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Donald J. Trump v. Fountainhead Entertainment LLC [2004] GENDND 1326 (25 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Donald J. Trump v. Fountainhead Entertainment LLC

Case No. D2004-0429

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 Fountainhead Entertainment LLC, New York, New York, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <trumpice.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2004. On June 11, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 15, 2004, Network Solutions, LLC 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, billing, and technical contact. The Center verified that 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 June 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2004. The Response was filed with the Center on July 8, 2004, but sent by the Respondent on June 7, 2004, and therefore was filed on time. At the parties’ request, the proceeding was suspended in order to allow time for settlement discussions. By Panel Procedural Order dated October 25, 2004, the proceeding was reinstated.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 14, 2004. 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

Complainant Donald J. Trump is one of the most well-known real estate developers and businessmen in the U.S. He is also well known as the owner and operator of a number of casinos. Beginning in January 2004, Mr. Trump starred in the highly successful TV show The Apprentice.

On July 7, 2003, Mr. Trump filed an intent-to-use trademark application with the United States Patent and Trademark Office for the mark TRUMP ICE, as intended to be used on bottled water. The application was published on March 30, 2004. The TRUMP ICE product was initially distributed for sale on or about August 6, 2003.

On February 26, 2004, a new episode of The Apprentice aired on NBC. In that episode, the “apprentices” were charged with the task of selling TRUMP ICE.

On or about March 6, 2004, Respondent purchased the domain name <trumpice.com> for $2,266.00. On or about March 17, 2004, Complainant’s counsel contacted Respondent about the domain name and offered to pay Respondent’s out-of-pocket costs associated with the registration of the domain name (Exhibit A to Complaint). Complainant’s counsel, thereafter, offered to pay Respondent $2,266.00 for purchase of the domain name, but such offer was declined. In an email dated April 7, 2004, Respondent noted that it “focuses on developing interactive software for the gaming and online entertainment markets” and that, over the course of the past year, had “put heavy amounts of research and development towards new gaming concepts” (Exhibit B to Complaint).

5. Parties’ Contentions

A. Complainant

Complainant asserts that the domain name in issue is identical in substantive part to Complainant’s well-known TRUMP ICE mark. He further alleges that Respondent has no rights or legitimate interests in the domain name and registered and has used the domain name in bad faith. According to Complainant, Respondent has operated a web site located at “www.trumpice.com” that advertises a gambling bridge card game that is “coming soon.”

Complainant urges that the only purpose Respondent can have for using the domain name is to benefit from any Internet traffic from people looking for Mr. Trump’s bottled water product. Further, Complainant maintains, the use of the <trumpice.com> domain name can only have the effect of increasing or creating consumer confusion, given Mr. Trump’s high-profile activities as the owner and operator of several casinos. Complainant alleges that Respondent is using the domain name in an intentional attempt to attract, for commercial gain (either in the form of advertising for the site or in a fee-for-service arrangement in connection with the card game), internet users to an on-line location by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.

B. Respondent

Respondent does not contest that the domain name in issue is identical or confusingly similar to a mark in which Complainant has rights. However, Respondent asserts that it has rights and legitimate interests in the domain name.

Respondent argues that it purchased the disputed domain name for $2,266.00 to use for its planned online “Trump Ice: Grand Slam 32” bridge tournament venture. Unlike traditional bridge play, where 38 points are required for a grand slam, in “Trump Ice: Grand Slam 32,” only 32 points are required. According to Respondent, the name “Trump Ice” derives from the bridge term “trump” and 32 degrees, the freezing point of water.

Respondent argues that it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In support of such contention, Respondent submits, as Exhibit 2 to the Response, a comprehensive and detailed business plan for “Trump Ice: Grand Slam 32.” It contends that it has conducted substantial research and development and assembled an experienced management team for the venture.

With respect to the issue of “bad faith” registration and use, Respondent argues that there is no evidence that it purchased the domain name to sell to Complainant, nor is there evidence that it registered the domain name to disrupt Complainant’s business, to prevent Complainant from registering a domain name reflecting Complainant’s mark, or to confuse users. While Respondent concedes that it purchased the domain name after having seen a repeat episode of The Apprentice, which mentioned the TRUMP ICE bottled water product, it maintains that it coined the name prior to seeing the program. Respondent’s principal, Peter Simon, submitted a declaration¹ in support of such argument (Exhibit 1 to Response). It is Respondent’s position that while the domain name is similar to Complainant’s mark, such similarity “is strictly coincidental.” According to Mr. Simon, “I came up with the term Trump Ice: Grand Slam 32 independently, prior to ever hearing it anywhere.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes, and Respondent does not dispute, that Complainant, through its use of TRUMP ICE, has rights in the mark and that the subject domain name is, for all intents and purposes, identical to such mark.

