DECISION

 

Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Derek Atkin d/b/a Windsor Consultants

Claim Number: FA0109000099679

 

PARTIES

The Complainants are Donald J. Trump and Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainants”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley, LLP.  The Respondent is Derek Atkin d/b/a Windsor Consultants, Tucson, AZ (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <trumphotels.com> and <trump-hotels.com>, registered with Network Solutions, 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.

 

Alan L. Limbury as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 6, 2001; the Forum received a hard copy of the Complaint on September 7, 2001.

 

On September 10, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <trumphotels.com> and <trump-hotels.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 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@trumphotels.com and postmaster@trump-hotels.com by e-mail.

 

A timely Response was received and determined to be complete on September 20, 2001.

 

A timely Additional Submission was received from Complainants on September 26, 2001.

 

On October 16, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

 

RELIEF SOUGHT

Complainants request that the domain names be transferred from Respondent to Trump Hotels & Casino Resorts, Inc.

 

PARTIES’ CONTENTIONS

A. Complainants

Mr. Donald J. Trump is the owner of numerous famous and distinctive trademarks containing the name TRUMP, which he licenses to Trump Hotels & Casino Resorts, Inc. ("Trump Casino"), which has used those marks since 1984 in commerce in connection with casino, hotel and entertainment services. The TRUMP mark has been registered in the United States with the Patent and Trademark Office and has achieved "incontestable" status.

 

Trump Casino maintains a presence over the Internet by operating several websites using the TRUMP marks, including <Trump.com>, <Trumptaj.com>, <Trumpplaza.com>, <Trumpmarina.com>, and <Trumpindiana.com>.

 

Complainants have invested millions of dollars in promoting the TRUMP name and marks and building Trump Casino's reputation and goodwill.

 

On or about 8 January, 2000 Respondent registered the contested domain names, both of which resolve to the "Meeting City" web site, which states that it is the "world's largest meeting and event planners consortium".  One of the services the site offers is to arrange hotel accommodation for conferences and meetings.

 

Respondent has no connection or affiliation with Complainants and has not received any licence or consent, expressed or implied, to use Complainants’ trademark in a domain name or in any other manner. There is no evidence that Respondent has any trademark or other rights in the name TRUMP.

 

In November 2000, in response to a cease and desist letter from Complainants, Respondent claimed that in 1997, he sent an e-mail to the Trump Organisation in which he discussed his intentions of using the URLs to promote Trump Hotels. Complainants can find no such correspondence and deny ever having permitted Respondent to use the TRUMP mark. 

 

The contested domain names are confusingly similar to Complainants' TRUMP mark.  Respondent has no rights or legitimate interests in the contested domain names, which were registered and are being used in bad faith.  The fame of the TRUMP mark suggests that Respondent knew when he registered the contested domain names that they infringed Complainants' TRUMP mark.

 

B. Respondent

The contested domain names were registered on July 31, 1997.  At this time no relevant trademarks were registered by Complainants.

 

Until January 2001, the contested domain names pointed to <trumphotels.com>, a web site set up at considerable expense.  This was agreed to in 1997 by a female executive of the Trump organisation.  When we e-mailed to inquire if they wanted these domains before we continued, we were informed that they had sufficient URLs and good luck with the websites.  This situation is far from unusual in the travel/meeting/event industry and we have similar agreements with other suppliers.  We have no written record of the communication taking place.  This is due only to bad record keeping on our behalf.  The Internet was a very informal and different place in 1997.

 

After receiving a complaint from representatives of the Trump organisation more than three years after we initiated the web site, we closed it down and since early 2001 the domains have been "parked" and when typed, are redirected to The Meeting Alliance website at <WindsorConsultants.com>.  This "parking" also applies to other URLs.  We continue to offer a selection of Trump facilities, among thousands of others, in our hotel directory and a direct link to their <trump.com> website at no charge.  The charge for this link is normally $995 per annum.  We do not receive any commissions or fees as reservations are made directly.  Our web site is supported mainly by advertising and outsourcing to third parties.

