DECISION

 

Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Netfuse, Inc.

Claim Number: FA0111000101822

 

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 Netfuse, Inc., Washington , DC (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <trump-casino-online.com>, registered with Intercosmos Media Group.

 

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.

 

Hon. Ralph Yachnin 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 9, 2001.

 

On November 9, 2001, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <trump-casino-online.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 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@trump-casino-online.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 11, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <trump-casino-online.com> domain name is confusingly similar to Complainant's TRUMP mark.

 

Respondent has no 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 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 the disputed domain name on August 21, 2001.  Prior to receiving a cease and desist letter from Complainant Respondent made no use of the disputed domain.  After receiving the letter Respondent has used the disputed domain to redirect Internet users to Trump Casino's official website.

 

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 registration and use has established that it has rights in the TRUMP mark.  Furthermore, Respondent's <trump-casino-online.com> domain name is confusingly similar to Complainant's mark because it incorporates the entirety of Complainant's mark and merely adds the generic terms "casino" and "online."  Both of these terms are generic words associated with Complainant's casino business operations.  It has been found that the addition of generic terms associated with Complainant's business to Complainant's mark do not create a distinctive mark capable of defeating 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 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).

 

Furthermore, the addition of hyphens to separate words does not create a distinctive mark capable of defeating a claim of confusing similarity.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).

 

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 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).

 

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 the <trump-casino-online.com> domain name 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).

 

There is no evidence, and Respondent does not refute, 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”).

 

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

 

Registration and Use in Bad Faith

The <trump-casino-online.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <trump-casino-online.com> domain name despite confusing similarity is evidence of bad faith.  See 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, 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 <trump-casino-online.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

 

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 domain name <trump-casino-online.com>, be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Suprme Court, NY (Ret.)

 

Dated: December 12, 2001