Donald J.
Trump and Trump Hotels & Casino Resorts, Inc. v. Volk Amit d/b/a Cafe au
Lait
Claim Number: FA0109000099688
PARTIES
Complainant is Donald J. Trump Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley LLP. Respondent is Volk Amit Cafe au Lait, New York, NY (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <trumpplazahotel.com>, registered with Network Solutions, Inc.
PANEL
On October 9, 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 September 10, 2001; the Forum received a hard copy of the Complaint on September 11, 2001.
On September 11, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <trumpplazahotel.com> is registered with Network Solutions, Inc. and that 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 11, 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@trumpplazahotel.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 name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <trumpplazahotel.com> domain name is confusingly similar to Complainant's famous TRUMP and TRUMP PLAZA marks.
Respondent has no rights or legitimate interests in respect to the <trumpplazahotel.com> domain name.
Respondent registered and held the <trumpplazahotel.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a response.
FINDINGS
Since 1984, Complainant has used the TRUMP and TRUMP PLAZA marks in commerce in connection with casino, hotel and entertainment services. The marks have been registered with the U.S. Patent and Trademark office since 1990.
Complainant is the owner of several marks incorporating the word TRUMP, including TRUMP CASTLE, TRUMP CASINO, TRUMP'S CASTLE, TRUMP MARINA, and TRUMP INTERNATIONAL PLAZA. Complainant also maintains a significant presence over the Internet as the owner of several websites incorporating the TRUMP and TRUMP PLAZA marks including: <trump.com>, <trumptaj.com>, <trumpplaza.com>, <trumpmarina.com>, and <trumpindiana.com>. The Complainant has expended considerable time and money on these sites and marks and the public has come to expect that anything bearing the TRUMP mark on Internet is owned by Complainant.
Respondent registered the <trumpplazahotel.com> domain name on May 17, 1998. Upon typing the disputed domain name the Internet user is redirected to <escorts.net>. The <escorts.net> website says that it is a listing of thousands of "hot escorts and fantasy girls." The site arranges escorts in various cities across the United States and contains links to various pornographic sites. Respondent is not commonly known by the TRUMP or TRUMP PLAZA marks, nor does Respondent have a license or permission to use the trademarks as a domain name. Respondent has warehoused over fifty other domain names which he offers for sale to the public, and which have been the subject of other ICANN proceedings against him.
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 use, substantial efforts, and numerous federal registrations has established that it has rights in the TRUMP and TRUMP PLAZA marks. Furthermore, the <trumpplazahotel.com> domain name is confusingly similar to Complainant's mark because the Respondent has merely added the generic word "hotel" to the end of the Complainant's TRUMP PLAZA mark. It has been established that the use of generic terms does not defeat a claim of confusing similarity. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark).
The TRUMP and TRUMP PLAZA marks are so famous that an Internet user intending to access one of Complainant's sites would likely be confused and think that the <trumpplazahotel.com> domain is owned and operated by Complainant, or someone associated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
The Panel has discretion to find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent fails to submit a response. 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”).
Respondent's choice of a confusingly similar variation of Complainant's famous marks supports a finding of a lack of rights or legitimate interests. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark) OR (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
Furthermore, Respondent has used the Complainant's mark to attract Internet users to a website that displays and offers services related to adult material. It has been found that this kind of use does not create rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
Respondent is not commonly known by the TRUMP or TRUMP PLAZA marks pursuant to Policy ¶ 4(c)(ii) and therefore has no rights or legitimate interests. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
Furthermore, Respondent can present no fair use or noncommercial use of the domain name pursuant to Policy ¶ 4(c)(iii) because <trumpplazahotel.com> is used only to redirect Internet users to <escorts.net> an unconnected website. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel finds that Policy ¶ 4 (a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent registered the <trumpplazahotel.com> domain name in bad faith because he knew of the Complainant's famous marks when he registered the domain name. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Furthermore, the registration and use of a disputed domain name to redirect Internet users to websites offering pornographic material supports a finding of bad faith. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).
Respondent has registered over fifty other domain names that infringe on other famous trademarks. It has been held that a pattern of conduct contributes to a finding of bad faith. See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in 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 <trumpplazahotel.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: October 15, 2001
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