Complainant is Donald J. Trump of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
Respondent is Point Pub Liquors of Somers Point, New Jersey, United States of America, represented by Archer & Greiner, P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. On November 22, 2011, Respondent sent a communication to the Center and requested an extension to the due date for a Response. On November 29, 2011, the Center received an extension request to file a Response signed by both parties, according to which the new Response due date was December 12, 2011. The Response was filed with the Center on December 12, 2011. On December 16, 2011, Complainant sent a request to suspend the proceedings for 30 days. On December 19, 2011, the Center notified the parties and the registrar of the suspension of the proceedings until January 17, 2012. On December 21, 2011, Respondent sent a request to reinstitute the proceedings. On December 22, 2011, the Center acknowledged receipt of Respondent’s request and invited Complainant to comment thereon. On the same date, Complainant sent a communication to the Center asking for further information regarding the implications relative to a possible termination of proceedings. On December 23, 2011, Respondent sent a communication objecting to Complainant’s possible intention to terminate the proceedings. On the same date, Complainant sent a request to terminate the proceedings. On December 29, 2011, the Center sent a communication to the parties, where it stated that, in the event that one party requests a termination of commenced UDRP proceedings to which the other party objects, the Center, as a neutral dispute resolution provider, lacks the authority to consider such unilateral request of a termination of UDRP proceedings which have been formally commenced prior to Panel appointment. The Center, therefore, informed the parties that, pursuant to paragraph 6 of the Rules, it would proceed to appoint the Administrative Panel, which, on appointment, would assume appropriate authority with respect to the conduct of proceedings under paragraph 10 of the Rules, as well as to consider any requests for termination, whether on grounds of settlement or otherwise under paragraph 17 of the Rules. On January 3, 2012, Respondent sent a formal objection to the Complainant’s request to terminate the proceedings. On January 6, 2012, the Center received a supplemental filing from Complainant. On January 9, 2012, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion. On January 9, 2012, the Center received a supplemental filing from Respondent. On the same date, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 13, 2012. 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 (Trump) is one of the world’s most famous real estate developers, hoteliers, authors and television personalities. Trump’s portfolio includes residential real estate, commercial real estate, golf courses, casinos, hotels, and other properties across the United States and around the world. Trump’s portfolio also includes several ventures in the food, alcohol and beverages industries, such as “Kluge Estate Winery and Vineyard”, “Trump Vodka”, “Trump Chocolate”, “Trump Tea”, “Trump energy drinks”, and “Trump Ice bottled water”. Trump licenses his TRUMP mark to top-shelf vodka sold around the world and operates an interactive website, “”, where users create personalized cocktails with “Trump Vodka”.
Trump is the owner of the TRUMP name and associated marks for various goods and services offered under his name. Trump first registered the TRUMP mark in the United States in 1999. Through the widespread, extensive use of the TRUMP trademark in connection with Complainant’s various businesses and the expenditure of large sums in promoting the TRUMP brand on television, in print advertisements, on the Internet and in other media, Complainant’s TRUMP mark has become uniquely associated with Complainant and his goods and services, and has attained considerable fame. As a result, Complainant’s TRUMP marks represent enormous goodwill.
Previous panels in UDRP proceedings have recognized Complainant’s rights in the TRUMP mark and have ordered the transfer of disputed domain names to Complainant. See, e.g., Donald J. Trump v. Domain-Holdings,WIPO Case No. D2010-1671 (ordering the transfer of , and ); Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404 (ordering the transfer of ); Donald J. Trump v. Maciel,WIPO Case No. D2005-0918 (“The distinctive quality of the TRUMP mark, as evidenced by registration and use, is beyond question.”); Donald J. Trump v. Fountainhead Entertainment LLC,WIPO Case No. D2004-0429 (“Given the fame of the TRUMP mark… such individuals are likely to be confused as to the source or sponsorship of the site.”); Donald J. Trump v. Sandra Long Consulting,WIPO Case No. D2007-1226 (“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 mark be the Complainant.”).
Respondent registered the disputed domain name on August 26, 2007. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith.
Complainant contends that the disputed domain name is confusingly similar to the TRUMP marks. Complainant contends that the TRUMP mark has acquired distinctiveness and is famous both generally and in connection with the sale of beverages and alcohol. Complainant argues that he has rights to the TRUMP mark in connection with wine, as a natural expansion of the mark’s existing goods and services (e.g., bottled water, tea, vodka, and a vineyard). Complainant asserts that the disputed domain name is confusingly similar to Complainant’s TRUMP mark because it consists of the Complainant’s mark combined with a generic word: “wine.” The generic term “wine” does nothing to distinguish the disputed domain name from Complainant’s marks. Given the reputation and renown of Complainant and his marks, Complainant argues that most Internet users who see the disputed domain name are likely to immediately recognize Complainant’s mark, and assume that the disputed domain name and the website are associated with Complainant.
