WIPO Domain Name Decision: D2005-0918

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Donald J. Trump v. Daniel Maciel

Case No. D2005-0918

1. The Parties

The Complainant is Donald J. Trump, New York, New York, United States of America, represented by Proskauer Rose LLP, United States of America.

The Respondent is Daniel Maciel, Columbus, Ohio, United States of America, represented by Stein, Chapin & Associates, LLC, United States of America.

2. The Domain Names and Registrar

The disputed domain names <trumplending.com> and <trumploans.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2005. On August 30, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 30, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 28, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2005. The Response was filed with the Center on October 24, 2005.

The Center appointed William R. Towns as the Sole Panelist in this matter on November 7, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a well-known real estate developer and businessman, who is also widely known for his “reality” television show “The Apprentice”. The Complaint owns a number of registered trademarks incorporating the TRUMP name in connection with his business and real estate services (hereinafter referred to as the “TRUMP marks”).¹ He has also filed an intent-to-use trademark application for TRUMP MORTGAGE respecting mortgages and mortgage brokering.²

The Respondent registered the disputed domain names on July 27, 2004. Since that time, the Respondent has made no active use of the domain names. Rather, the domain names resolve to parked web pages provided by the domain name registrar, offering the disputed domain names for sale, and providing contact information for the Respondent. The Respondent in April 2005 offered to sell the domain names to the Complainant for 75,000 United States dollars.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names <trumplending.com> and <trumploans.com> are confusingly similar to his TRUMP marks. The Complainant maintains that he has invested substantial amounts of money and effort in establishing the TRUMP brand as a trademark for his business and real estate services, and that due to these efforts and the high-profile nature of the Complainant’s activities, the TRUMP mark has become widely recognized as an exclusive identifier of services offered by the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent’s bad faith registration and use of the domain names is shown by the Respondent’s failure to make any active use of the domain names for well over a year, his offering of the domain names for sale on parked web pages, and the Respondent’s attempts to sell the domain names to the Complainant at an exorbitant price well in excess of his out-of-pocket costs in registering the domain names. The Complainant further contends that the Respondent registered and has attempted to use the domain names as leverage for establishing a business relationship with the Complainant.

B. Respondent

The Respondent claims that he has been actively engaged in the mortgage and real estate lending business for more than ten years, that he obtained the disputed domain names as part of his ongoing mortgage and lending business, including internet based lending services, and that he has plans to develop new internet lending businesses using the domain names. The Respondent argues that the Complainant does not have the exclusive right to use “trump” in a domain name, and that the Complainant is not currently in the business of mortgages and real estate lending. The Respondent further states that he is using the word “trump” in the disputed domain names in the common and ordinary sense of the word, and not in relation to the Complainant or the Complainant’s mark.

In view of the foregoing, the Respondent asserts that no confusing similarity exists between the disputed domain names and the Complainant’s mark, and that he has rights or legitimate interests in the disputed domain names. The Respondent further maintains that his registration and use of the domain names under the circumstances described above does not constitute bad faith under the Policy. He avers that he did not register the disputed domain names primarily for purposes of selling them, and that his willingness to sell the domain names arose only by virtue of the Complainant contacting him regarding the sale of the domain names.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the TRUMP marks, in which the Complainant clearly has established rights through registration and use. See Lockheed Martin Corporation. v. Dan Parisi, WIPO Case No. D2000-1015; The Salvation Army v. Info-Bahn, Inc., WIPO Case No. D2001-0463. The critical inquiry under the first element of paragraph 4(a) is simply whether the mark and domain names, when directly compared, have confusing similarity. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (domain name incorporating mark in its entirety is confusingly similar). The Panel finds that to be the case here. Accordingly, the Complainant has met his burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant clearly has not authorized or consented to the Respondent’s use of the TRUMP mark. The distinctive quality of the TRUMP mark, as evidenced by registration and use, is beyond question. The Respondent does not deny that he was familiar with the Complainant, his services and the TRUMP mark when he registered the disputed domain names, and nothing in the record reflects that the Respondent has ever been commonly known by the disputed domain names. Further, since registering the disputed domain names in July 2004, the Respondent has made no use of the domain names in connection with any offering of goods or services. Instead, the disputed domain names resolve to parked web pages where the domain names are offered for sale. The Complainant also has submitted evidence that the Respondent offered to sell the domain name to him for USD 75,000, although the Respondent claims he entertained no thought of selling the domain names until contacted by the Complainant.

