DECISION

Donald J. Trump and Trump Hotels & Casino Resorts Inc v. Grupo Mundo SA

Claim Number: FA0112000102814

PARTIES

Complainant is Donald J. Trump and Trump Hotels & Casino Resorts, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP.  Respondent is Grupo Mundo S.A., San Jose, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <donaldtrumpcasino.com>, <trumpcasinosports.com>,

<trumpsports.com> and  <trumpoffshore.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 11, 2001; the Forum received a hard copy of the Complaint on December 12, 2001.

On December 12, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <donaldtrumpcasino.com><trumpcasinosports.com>

<trumpsports.com><trumpoffshore.com> are 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 December 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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@donaldtrumpcasino.com, postmaster@trumpcasinosports.com, postmaster@

trumpsports.com, postmaster@trumpoffshore.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.

On January 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant urges the following:

The <donaldtrumpcasino.com>, <trumpcasinosports.com>, <trumpsports.com>, <trumpoffshore.com> domain names are confusingly similar to Complainant's TRUMP mark.  Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not file a Response in this proceeding.

FINDINGS

Since 1984, Complainant has used the TRUMP mark in commerce in connection with casino and entertainment services.  Complainant has invested millions of dollars into promoting the TRUMP mark and building the reputation and goodwill of the services provided under the mark.  The mark has been registered in the United States with the Patent and Trademark Office, and in addition, Complainant maintains numerous other marks including the word TRUMP to designate services ranging from casinos to golfing.

Complainant also has a significant presence over the Internet.  Complainant operates several websites incorporating its various marks including: <trump.com>, <trumptaj.com>, <trumpplaza.com> and <trumpmarina.com>.  Through Complainant's longstanding use of the TRUMP mark in domain names and Web addresses the public has come to expect that domain names incorporating the TRUMP mark belong to Complainant.

Respondent registered the disputed domain names on July 12, 2001.  Respondent is not affiliated with Complainant.  Respondent has not developed a website at any of the disputed domain names.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

Complainant, through registration and use, has established that it has rights in the TRUMP mark.  Furthermore, Respondent's <donaldtrumpcasino.com>, <trumpcasinosports.com>, <trumpsports.com> and <trumpoffshore.com> domain names are confusingly similar to Complainant's mark because they incorporate the entirety of Complainant's mark (and in one instance, the first name of the mark holder) and merely add the generic terms "casino", "sports" and "offshore."  It has been found that the addition of a generic term does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

Furthermore, the addition of a top-level domain indicator such as ".com" does not create a distinct mark capable of overcoming a claim of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Americna Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to and Legitimate Interests

Complainant has established its rights to and legitimate interest in the TRUMP mark.  Respondent’s failure to come forward with a Response permits the Panel to find that Respondent has no rights or legitimate interests in the disputed domain names.  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 use of  domain names confusingly similar to Complainant's mark to divert Internet users interested in Complainant to Respondent's website is not a bona fide offering of goods pursuant of Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

No evidence in the record suggests that Respondent is commonly known by the TRUMP mark and Respondent has not come forward to establish that it is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Furthermore, based on the fame of Complainant's TRUMP marks it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain names.  Any use by Respondent of the domain names, confusingly similar to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark.  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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in registering and using domain names that contain in its entirety the Complainant’s name and mark.  The <donaldtrumpcasino.com>, <trumpcasinosports.com>, <trumpsports.com> and <trumpoffshore.com> domain names are confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of confusingly similar domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See 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”).

Furthermore, because of the famous and distinctive nature of Complainant's TRUMP mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <donaldtrumpcasino.com>, <trumpcasinosports.com>, <trumpsports.com> and <trumpoffshore.com>  domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

Respondent has engaged in a pattern of registering infringing domain names.  It has been found that a pattern of such conduct is evidence of bad faith.  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also 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).

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 domain names <donaldtrumpcasino.com>, <trumpcasinosports.com>, <trumpsports.com> and <trumpoffshore.com> be transferred from Respondent to Complainant.

                                    Hon. Carolyn Marks Johnson, Panelist

Dated: January 16, 2002.

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