B. Rights or Legitimate Interests

The Panel accepts Respondent’s contention that it adopted the “Trump Ice: Grand 32”name prior to having seen the episode of The Apprentice which mentioned TRUMP ICE bottled water. Respondent, however, does not contend that it was unaware of the TRUMP ICE product prior to coining the “Trump Ice: Grand 32” name. The evidence indicates that TRUMP ICE was available for purchase on or about August 6, 2003, although the record does not indicate to what extent such product was commercially available. Moreover, while Respondent may have come up with the term “Trump Ice: Grand Slam 32 “independently, prior to ever hearing it anywhere,” that does not necessarily mean that Respondent came up with the name without knowledge of Complainant’s use of the TRUMP name and mark in connection with the ownership of casinos. Indeed, the Panel finds that, given the fame of the TRUMP mark, as used in connection with casinos at which gambling, including card games, takes place, Respondent adopted its name with knowledge of Complainant’s involvement in the gambling industry. Mr. Simon’s declaration highlights the fact that he was the CEO of a leading sports gambling arbitrage company and that the other founders of Respondent had several years of experience in the online gaming industry.

Under such circumstances and given the undisputed fact that the disputed domain name is substantially identical to the TRUMP ICE mark, the Panel determines that Respondent cannot be found to have used the domain name in connection with a bona fide offering of goods and services. See eBay Inc. v. Hong, WIPO Case No. D2000-1633 (January 18, 2001) (“use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use”); J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262, NAF (September 7, 2000) (rights or legitimate interests do not exist when one has made no use of the web sites that are located at the domain names at issue).

While Respondent’s submission included a detailed and comprehensive business plan replete with marketing strategy and financial projections, the text of the plan suggests that it was not prepared until February 2004, which was right around the time the episode of The Apprentice aired in which contestants were assigned the task of selling TRUMP ICE. Thus, the Panel declines to accept such plan as evidence of a bona fide offering of goods or services prior to notice of the dispute.

Further, while it is clear that the term “trump” has descriptive connotations when used in connection with the game of bridge, the Panel cannot conclude that Respondent is making a legitimate fair use of the domain name. At least under U.S. trademark law, in order to qualify as “fair use,” the term in issue must be used “fairly and in good faith.” Give the Panel’s previous finding with respect to Respondent’s knowledge of Complainant’s use of the TRUMP mark in connection with casinos, the Panel concludes that Respondent’s use of the <trumpice.com> domain name was not in good faith. See Institute for Scientific Information, Inc. v. Gordon & Breach, Science Publishers, Inc., [1991] USCA3 523; 931 F.2d 1002 (3^rd Cir. 1991) (inference of lack of good faith may be drawn from defendant’s use with the intent to “trade upon and dilute the good will” represented by plaintiff’s mark); Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058 (S.D.N.Y. 1990) (court equated a lack of “good faith” with proof that defendant acted so as to capitalize on plaintiff’s trademark).

C. Registered and Used in Bad Faith

Finally, the Panel concludes that Complainant has established that Respondent registered and used the domain name in bad faith. Those individuals aware of Complainant’s TRUMP ICE product may be attracted to Respondent’s web site with the expectation of being able to find out more about such product. Upon arriving at such web site, such individuals will find reference to Respondent’s card game. Given the fame of the TRUMP mark in connection with casinos and gambling, such individuals are likely to be confused as to the source or sponsorship of the site, within the meaning of paragraph 4(c)(iv) of the Policy.

7. Decision

For all the foregoing reasons, the Panel orders that the domain name <trumpice.com> be transferred from Respondent to Complainant.

Jeffrey M. Samuels
Sole Panelist

Dated: October 25, 2004

¹ The Panel notes that such declaration is not sworn to under penalty of perjury. While there is no requirement under the applicable rules that a declaration be sworn to under penalty of perjury, this Panel is far more likely to accord weight to a sworn declaration than to an unsworn one.