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and Mediation Center
Melania Trump v. Parody Sites
Case No. D2005-0856
1. The Parties
The Complainant is Melania Trump, New York, NY, United States of America, represented by Proskauer Rose, LLP, United States of America.
The Respondent is Parody Sites,1
Glen Rock, NJ, United States of America.
2. The Domain Name and Registrar
The disputed domain name <melaniatrump.com>is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2005. On August 11, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 12, 2005, eNom 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 August 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2005. The Respondent submitted a response on September 9, 2005.
The Center appointed William R. Towns as the Sole Panelist in this matter on September 22, 2005. 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.
After receipt and initial review of the administrative
case file, the Panel issued an administrative panel order on October 5, 2005,
requesting that the Complainant submit supplemental information to support her
claim of common law trademark rights in her personal name. The Respondent was
afforded an opportunity to submit a supplemental response. The Complainant and
the Respondent made supplemental submissions on October 12 and 19, 2005, respectively,
and the administrative record is now closed.
4. Factual Background
The Complainant is a widely recognized fashion model and the wife of Donald J. Trump, a prominent real estate developer, entrepreneur and celebrity in his own right. Known professionally as Melania Trump since her marriage to Mr. Trump in January 2005,2 the Complainant’s modeling career includes features in Sports Illustrated, Allure, Vogue, Self, Glamour, Vanity Fair, Elle, and FHM. She has also appeared on the covers of Vogue, Harper’s Bazaar, CQ, Sunday Telegraph Magazine, Ocean Drive, Avenue, In Style, and New York Magazine.
In addition to modeling in fashion shows and magazines, the Complainant has commercially exploited her name and celebrity status to promote the products and services of a number of companies. She recently appeared in a national commercial for Aflac, and is under contract to make further personal appearances. She is also under contract as a spokes model for Levi and has made personal appearances to promote that company’s apparel. In addition, the Complainant served as a celebrity judge for the Miss USA 2003 beauty pageant, and she has appeared on her husband’s popular reality television show The Apprentice.
The Respondent3 is the owner of E-agle Web Consulting, Inc., a web development company. On April 21, 2004, the Respondent4 registered the disputed domain name <melaniatrump.com>. The registration of the disputed domain name predates by some eight months the Complainant’s marriage to Mr. Trump. The Complainant’s relationship with Mr. Trump had been the subject of significant media attention beginning in 1999, and the couple’s engagement was announced a short time after the Respondent registered the disputed domain name.
The Respondent is using the disputed domain name in connection with a website containing photographs of the Complainant and Mr. Trump and what appear to be excerpts from various news stories about them. The website also contains an extensive list of links which direct Internet users to secondary pages of the <donaldtrump.star-profiles4u.com> website. The web pages to which the Respondent’s website is linked all contain advertising and promotional offerings.
The Complainant initially contacted the Respondent regarding the disputed domain name by means of a cease and desist letter dated June 24, 2005. 5 At that time, the following was prominently displayed at the top of the website:
“MelaniaTrump.com For Sale @ the bargain price of 1 Million Dollars!
Cmon Donald Trump of Apprentice, you can afford it!
Site will go to the highest bidder. E-mail Sales@Melaniatrump.com”
After receiving the Complainant’s June 24, 2005 demand, the Respondent contacted the Complainant’s counsel by telephone on June 28, 2005. In the ensuing conversation, the Respondent indicated that the disputed domain name was being used in connection with a “parody” site and was never intended to be offered for sale. Subsequently, the Respondent removed the offer for sale from the website and replaced it with the following:6
“This is a parody Website of The funny couple
Melania Knauss and Donald Trump, this site is not related to them at all, should
you wish to go to their site go to http://melaniaknauss.com or http://trump.com”
5. Parties’ Contentions
The Complainant contends that she has developed strong trademark and service mark rights in her name as a result of her high-profile media image, pointing to her numerous fashion show, magazine and television appearances, including her recent Aflac commercial and related promotional appearances, and her role as a spokes model for Levi jeans. She asserts that the disputed domain name is identical to her well-known name and mark, and that the Respondent has no rights or legitimate interests in the domain name, notwithstanding the Respondent’s claim to be using the domain name in connection with a parody and/or fan website regarding the Complainant and her husband, Donald Trump.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith, attempting intentionally to attract internet users to the Respondent’s website for commercial gain by trading on the goodwill and reputation of the Complainant’s name and mark. The Complainant alleges that the Respondent’s claim to be using the domain name in connection with a parody or fan website is pretextual, and that the Respondent’s real motivation is commercial in nature. The Complainant notes that the Respondent made no claim to be operating a parody or fan site until after receiving the Complainant’s cease and desist letter, and that prior to that time the Respondent had conspicuously offered the domain name for sale. As further evidence of bad faith, the Complainant asserts that the Respondent used false and misleading contact information when initially registering the domain name.
In view of the foregoing, the Complainant is seeking the transfer of the disputed domain name.
The Response identifies the Respondent as Eitan “Ed” Dvir. The Respondent is the owner of E-agle Web Consulting, and states that he is a long time, avid fan of Donald Trump. The Respondent notes that at one time he even sought to be selected as a player on Mr. Trump’s reality television show The Apprentice. According to the Respondent, it was his interest in the Complainant’s husband that led him to create a fan site chronicling the couple’s relationship. The Respondent states that his sole intention in registering the disputed domain name was to create a fan site to draw attention to the high profile relationship between the Complainant, then known as Melania Knauss, and Donald Trump.
