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Apprentice Boss Trumps Cybersquatter in Domain Name Dispute
08 April 2013
Using a famous name in your URL can lead to more traffic to your website. But it can also lead to lawsuits. A recent New York case provides a good example. On February 28, 2013, a New York federal court ruled in favour of Donald Trump and found the registrant and user of the internet domain names trumpbudhabi.com, trumpbeijing.com, trumpindia.com and trumpmumbai.com (collectively, the domain names) liable for violation of the Anti-Cybersquatting Consumer Protection Act (the ACPA).
Trump is a famous real estate developer and hotelier who is also known for his popular television shows The Apprentice and The Celebrity Apprentice. He owns several registrations and pending applications with the United States Patent and Trademark Office (the USPTO) for the mark TRUMP in connection with various goods and services including commercial, residential, and hotel properties. Trump also holds various domain names incorporating the TRUMP mark, including several names promoting real estate projects that append a geographic location to the word “trump.”
In 2007, J Taikwok Yung (doing business under the name Web-adviso) registered the domain names following announcement of Trump’s development of property in India. In October 2010, Trump informed Yung that his use of the domain names infringed the TRUMP mark and made Yung liable under the ACPA. After an arbitrator ordered Yung to transfer the domain names to Trump, Yung sought a declaration in federal court that the domain names do not, among other things, violate the ACPA. Trump counter-claimed.
The ACPA holds liable any person who, with bad faith intent to profit from a distinctive or famous mark, registers, traffics in or uses a domain name that is identical or confusingly similar to such mark. The court found the TRUMP mark presumptively distinctive and the Domain Names to be confusingly similar to the TRUMP mark. It then found that Yung’s lack of intellectual property rights in the domain names, business activity using the word “trump” or other connection to the domain names, as well as Yung’s efforts to acquire high-value domain names, all indicated Yung’s bad faith intent.
Yung asserted that the ACPA’s “fair use” defense and/or the First Amendment protected his use of the domain names. The ACPA precludes a finding of bad faith intent where the registrant/user reasonably believes that its use is fair or otherwise lawful. Description, parody, criticism, commentary and news reporting all may be fair uses. However, the Court found that Yung used headings such as “News” and “Political Commentary” on his websites primarily to invoke the “fair use” defense rather than to provide news or commentary. Moreover, the domain names did not use the TRUMP mark to comment on, criticize or otherwise communicate about Trump or his business, and thus neither the ACPA’s “fair use” defense nor the First Amendment applied. Thus the Court found Yung liable for violation of the ACPA.
The decision represents the most recent application of the somewhat murky law under the ACPA in connection with traditional trademark law, especially in the context of celebrity names. Back in 2001, Kevin Spacey and Bruce Springsteen were unable to stop the use of the domain names kevinspacey.com and brucespringsteen.com, respectively. Since that time, celebrities have enjoyed more success under the ACPA, with Tom Cruise, Scarlett Johansson, Jennifer Lopez and professional basketball player Chris Bosh all successfully reclaiming URLs making use of their names. While the decisions focus at least in part on whether the registrants profited from the URLs, the term “profit” is applied loosely (for example, the registrant of scarlettjohansson.com was found to profit from his website’s boost of his reputation as a media artist). Thus the Trump decision highlights the continuing trend toward heightened protection of celebrity names from alleged cybersquatters by WIPO and the courts.
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