 

Although we have no formal affiliation or connection with Complainants, many thousands of instances can be found on the Internet of third parties promoting products/services for major suppliers of hotels, casinos, cruise lines and others in directories, by domains, URL extensions, live links etc.

 

We have attempted to comply with all the requests made by the representatives of Complainants.  It was not necessary for us in 1997 to offer them the domains at our cost, as we did, and we resent their bullying tactics now they have discovered an interest in the domains.

 

Complainants have not proved the three elements required to be proved under the Policy.

 

C. Additional Submission by Complainants

Respondent’s registration and use of Complainants’ famous mark is a blatant attempt to trade on the goodwill and fame associated with the TRUMP mark for Respondent’s commercial advantage. 

 

Legitimacy

Complainants deny that Respondent had the permission of a "female executive of the Trump organisation" to set up a web site using the Trump name.  Respondent fails to provide any support for this contention and concedes Respondent has no formal affiliation or connection with Complainants.

 

Providing a direct link to Complainants’ web site does not establish a legitimate interest in the contested domain names.  Respondent never sought nor received Complainants' permission to use the contested domain names for any purpose.  Respondent is benefiting from its unauthorised use of Complainants’ TRUMP mark.

 

Because Respondent is linking the contested domain names to a Web site that offers commercial services which compete with Complainants, Respondent’s use of the contested domain names is neither a legitimate noncommercial use nor a fair use. 

 

Bad faith

Respondent admits that it links the contested domain names to Respondent’s “Meeting Alliance” Web site, which offers meeting and hotel accommodations information. This is an attempt to “attract, for commercial gain, Internet users to Respondent’s website . . . by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s web site or . . . of a . . . service on Respondent’s web site.” 

 

Even accepting Respondent’s contentions as true, Respondent states that he  “e-mailed [Trump] to inquire if they wanted these domains before we continued . . . .”  This attempt to sell the contested domain names back to Complainants is proof positive that Respondent registered and was attempting to sell the domain names in bad faith.

 

Although Respondent contends that it offers “thousands” of facilities in its “hotel directory,” it appears that Complainants’ mark is the only famous hotel mark registered by Respondent in a domain name.  Panels repeatedly have found that the misdirection of consumers to a competitor’s             infringing site constitutes bad faith use. 

 

Because Respondent’s site contains competitive services, namely hotel accommodations, an Internet user who inadvertently arrives at the “Meeting Alliance” site operating under the Domain Names might utilize Respondent’s services instead of continuing a search for Complainants’ goods and services, or assume that Complainants endorse or sponsor the “Meeting Alliance” site. 

 

Finally, Respondent attempts to defend its use by arguing that its unlawful conduct is not uncommon, and therefore permissible.  It is irrelevant that third parties engage in similar unauthorized conduct.  What is relevant is that Respondent is profiting from its infringing use of Complainants’ TRUMP mark in domain names that link to a site offering competing services, namely hotel accommodations.  Respondent is therefore using the contested domain names in bad faith to drive Internet traffic to its commercial Web site.  Such use is likely to deceive or mislead the public into believing that Respondent’s site is associated or affiliated with, or sponsored or endorsed by, Complainants, and thus infringes Complainants’ rights in their marks in violation of Section 43 of the Lanham Act, 15 U.S.C. §1125.

 

FINDINGS

Exhibit A to the Complaint is a listing of TRUMP trademark registrations in the United States, which reveals that the mark TRUMP was first used in commerce in relation to hotel services on June 12, 1995 and was registered on April 20, 1999.

 

The contested domain names were both registered in 1997, two years after Complainants’ first use in commerce of the mark TRUMP in relation to hotel services.  Since the word Trump has a descriptive connotation, its acceptance for registration in April 1999 demonstrates that, by then, it had acquired distinctiveness in relation to hotel services provided by Complainants. By the time the contested domain names were registered, the trademark TRUMP had been used for two years by Complainants in relation to the provision of hotel services.  The Panel finds that Complainants had by then acquired common-law trademark rights in the word TRUMP.

