noun and a verb, this Panel fails to see how there is a likelihood of confusion between TRUMP and <porntrumps.com>. In fact, if the Complainant is really making an initial interest confusion argument, he would have to be suggesting that the web surfing public would be expecting that his distinguished moniker and service mark would be readily associated with “porn.” This Panel does not believe that to be the case because the Complainant’s mark and the domain name at issue are not identical or confusingly similar. It appears that Respondent is using “trumps” as a verb to suggest that pornography gets the better of things. This is not a trademark use and does not infringe Complainant’s rights in its service mark.
See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (“Appellants do not use trademarks qua trademarks as required by the caselaw to establish commercial use.
Rather,
Appellants use words that happen to be trademarks for their non-trademark value.”) See,
also, Bosco Products, Inc. v. Bosco E-Mail Service, FA 94828 (Nat. Arb.
Forum June 29, 2000).
Even with his service mark registrations in
hand, Complainant does not have the exclusive right to use every form of the
word “trump”. B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat.
Arb. Forum June 5, 2001), (holding that complainant did not have exclusive
rights to use of the terms “B2B” and “Works” in association with other words,
even with a registered trademark for B2BWORKS.)
This Panel finds that Policy ¶ 4(a)(i) has not been satisfied, and it is thus not necessary to determine whether the Respondent had rights or legitimate interests in the domain name at issue or whether it was registered and is being used in bad faith.
For the reasons stated above, this Panel concludes that the requested relief should be denied.
Accordingly, it is Ordered that the domain name <porntrumps.com> not be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 11, 2001
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