Complainant further contends that Respondent has no right or legitimate interest to its use of the disputed domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent to use Complainant’s mark in a domain name or in any other manner. Respondent’s only use of the disputed domain name is in connection with a parking page containing links to competitor websites so that Respondent can generate pay-per-click revenue. The use of a domain name to point to other websites to collect referral fees cannot be considered a bona fide offering of goods or services for a noncommercial or fair use. Complainant asserts that Respondent is trading for commercial gain on the good name of Complainant and unfairly attracting to its own business the substantial goodwill that Complainant has established over many years.
Complainant contends that Respondent’s use of the disputed domain name to generate pay-per-click revenue through links to Complainant’s competitors clearly establishes bad faith. Given the fame of Complainant’s mark, consumers are likely to believe that the disputed domain name is associated with Complainant. Likelihood of confusion is especially apparent considering the disputed domain name was registered after Complainant’s adoption of the TRUMPTINI mark and website. Complainant asserts that Respondent’s adoption and use of TRUMP is evidence of Respondent’s familiarity with the mark and recognition of its fame. B. Respondent
Respondent contends that wine is not a product for which Complainant or his TRUMP marks are well-known or trademarked, and thus consumers are unlikely to confuse Respondent’s domain name for Complainant’s or his TRUMP mark. Respondent notes that in Complainant’s allegations the TRUMP mark has acquired distinctiveness in connection with the sale of beverages, Complainant only cites “Trump Vodka”, “Trump Chocolate”, “Trump Tea”, and “Trump Ice” - none of which related to wine. Further, “Trump Vodka”, the only alcoholic beverage cited, has been recognized as number two on a list of Complainant’s top ten failures. Finally, Complainant himself recognized that the acquisition of his vineyard was motivated more by the value of the real estate than his interest in wine.
Respondent disputes the applicability of the natural expansion doctrine and notes the doctrine has equitable limitations such that a trademark owner cannot by the normal expansion of its business extend the use or registration of its marks to distinctly different goods or services not comprehended by its previous use. Respondent asserts that Complainant’s own actions in filing for separate registration of the TRUMP mark for protection in the United States for wine in Class 33 and vineyard and winery services in Class 44 evidence his recognition that those equitable limitations on the natural expansion doctrine prohibit a conclusion that the TRUMP mark should be afforded protection in Classes 33 and 44 by way of having been registered in various other classes. Accordingly, Respondent asserts that because Complainant was not involved in the wine industry when Respondent registered the disputed domain name , the inclusion of the term “wine” in the domain name distinguishes it from Complainant’s famed associations.
Respondent contends that its legitimate interest in the domain name is evidenced by the preparations it has taken in connection with using a name corresponding to to develop a private wine label. Respondent discusses the private wine label and its conception in the Response, but specifically requests that the Panel treat these materials as confidential, as Respondent believes in good faith these materials to be proprietary or commercially sensitive business information. The Panel agrees to honor Respondent’s request.
Prior to 2006, Respondent was operating under the name “Point Pub Liquors” as a package goods store and bar in Somers Point, New Jersey, United States. In 2006, Respondent began to focus exclusively on the retail sale of wine, transforming its bar into a wine bar at which wine tastings and wine educations classes could be conducted. In conjunction with this focus on wine, Respondent initiated plans to develop a private wine label and purchased the disputed domain name . Respondent asserts that it carried out the following preparations for the wine label: developed artwork for use in connection with the private wine label; Respondent’s director of operations, Michael Bray, joined a group of select retailers and sommeliers called WineMasters; and Mr. Bray travelled to California and Chile to study winemaking, marketing, and branding. However, in light of the economic downturn in 2008-2009, Respondent alleges that the private wine label was put on hold. Respondent subsequently rebranded its Somers Point location as “Passion Vines Wine bar and Spirit Co.” in 2008 and opened a second location in 2009.
Respondent contends there is no support for Complainant’s allegations that Respondent is using the domain name to misdirect Internet traffic to competing websites to generate pay-per-click revenue. Respondent asserts that when users type the URL for the disputed domain name into their Internet browsers, they are simply brought to the website “www.god” and Respondent has no control over the ads that appear on the page. Finally, Respondent contends that it is not using, nor preparing to use Complainant’s TRUMP mark in connection with the domain name in a way that would falsely suggest that Complainant is associated with the domain name. Respondent argues that the domain name is distinct from Complainant’s mark (by adding “wine”) and Respondent has no intention of utilizing the domain name to sell Complainant’s goods.