 

Each of the contested domain names is confusingly similar to the trademark TRUMP in which Complainants have rights.

 

Respondent has no rights or legitimate interest in the contested domain names.

 

The contested domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that a 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

Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks.[1]

 

Essential or virtual identity is sufficient for the purposes of the Policy.[2]

 

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark.[3]  Here each contested domain name incorporates the whole of the Complainants’ trademark TRUMP, together with the descriptive word HOTEL, a word associated in the public mind with Complainants’ activities. Neither the hyphen in one of the contested domain names nor the gTLD ”.com” in both of them detract from the distinctiveness of the word TRUMP.

 

Each of the contested domain names is confusingly similar to the trademark TRUMP. Complainants have established this element.

 

Rights or Legitimate Interests

Respondent has not been commonly known by either of the contested domain names and has no formal affiliation or connection with Complainants. Respondent has linked the contested domain names, both of which wholly incorporate Complainants’ mark, to Web sites which have offered hotel services in competition with the services offered by Complainants.  This is not a bona fide offering of services[4]. 

 

According to Respondent, within six months of having registered the contested domain names, he contacted Complainants to ascertain whether Complainants wanted them.  The conclusion is inescapable that Respondent was aware of the TRUMP mark when he registered the contested domain names. It is thus apparent that Respondent’s sites, to which the contested domain names have been directed at various times, have been intended to attract Internet users because of the reputation of the TRUMP mark. Respondent is and has been trading off Complainants’ goodwill in so doing.

 

Respondent seeks to demonstrate a legitimate interest in the contested domain names by asserting that he sent an e-mail to Complainants in 1997 (shortly after having registered the contested domain names, it seems) enquiring whether Complainants wanted them “before we continued” and that he was granted permission by an executive of Complainants’ organization to use those domain names for websites. Respondent admits that it has no evidence in support of these assertions, which Complainants strenuously deny.  Having regard to the importance of domain names in today’s environment, Respondent’s account seems implausible.  However, as Respondent points out, the Internet was a very different place in 1997.   Even taking this into account, as the Panel does, Respondent’s claim to have been given permission to use the contested domain names is inconsistent with Respondent’s own version of events, as explained below. 

 

Respondent states that, over three years after permission was granted by an executive of Complainants for Respondent to operate the website <trumphotels.com>, which had been set up at considerable expense, Complainants complained, as a result of which Respondent closed down that Web site. 

 

Had Respondent been given permission by Complainants to establish and operate that Web site, one would have expected Respondent to have ignored or rejected the complaint or to have sought compensation for the expense incurred in setting up the website in reliance upon that permission.  Instead Respondent closed the web site down and does not appear to have made any such claim.

 

On the material before the Panel, the Panel finds that Respondent had no permission at any time to use Complainants’ trademark TRUMP nor to register or use any domain names incorporating that trademark.

 

The Panel finds Complainants have established this element.  Respondent has no rights or legitimate interest in the contested domain names.

 

Registration and Use in Bad Faith

A finding of bad faith may be made where a respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name.[5]  The Panel has found that Respondent must have known of the TRUMP mark before he registered the contested domain names.

 

Given that knowledge and the finding that Respondent had no permission to use the mark TRUMP in any domain names, it is clear that Respondent has attempted to attract Internet users to his web site by creating confusion with Complainants’ mark, for commercial gain. Under paragraph 4(b)(iii) of the Policy, such use is evidence of both bad faith registration and bad faith use.

 

Complainant has established this element.

 

DECISION

For the reasons set forth above, the Panel concludes that Complainants are entitled to relief under paragraph 4(i) of the Policy and it is therefore ordered that the domain names <trumphotels.com> and <trump-hotels.com> be transferred to Trump Hotels & Casino Resorts, Inc.

 

 

Alan L Limbury,  Panelist

 

Dated: October 24, 2001

 

 

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