DECISION

 

Donald J. Trump and Trump Hotels & Casino Resorts, Inc v. David Vogel d/b/a 2SeekNetwork Inc.

Claim Number: FA0109000099718

 

PARTIES

Complainant is Donald J. Trump and Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainant”), represented by Melissa L. Klipp, Esq. and Heather M. Hughes, Esq. of Drinker, Biddle & Shanley, LLP.  Respondent is 2SeekNetwork Inc., Pequannock, NJ (“Respondent”), represented by David Vogel.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <trumpbet.com>, registered with TierraNet Inc. (the “Domain Name”).

 

PANEL

The undersigned, Honorable Nelson A. Diaz, certifies that he has acted independently and impartially and to the best of his or her 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 17, 2001; the Forum received a hard copy of the Complaint on September 18, 2001.

 

On September 18, 2001, TierraNet Inc. confirmed by e-mail to the Forum that the domain name <trumpbet.com> is registered with TierraNet Inc. and that the Respondent is the current registrant of the Domain Name.  TierraNet Inc. has verified that Respondent is bound by the TierraNet 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 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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@trumpbet.com by e-mail.

 

A timely response was received from Respondent, but such response failed to meet all of the requirements of the Policy.

 

The Forum timely received an Additional Submission from Complainant on September 28, 2001.  The Forum received an Additional Submission from Respondent on October 2, 2001, but this submission failed to comply with the Forum’s Supplemental Rules.   Notwithstanding the failure of the Respondent’s response and Additional Submission to meet the aforementioned requirements, the Panel has chosen to consider the Respondent’s response and Additional Submission in reaching its decision.

 

Pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Nelson A. Diaz as Panelist.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that is the owner of the trademark TRUMP (which has been registered in the United States) and numerous other trademarks in connection with casino and entertainment services, and that it has used TRUMP and related trademarks in commerce since 1984.

 

Complainant maintains that the Domain Name is confusingly similar to Complainant’s trademark, TRUMP, in that consumers would expect the Internet site regarding the Domain Name to be sponsored by or affiliated with Complainant.

 

Complainant further maintains that Respondent has no rights or legitimate interests in the Domain Name.  Complainant asserts that Respondent is not licensed or otherwise authorized to use TRUMP, that Respondent can present no fair or noncommercial use of the Domain Name, and that Respondent has made no use of an Internet site in connection with a bona fide offering of any goods or services associated with the Domain Name.

 

Complainant also contends that Respondent registered, and is using, the Domain Name in bad faith.  Complainant contends that Respondent knew that Complainant’s rights in TRUMP were well-established when Respondent registered the Domain Name.

 

B. Respondent

In response, Respondent contends, among other things, that Complainant does not own and has not registered the Domain Name, and that Respondent does not represent to be affiliated with Complainant.  Respondent maintains that no live Internet site is operating with regard to the Domain Name.  Respondent further maintains that it is not violating any trademark rights of Complainant because the trademark TRUMP is limited to use in connection with casino and/or real estate goods and services and Respondent is not using the Domain Name for such markets. 

 

Respondent also contends that any entity may use the name “trump” in connection with purposes other than those with respect to which Complainant has registered TRUMP.  Respondent maintains that, if, as a result of these proceedings, the Domain Name is transferred to Complainant, such would be evidence that no person could use the word “TRUMPET,” which would be “ridiculous.”

 

C. Additional Submissions

Complainant responds to Respondent’s contentions by maintaining that Respondent’s registration and use of the Domain Name reflects Respondent’s attempt to trade on the goodwill and fame associated with TRUMP.

 

Respondent responds to Complainant’s response by contending that Respondent has “very little knowledge of the ‘Famous TRUMP Mark,’” and that Respondent therefore registered the Domain Name in good faith to create an auction site to operate with respect to the Domain Name.  Respondent also contends that it “has invested thousands of dollars in programming and developing the auction script to be used for [the Domain Name]” and that the site to be operated under the Domain Name is “very close to completion,” but provided no evidence in support of these contentions.  

 

FINDINGS AND DISCUSSION

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 has rights in and to the trademark, TRUMP, as evidenced by its U.S. registrations for such mark (Reg. No. 2240310, in connection with hotel services; Reg. No. 2413984, in connection with spring water; and, Reg. No. 1617996, in connection with air transportation services).  Complainant also has rights in and to other trademarks incorporating the word TRUMP (for example, TRUMP CASINO, Reg. No. 2110542, in connection with casino services; TRUMP CARD, Reg. No. 2414739, in connection with a customer recognition program in the nature of an incentive card for use in hotel, casino, and resort facilities; TRUMP CASTLE, Reg. No. 1557303, in connection with entertainment services, namely, providing casino services; TRUMP MARINA and design, Reg. No. 2441215, in connection with casino and hotel services; and, TRUMP PLAZA, Reg. No. 1620477, in connection with casino services) (the “Other TRUMP Marks”).

