Panellist John Swinson today made a shocking decision which clearly shows that when it comes to UDRP proceedings it’s not what you know but who you ARE that really matters.
The Respondent in this case had registered the domain name back in 1998 and had since used the domain name as part of an affiliate arrangement with gambling sites such as partypoker.com whilst seeking potential joint venture partners.
The Complainant; Mr Donald Trump, business man, real estate developer, hotelier, author and television personality.
The single member Panel was of the opinion that the Respondent should have known about the reputation and fame of the Complainant at the time of registration and on this basis alone was found to have registered the domain name in bad faith.
This decision, we believe is wrong for many reasons which will be discussed below, furthermore the Panel clearly overlooked key facts that when considered would have called for a completely different outcome.
It is reasonable to believe that the average person would not associate the term “trump card” solely with Mr Donald Trump or any of his establishments. The etymology of the word “trump” (or “trump card”) derives from the word “triumph” and is related to a “playing card of a suit ranking above others” first used in the 1520s.
A Wikipedia article also provides the following etymology for the word “trump”:
“The word “trump” derives from “trionfi” or “triumph”, documented as the name of a card game in 1529 and which spawned the game Ruff and Honours, which in turn led to Whist. Trionfo was also the name of the original card game for which tarot cards were designed, and in it the tarot cards had the role of what are now called trumps; later card game rules were designed to use one of the ordinary suits as a replacement for the tarots when a tarot pack was not available.”
The “trump” or “trump card” as it is commonly known in card games (such as bridge, whist and other similar games) is a suit which has the special property of being considered higher than all other suits.
In fact The concept has become so popular in modern times that many use it metaphorically to refer to “any sort of action, authority, or policy which automatically prevails over all things” or as defined by the oxforddictionaries.com:
“A valuable resource that may be used, especially as a surprise, in order to gain an advantage”
Two separate Panels have previously decided against Mr Donald’s attempted monopoly of the term “trump” (see Donald J. trump v. eStore of Brooklyn, New York and Donald J. Trump and Trump Hotel & Casino Resorts, Inc. v. olegevtushenko a/k/a Oleg Evtushenko) and furthermore, Complainant’s hypocrisy can be seen from his use of the term “Trump Card” for the purpose of operating a privilege program – would this not be an example of someone taking advantage of the terms common usage? (It is important to note that the Complainant used the tag line – “Time to pull out a Trump Card” to promote its privilege program)
Mr Swinson himself even accepted the origin and descriptive features of the term, finding:
“The Panel accepts that “trump card” is a descriptive term, used in relation to gambling. It refers to a card in the trump suit (i.e., a winning card).”
So the question that needs to be addressed is why did he proceed with finding the Respondent guilty of abusive registration and use? The Panel stated the following reason:
“The Respondent generated revenue by linking Internet users to affiliate sites, such as “www.partypoker.com”. It is reasonable to infer that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights in his TRUMP mark. This is not use in connection with a bona fide offering of goods and services (see paragraph 4(c)(i) of the Policy).”
This would appear to be contradictory. The Panel firstly holds that the term “Trump Card” is a descriptive term used in relation to gambling services, and then goes on to penalize the Respondent for using the domain name in a way that takes advantage of its descriptive meaning.
The Panel fails to recognize that where it is true that common words can acquire trademark status in certain context, they are still free for public use in their common descriptive sense and that Complainant’s should not be able to prevent others from using descriptive or generic terms in a context that is aligned with the term’s common descriptive meaning.
Complainant asserted that “Since June 30, 1989 (the date of first use), Mr. Trump has used the TRUMP CARD® trademark primarily in connection with the promotion and advertising of a hotel loyalty program by his hotel group, The Trump Hotel Collection® The Trump Hotel Collection® describes the TRUMP CARD® loyalty program on its website (www.trumpcard.trumphotelcollection.com)”
Although providing evidence that the above statement was false and that the Complainant’s official press release revealed that its loyalty program was only introduced in 2012, the Panel proceeded to make the Complainant’s case for him, asserting “long-standing common law rights in his TRUMP mark, including in relation to casinos” (it’s also important to note that the Complainant never raised any of these assertions in its complaint and so it could be argued that the Panel has gone beyond its limited powers of making a decision based solely on the information provided to it).
The Panel further believes it reasonable to conclude that the Respondent was aware of the Complainant when it registered the disputed domain back in 1998 even though evidence of the opposite was presented to him. Not only did search engine results from 1998 for the term “trump card” lack any reference to the Complainant, his hotels or casinos but none of the Complainant’s establishments are available in England where Respondent resides; irrespective of this the Panel still inferred knowledge.
As the Panel points out, in response to cease and desist notifications that Respondent received over 4 years ago without reply, the Respondent offered to transfer ownership of the domain if the Complainant could provide proof of wrong doing, this is clearly not the behaviour of a cyber-squatter.
Nevertheless the Panel has made its decision, blinded by the fame and fortune of Mr Trump rather than making a decision of the merits of each parties arguments and the facts. Would the outcome have been different if Respondent elected a three-member panel and he knew he would be accountable to two of his respected peers? Would that have prevented any bias from seeping through?
The reputation of the Complainant is unquestionable, his real estate empire, his media appearances even his involvement in the Miss Universe pageants, however the Panel fails to realize that the Policy is not a beauty contest, and Respondent’s registration of a descriptive term which not only predates a Complainant’s trademark but has been used in a way that takes advantage of the terms descriptive meaning should always trump a complaint under the UDRP.