Respondent further contends that it has not registered the disputed domain name in bad faith. Respondent asserts it has never utilized the pay-per-click revenue as alleged and has yet to launch the site. Furthermore, Respondent asserts that it registered the Disputed Domain Name at a time when Complainant and his TRUMP mark were irrelevant in the wine industry, four years before Complainant purchased “Kluge Estate Winery”. Respondent further states that it is without information regarding whether it registered the disputed domain name two years after Complainant’s adoption of the TRUMPTINI mark and website, but notes that the TRUMPTINI mark was not registered until January 2008. Finally, Respondent argues that the concept for Respondent’s private wine label had nothing to do with Complainant, but rather was rooted in Michael Bray’s personal story, which is to remain confidential. 6. Discussion and Findings
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
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:
(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;
(ii) the 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. A. Preliminary Issues: Termination without Prejudice and Supplemental Filing
Complainant’s request to voluntarily terminate the proceedings without prejudice, to which Respondent objected, is denied. Rules paragraphs 17 and 18 address the termination of proceedings, but both paragraphs are inapplicable to applications for voluntary termination. Pursuant to paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality. Allowing Complainant to withdraw without prejudice at this point in the proceeding, after Respondent has invested significant time and money defending its position, would be unfair to Respondent, as nothing would prevent Complainant from reinitiating the proceedings at any time in the future. See Creo Products Inc. v. Website in Development,WIPO Case No. D2000-1490 (noting that dismissing a case without prejudice should be avoided wherever possible because it provides no finality to the dispute and respondent is left without protection against opportunistic and unmeritorious refiling).
As to the parties’ supplemental filings, paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. Under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
Several panel decisions have addressed whether paragraph 12 of the Rules should be construed as precluding acceptance of additional unsolicited submissions. The panels in J.P.Morgan v. Resource Marketing, WIPO Case No. D2000-0035 and Easyjet Airline Co., Ltd. v. Steggles,WIPO Case No. D2000-0024 refused to admit the materials because paragraph 12 of the Rules provides for submissions only at the panel’s request and the Rules provide no express provision allowing unsolicited submissions. The panels in Viz Communications, Inc. v. Redsun dba and David Penava,WIPO Case No. D2000-0905 and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, however, found it appropriate to consider the circumstances before deciding whether to admit supplemental submissions. Under paragraph 10(b) of the Rules, the panel must ensure that each party is given a fair opportunity to present its case, and supplemental submissions may be warranted if, for example, respondent raises matters in the response which complainant could not have expected to have addressed in the complaint.
In this case, after careful consideration of the circumstances, the Panel has decided not to accept the parties’ supplemental submissions. The majority of the arguments made in the supplemental filing are repetitive of the arguments made in the original Complaint and Response. The supplemental submissions appear to be simply Complainant’s and Respondent’s attempt at getting in the final word, which is against the expedited process policy of paragraph 12 of the Rules, that each party gets one opportunity to present its case. B. Identical or Confusingly Similar
Complainant has provided sufficient evidence to establish that Donald J. Trump is the owner of numerous TRUMP trademark registrations (offered into evidence as Exhibit J). T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity . . . . Respondent has the burden of refuting this assumption.”).
Because Complainant does not have a trademark registration for the phrase “”, the issue is not whether the disputed domain name and Complainant’s TRUMP marks are identical, but whether they are confusingly similar.
The disputed domain name combines three elements: (1) Complainant’s TRUMP word mark; (2) the suffix “wine”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “trumpwine”), as it is well-established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Other panels have found that the TRUMP mark serves as a source identifier for a number of goods and services, both on its own and with various suffixes. See Donald J. Trump v. Domain-Holdings, WIPO Case No. D2010-1671 (“The Panel has no difficulty in concluding that [Trump] has shown that he has “rights” in a series of marks, both registered and unregistered, and comprising the name Trump on its own or as part of a larger combination of words beginning with that name.”).
Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alpha-numeric string in the domain name. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Thus, application of the above principle of UDRP jurisprudence supports a finding of confusing similarity. Moreover, the Panel agrees with Complainant that wine was within the natural zone of expansion of the TRUMP mark’s existing goods at the time the disputed domain name was registered. See DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers,WIPO Case No. D2003-0781 (acknowledging the validity of the natural expansion doctrine); In re Marchesi de’ Frescobaldi Societa’ Agricola S.p.A., Serial No. 79021733 (T.T.A.B. August 11, 2008) (finding wine and vodka to be related goods that travel in the same channels of trade to the same classes of consumers); In re Frank-Lin Distillers Prods., Ltd., Serial No. 76419825 (T.T.A.B. August 24, 2005) (finding “BEYOND VODKA” for vodka is likely to cause confusion with “BEYOND MERLOT” for wine). Complainant alleges that before Respondent registered the disputed domain name, Complainant had already adopted and began using the TRUMPTINI mark and website and Respondent responds that it is without information to dispute Complainant’s allegations. Further, “Trump Vodka” was first used in commerce on October 6, 2006, almost a year prior to Respondent’s registration of the disputed domain name.