In view of prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025, the Panel in this case is persuaded that a prima facie showing has been made for purposes of paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. See also Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020. Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain names, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes for the reasons set forth below that the Respondent has failed to make a sufficient showing under paragraph 4(c)(iii) of the Policy to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent clearly has not been commonly known by the disputed domain names. It is equally clear that the Respondent is not making any noncommercial use of the domain names. And while the Respondent asserts that he acquired the domain names for use in connection with an internet based real estate lending business, he nevertheless has attempted no such use of the domain names since their registrations in July 2004, and he has submitted no evidence of any demonstrable preparations to use the disputed domain names for this purpose or in connection with any other offering of goods or services.

Accordingly, the Respondent has not demonstrated rights or legitimate interests in the disputed domain names under the specific provisions of paragraph 4(c) of the Policy. But the Respondent argues that he has rights or legitimate interests in the domain names because “trump” is a common word in which the Complainant cannot assert exclusive rights. Under certain circumstances a respondent may be entitled to register and use a domain name consisting of a commonly used descriptive word, even where the domain name is confusingly similar to the registered mark of the complainant. See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843. It is clear, however, that the respondent must use the domain names not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered by the respondent at his website. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.

If the Respondent in this case had established his use or even demonstrable preparations to use the disputed domain names in a descriptive sense in connection with a bona fide offering of goods or services,³ the Panel might be inclined to agree with the Respondent’s assertion of rights or legitimate interests. But the Respondent has not done so. Nor, for that matter, has the Respondent demonstrated that the domain names could be used in a descriptive sense with respect to the services in question. On balance, the circumstances of this case point to the Respondent’s registration of the domain names in an attempt to trade on the goodwill created in the Complainant’s mark. Consequently, the Respondent has not rebutted the Complainant’s prima facie showing, and the Panel finds that the Complainant has met his burden under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The overriding objective of the Policy is to prevent abusive domain name registrations and use for the benefit of legitimate trademark owners, in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

Thus, the Panel notes that the examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Respondent’s claim that he registered the disputed domain names for use in connection with internet based mortgage and real estate lending services is completely unsupported by any evidence of such use or of demonstrable preparations by the Respondent to do so. As a result, there also is no evidence in the record of the Respondent’s use of the disputed domain names in a descriptive sense, assuming the domain names could be used in a descriptive sense in relation to the services described by the Respondent. On the other hand, the TRUMP mark is well known and distinctive with respect to the Complainant’s real estate related services, and the Respondent does not deny being aware of the Complainant’s rights in the TRUMP mark at the time he registered the disputed domain names. If, as the Respondent claims, he is in the business of providing mortgage and real estate lending services over the internet, he clearly would be in a position to appreciate that his use of the disputed domain names would divert internet users seeking information about the Complainant and his business and services to the Respondent’s website.

Given the totality of the circumstances of this case, the Panel concludes that the Respondent registered the disputed domain names in order to capitalize on the trademark or service mark value inherent in the TRUMP mark. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and the complainant’s mark or products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

The fact that the Respondent has passively held the disputed domain names since their registration in July 2004 does not preclude a finding of bad faith registration and use under the circumstances of this case. In the Panel’s view, there are sufficient similarities between mortgage and real estate lending services and the services for which the TRUMP mark serves as a source identifier that the Respondent’s use of the disputed domain names to attract internet users to a mortgage and real estate lending website would create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the Panel finds that the Complainant has met his burden under paragraph 4(a)(iii) of the Policy to demonstrate that the disputed domain names have been registered and are being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <trumplending.com> and <trumploans.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: November 20, 2005

¹ The Complainant’s registered marks include TRUMP TOWER, THE TRUMP ORGANIZATION, TRUMP INTERNATIONAL HOTEL & TOWER, THE TRUMP WORLD TOWER, TRUMP INTERNATIONAL PLAZA, TRUMP ROYALE, TRUMP PALACE, and TRUMP PARK AVENUE.

² The trademark application was filed on May 4, 2005.

³ In addition, the Panel notes that in any event there can be no bona fide offering of goods or services under the Policy where the disputed domain name has been registered and is being used in bad faith. See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840.