DECISION

 

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

Claim Number: FA0109000099715

 

PARTIES

The Complainants are Donald  J. Trump and Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP.  The Respondent is Quang  Nguyen, Allentown, PA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trumptajmahal.com>, registered with Tucows, Inc..

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, and has no known conflict in serving as Panelist in this proceeding.

 

Panelist is Judge Karl V. Fink (Retired).

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 17, 2001; the Forum received a hard copy of the Complaint on September 18, 2001.

 

On September 20, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <trumptajmahal.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 September 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 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@trumptajmahal.com by e-mail.

A timely response was received and determined to be complete on October 9, 2001.

 

Complainants submitted an additional submission which was considered by the Panel.

 

On October 18, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainants

Trump Hotels & Casino Resort, Inc. (“Trump Casino”), is the sole licensee of numerous marks containing the TRUMP name used in connection with casino and entertainment services, including TRUMP TAJ MAHAL CASINO RESORT. The Licensor and owner of the marks in Donald J. Trump.

 

For decades, Trump Casino has used the distinctive TRUMP and TRUMP TAJ MAHAL names and marks in commerce in connection with casino and hotel services.

 

The TRUMP and TRUMP TAJ MAHAL CASINO RESORT marks have been registered in the United States with the Patent and Trademark Office, and have achieved “incontestable” status.

 

Trump Casino maintains a significant presence over the Internet. Trump Casino operates several websites using the Trump marks. Through Trump Casino’s longstanding use of the Trump marks, the public has come to expect domain names and Web addresses incorporating TRUMP or TRUMP TAJ MAHAL, or variations thereof, to be owned by Trump Casino. 

 

On or about April 1, 2000 the Respondent registered the domain name <trumptajmahal.com>.

 

The <trumptajmahal.com> website states it is “under construction”.

 

Respondent has no connection or affiliation with the Complainants, and has not received any license or consent, express or implied, to use the trademark in a domain name or in any other manner.

 

There is no evidence that the Respondent has any trademark or other rights in the TRUMP or TRUMP TAJ MAHAL names.

 

On September 6, 2000, the Complainants’ attorney sent a letter to the Respondent by registered mail, via fax and via e-mail, demanding the Respondent cease and desist use of <trumptajmahal.com>.  On September 11, 2000, Respondent e-mailed Complainants’ attorney and offered the <trumptajmahal.com> domain name for $500,000.

 

Respondent’s domain name is confusingly similar to Complainants’ TRUMP and TRUMP TAJ MAHAL CASINO RESORT marks because consumers associate those marks with casino and gaming services. 

 

Respondent has no legitimate interests in the domain name and has not used the marks lawfully to offer goods or services prior to notice of the dispute.

 

The fact that the Respondent provided false registration information supports a finding of bad faith.

 

B. Respondent

Complainant has abandoned his marks “taj mahal” in 1999, and “trump taj mahal” in 1996. Therefore, Complainant has no exclusive rights to the mark “trump taj mahal” anymore.

 

Respondent requested a small sum to compensate for its e-business loss in exchange for the Complainants’ interests in having a speedy transfer of the domain name.

 

Respondent requests the Panel to make a finding of reverse domain name hijacking.

 

Respondent’s business was built to provide services for e-commerce business to partners in Asia countries and in Vietnam.

 

The name of the business is “Tru’mp TajMahal dot com” and the website is www.trumptajmahal.com.  The Respondent’s business name is comprised of a word “Tru’mp” in Vietnamese language which means “leader”, another word “TajMahal” which imitated the name of the famous world wonder “Taj Mahal” in Asia (India). Respondent has not yet filed the trademark because “Tajmahal” is the spiritual name of the world wonder in Asia. 

 

The word Tru’mp is a popular name in Vietnamese language.  The Respondent’s grandfather was a landowner tycoon, and his nickname was “Tru’mp”.

 

C. Additional Submissions

Complainants’ Additional Response

Recently recognized by this Forum is a nearly identical case, in which it was held that the Respondent acted in bad faith in registering a domain name that is confusingly similar to the famous TRUMP and TRUMP TAJ MAHAL CASINO RESORT marks. See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Volk Amit d/b/a Café au Lait, FA 99688 (Nat. Arb. Forum Oct. 15, 2001).

 

Trump never abandoned the TRUMP TAJ MAHAL CASINO RESORT mark.

 

Respondent’s assertion that the term “tru’mp” in Vietnamese means “leader” is not genuine. A search of an online Vietnamese dictionary failed to yield any results for the term “tru’mp”.

 

Respondent has still failed to connect the Trump domain name to an active web site.

 

FINDINGS

For the reasons set forth below the Panel finds that the domain name should be transferred to Complainant, Trump Hotels & Casino Resorts, Inc.

 

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 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

The disputed domain name is confusingly similar to Complainants’ TRUMP TAJ MAHAL CASINO RESORT and TRUMP marks.  See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

 

Complainants, in their Additional Submission, have refuted Respondent’s allegation that the TRUMP TAJ MAHAL CASINO RESORT mark was abandoned.

 

The Panel finds Complainants have proven this element.

 

Rights or Legitimate Interests

The Panel finds Respondent has no rights or legitimate interests in respect to the disputed domain name because Respondent is not a licensee of Complainant, is not using the mark in connection with a bona fide offering of goods or services, or making a noncommercial or fair use of the disputed domain name.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

Respondent’s non-use of the disputed domain name since its registration constitutes passive holding, and establishes a lack of rights or legitimate interests in respect to the disputed domain name.  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 Complainants have proven this element.

 

Registration and Use in Bad Faith

The Panel finds that Respondent’s registration and passive holding of the disputed domain name is in bad faith. That registration by anyone other than Complainants using the distinctive and famous TRUMP mark is evidence of bad faith registration.  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 passive holding of the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  Respondent, in its Response, admits that there is no active website located at the disputed domain name.  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); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

 

Respondent’s offer to sell the disputed domain name to Complainant for $500,000 is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

 

The Panel finds that Complainants have proven this element.

 

DECISION

The Panel directs that the domain name <trumptajmahal.com> , as requested by Complainants, be transferred to Complainant Trump Hotels & Casino Resorts, Inc.

 

 

Judge Karl V. Fink (Retired), Panelist

 

Dated:  October 29, 2001