Considering the fame of the TRUMP mark combined with Complainant’s branding of alcoholic beverages such as vodka, it could reasonably be anticipated that Trump would eventually expand into other alcoholic beverages such as wine. Respondent’s arguments regarding the limitations of the natural expansion doctrine are unavailing as wine is not a distinctly different good that is not comprehended by the mark’s previous association with vodka. The Panel finds that given the use of Complainant’s TRUMP marks in association with alcoholic beverages, wine is within the natural expansion of the mark’s existing goods, and therefore the addition of “wine” in the domain name does not mitigate the confusing similarity.
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s TRUMP marks, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing
that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights in the TRUMP marks, is not commonly known by the disputed domain name, is not making a legitimate commercial use or a noncommercial or fair use of the disputed domain name, and has not been authorized to use Complainant’s marks.
Respondent has no rights or legitimate interests in the disputed domain name. The unrebutted evidence of record shows that Complainant has never assigned, licensed, or otherwise conveyed any rights in its mark to Respondent. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six
Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272.
Respondent argues its legitimate interest in the disputed domain name is evidenced by its preparations to develop a private wine label using a name corresponding to “”. These preparations include developing artwork for use in connection with the private wine label, joining a group of select retailers and sommeliers called “WineMasters”, and travelling to California and Chile to study winemaking, marketing, and branding. This Panel is not persuaded by Respondent’s argument due to the lack of corroborating evidence. Even if the Panel takes Respondent’s uncorroborated assertions as true, Respondent’s preparations are insufficient to satisfy a legitimate interest in the disputed domain name. Respondent registered the disputed domain name in 2007, and since then has yet to demonstrate use of the disputed domain name in connection with a bona fide offering of goods or services. Respondent alleges that the private wine label was put on hold during the economic downturn from 2008-2009, but since 2009 it has failed to make any demonstrable preparations at all toward developing the private wine label, even while it was financially capable of opening a second wine bar location in 2009.
No evidence of record suggests that Respondent has become known by the disputed domain name. Respondent does not appear to have used the disputed domain name in connection with any bona fide offering of goods or services. Rather, as evidence offered by the Complainant shows, Respondent is using the disputed domain name in connection with a portal website that provides links to various third-party goods and services, some of which compete with Complainant’s goods and services. See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC,WIPO Case No. D2006-0550 (“the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant’s trademark, do not confer a legitimate right to or interest in a domain name”); Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan,WIPO Case No. D2004-0366 (“a skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors” is not a bona fide offering of goods or services).
Because Complainant has demonstrated that Respondent lacks rights or legitimate interests in the
disputed domain name, Complainant has proven the second element of the Policy. D. Registered and Used in Bad Faith
Under the Policy, paragraph 4(a)(iii), registration and use of a domain name in bad faith may be demonstrated by showing:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
For the following reasons, this Panel finds that Complainant’s evidence shows that Respondent has registered and used the disputed domain name in bad faith in violation of the Policy.
First, TRUMP is a famous mark. Respondent is located in Somers Point, New Jersey, United States, just a few miles from Complainant’s Atlantic City casinos. Given the proximity and well-known status of the Complainant’s mark and business, this Panel finds it inconceivable that Respondent was not aware of Complainant and its trademark usage. See Wal-Mart Stores, Inc. v. Jeff Milchen,WIPO Case No. D2005-0130 (finding that respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071.
Panels commonly find that knowing registration and use of a famous trademark, without proving rights or legitimate interests in it, represents bad faith registration and use. See, e.g., DaimlerChrysler Corporation v. Web4COMM SRL Romania,WIPO Case No. DRO2006-0003; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”).
As previously stated, Respondent is using the disputed domain name in connection with a website that provides links to various third-party goods and services, some of which compete with Complainant’s goods and services. The panel finds that this evidences that Respondent registered and used the disputed domain name in bad faith in violation of paragraph 4(b)(iv) of the Policy.
Furthermore, the disputed domain name includes the entire TRUMP mark. This supports a finding of bad faith. See Wal-Mart Stores; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028.
Therefore, this Panel finds that Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: January 27, 2012
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