 

The Panel finds that, not only is the Domain Name similar to TRUMP and the Other TRUMP Marks, but the Domain Name is confusingly similar to TRUMP and the Other TRUMP Marks.  But for the fact that the Domain Name includes the additional suffix “bet,” the Domain Name is identical to TRUMP.  The Domain Name is quite similar to the Other TRUMP Marks as well, differing only in the suffix, for example and most notably, “bet” versus “casino” and “card.” 

 

The Panel further finds that consumers of Complainant’s services, especially casino and entertainment and related services, would expect to find services or products offered by Complainants in connection with the Domain Name.  After all, “bet” is virtually synonymous with casinos, gambling institutions, and card games.  Further supporting Complainant’s contentions, since consumers cannot always ascertain the products or services offered at or by a particular Internet site solely based on the site’s domain name, they often look to the domain name as an indicator of the content or purpose of the site.  Under the circumstances, Internet users likely would go to the site associated with the Domain Name expecting to find products or services of Complainant.

 

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name, proffering that Respondent possesses no license or authority from Complainant to use TRUMP in connection therewith. 

 

Notwithstanding the existence of any potential claims to the Domain Name that Respondent might have, Respondent did not “demonstrate [its] rights or legitimate interests to the domain name,” as set forth in Paragraph 4(c) of the Policy.  The Domain Name presently is not associated with a live Internet site, Respondent has provided no evidence that it is commonly known by the Domain Name, and Respondent has not suggested that it is making (or even intends to make) noncommercial or fair use of the Domain Name.  Furthermore, Respondent’s allegations that it “has invested thousands of dollars in programming and developing the auction script to be used for [the Domain Name]” and that the site to be operated under the Domain Name is “very close to completion” do not rise to the level of “demonstrable preparations” required under Paragraph 4(a)(ii) of the Policy.  

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

 

Registration and Use in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, for Complainant to successfully prove its case in the instant proceeding, it must show that the Domain Name has been registered in bad faith and is being used in bad faith.  Considering all of the evidence, the Panel finds that Respondent has registered and used the Domain Name in bad faith. 

 

First, the Panel finds that circumstances surrounding Respondent’s registration of the Domain Name support a finding of bad faith.  Although Respondent may have registered the Domain Name with “very little knowledge” of the trademark TRUMP, by inference Respondent did do so with at least some knowledge of the trademark.  It is beyond serendipity that the words which make up the Domain Name – “trump” and “bet” – denote gambling and casino-related services.  As the Domain Name mimics the Other TRUMP Marks in syllabic content, word order, and style, the Panel finds that the registration was in bad faith.  See Brown & Bigelow, Inc. v. Bostjan Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (domain name at issue includes registered trademark of Complainant in connection with gaming services (“HOYLE”), followed by generic gaming term (“casino”)).

 

Second, regarding the latter element of Paragraph 4(a)(iii), it is true that the Domain Name presently is not being “used,” in the traditional sense of the word.  However, Paragraph 4(b) of the Policy makes clear that actual use of a domain name as an address at which a live Internet site is located is not required to meet the elements of Paragraph 4(a)(iii) of the Policy.  Namely, subparagraphs (i), (ii), and (iii) of Paragraph 4(b) – which subparagraphs set forth circumstances providing “evidence of the registration and use of a domain name in bad faith” – make no reference to such actual use.  Instead,  Paragraph 4(b) provides for a finding of bad faith under other, appropriate circumstances.  See, e.g., Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2001).  This Panel finds that such circumstances exist here.

 

Respondent contends that it will operate an auction site in association with the Domain Name, and that it has made a significant financial investment in programming and developing such site.  It is apparent to this Panel that any such use of the Domain Name and associated website will attract Internet users searching for goods or services associated with Complainant’s, TRUMP and other TRUMP Marks.  Under the circumstances, this Panel is compelled to find that there could never be any good faith use of the Domain Name by Respondent. 

 

In light of the foregoing, this Panel finds that the Domain name has been registered and is being used in bad faith.

 

DECISION

This Panel has determined that:  (i) the Domain Name is confusingly similar to a trademark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

 

In accordance therewith, this Panel decides that Respondent shall transfer the Domain Name, <trumpbet.com>, to Complainant.

 

 

Honorable Nelson A. Diaz, Panelist

 

Dated: November 2, 2001