Though not expressly stated in the UDRP rules, a complaining brand owner must prove a case of domain name squatting through the presentation of a preponderance of the evidence.
What does this means in practical terms? It means that there is often one fact, critical to the case, that the decision hinges on. Panels have quite a bit of discretion, so from time to time, there are close cases that could go one way or the other.
In a case brought against the domain trumpcard.com, the Panel was faced with just this scenario.
The domain was registered in 1998, at a time when the Complainant, “the Donald” himself was particularly famous for his real estate ventures, his autobiographical books, his brash public statements and, of most importance to this dispute, his ownership of multiple casinos in New Jersey’s Atlantic City. At that time, he owned a number of trademark registrations for the TRUMP name. It wasn’t until many years later, in 2012, that a rewards program known as TRUMP CARD was launched for regular players at the Complainant’s casinos. Nevertheless, Mr. Trump asserted that the trumpcard.com domain was registered so as to take advantage of his name and the content of the Respondent’s website supports this conclusion.
In his defense, the Respondent first noted that the phrase “trump card” has a common, descriptive meaning in relation to poker and other card games. He then claimed that he created the domain with the intent to start his own online card game site and that he initially set up his website to seek out potential joint venture partners and to earn affiliate revenue while he developed his business plans. After he received a demand letter from Trump’s lawyers in 2011 he added a disclaimer to his website and had it mirror an official Trump Casino site.
Not surprisingly, the Panel first mentioned that it accepts that “trump card” is a descriptive term when used in relation to gambling. However, he further noted that the Respondent had not used the domain in this manner. Despite the fact that the domain was created long prior to the launch of the TRUMP CARD loyalty program, the Complainant was quite famous and the Respondent would certainly have been aware of his rights in the TRUMP brand. He then noted that, in the past, the trumpcard.com website displayed text mentioning the casino business and Steve Wynn, head of one of the world’s largest casino empires. The text also offered the domain name for sale to the general public in addition to mentioning that it was available for use in a joint venture.
Based on this evidence, the Panel held that “It is reasonable to infer that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights in his TRUMP mark.” He also mentioned that “the Respondent profited from customer confusion through its affiliate arrangements” and that, because of this quest for commercial gain, it “appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation” and that this shows his bad faith.
A Close Call
I view this as quite a close call since, on the one hand, the term “trump card” does have a descriptive use in relation to gambling and card games. However, on the other hand, the Respondent’s website content shows that he was clearly aware of the major players in the casino industry, presumably including the Complainant.
This left the Panel with the question of whether such knowledge, and an attempt to profit from the domain, overcame the descriptive relation of the term to the exact industry engaged in by the Complainant.
I think this case was teetering on the fine line of the preponderance of the evidence standard. Although knowledge of the famous Mr. Trump, alone, might not have delivered the win here, perhaps the Respondent’s mimicking of an actual Trump Casino website tipped the Panel over into a finding for the Complainant. Had the Respondent kept its website focused on card games, perhaps the descriptive meaning of the phrase would have swayed the Panel in the other direction.
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