The Respondent asserts that the website is simply an after-hours hobby and that it is not related to his web consulting business. The Respondent disputes that he has ever offered to sell the disputed domain name, and claims that the published offer on the website to sell the domain name to Mr. Trump was a joke and a “mock offer”. The Response states that Mr. Dvir does not offer products or services for sale on the website, that Mr. Dvir is not affiliated with any advertisers or with the linked web pages displayed on his website, and that Mr. Dvir does not profit directly or indirectly from the website.
The Respondent asserts that the Complainant has not established common law trademark or service mark rights in her personal name. The Respondent argues that at best, the Complainant merely has a famous name. Further, the Respondent argues that the Complainant could not have had trademark of service mark rights in the name “Melania Trump” at the time the Respondent registered the disputed domain name, since she had not yet married Mr. Trump and was personally and professionally known by her former name, Melania Knauss.
In any event, the Respondent argues that his registration
of the disputed domain name at least eight months before the earliest date that
the Complainant could have adopted MELANIA TRUMP as a trademark or service mark
(i.e., the date of her marriage to Donald Trump) precludes any finding of bad
faith registration under the Policy. Further, the Respondent asserts that he
has registered hundreds of domain names in connection with his web consulting
business, but at no prior time has he ever registered a celebrity domain name
or one that reflected a recognized trademark.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive
domain name registration and use. Milwaukee Electric Tool Corporation v.
Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO
Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited
to providing a remedy in cases of “the abusive registration of domain
names”, also known as “cybersquatting”. Weber-Stephen Products
Co. v. Armitage Hardware, WIPO Case No. D2000-0187.
See Report of the WIPO Internet Domain Name Process, paragraphs 169 & 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint
on the basis of statements and documents submitted and in accordance with the
Policy, the Rules and any other rules or principles of law that the Panel deems
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) in turn identifies three means through which a respondent may
establish rights or legitimate interests in the domain name. Although the complainant
bears the ultimate burden of establishing all three elements of paragraph 4(a),
a number of panels have concluded that paragraph 4(c) shifts the burden to the
Respondent to come forward with evidence of a right or legitimate interest in
the domain name, once the complainant has made a prima facie showing.
See, e.g., Document Technologies, Inc. v. International Electronic Communications
Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established
common law trademark or service mark rights in her name, Melania Trump.7
An impressive number of panelists have recognized that celebrities who use their
given names for commercial purposes may establish common law rights in their
names sufficient to invoke the Policy. As noted by the Panel in Israel Harold
Asper v. Communication X Inc., WIPO Case
No. D2001-0540, in cases involving entertainers, authors, professional athletes
and the occasional business person, complainants have been found to have common
law marks in their names in circumstances where the name has been used as a
marketable commodity, for a fee to promote another’s goods or services,
or for direct commercial purposes in the marketing of the complainant’s
own goods or services. See, e.g., Freddy Adu v. Frank Fushille, WIPO
Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David
Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO
Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd, WIPO
Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO
Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO
Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin),
WIPO Case No. D2000-0402; Daniel C.
Marino, Jr. v. Video Images Productions, et al., WIPO
Case No. D2000-0598; Isabelle Adjani v. Second Orbit Communications,
Inc., WIPO Case No. D2000-0867; Madonna
Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO
Case No. D2000-0847; Nik Carter v. The Afternoon Fiasco, WIPO
Case No. D2000-0658.
As the Respondent observes, however, merely having a famous name is not sufficient
to establish common law trademark or service mark rights in the name. The Policy
makes a clear distinction between the protection afforded trademark rights and
rights arising under the law of publicity. See Israel Harold Asper v. Communication
X Inc., WIPO Case No. D2001-0540.
Under the law of publicity, as recognized in virtually all American jurisdictions,
well known individuals have the right to control commercial exploitation of
their names and likenesses. See Bi-Rite Enterprises, Inc., Et Al. V. Bruce
Miner Company, Inc., Et Al., 757 F.2d 440 (1st Cir. 1985). To
be entitled to protection under the Policy, however, a personal name must function
as a trademark, and for common law trademark rights to exist, the Complainant’s
personal name must have come to be recognized by the public as a symbol which
identifies the goods or services with a single source.8
The Panel is persuaded from the evidence of record regarding the nature and extent of the commercial exploitation of the Complainant’s personal name that she has established common law trademark or service mark rights in her name.9 That the Complainant did not begin using her current name for commercial and professional purposes until her recent marriage to Donald Trump in January 2005 is a complicating factor, but there seems little doubt that the public has come to know the Complainant by the name “Melania Trump”, and the Panel finds that the Complainant’s use of that name in commerce for the direct marketing of her services and to promote the goods or services of others is sufficient to convey trademark or service mark rights in the name.
The Panel further finds that the disputed domain name <melaniatrump.com>
is identical or confusingly similar to the Complainant’s mark. See
Lockheed Martin Corporation. v. Dan Parisi, WIPO
Case No. D2000-1015; The Salvation Army v. Info-Bahn, Inc., WIPO
Case No. D2001-0463. The critical inquiry under the first element of paragraph 4(a)
is simply whether the mark and domain name, when directly compared, have confusing
similarity. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662 (domain name
incorporating mark in its entirety is confusingly similar). The Panel finds
that to be the case here. Accordingly, the Panel finds that the Complainant
has met her burden under paragraph 4(a)(i).10
C. Rights or Legitimate Interests
The Complainant clearly has not authorized or consented to the Respondent’s use of her name and mark, and nothing in the record reflects that the Respondent has ever been commonly known by the disputed domain name. The record instead reflects that the Respondent is using the domain name, which is identical to the Complainant’s name and mark, to divert Internet traffic to the Respondent’s website. Although the Respondent’s website currently states that it is a parody site and disclaims any affiliation with the Complainant, the Respondent previously had posted an offer on the website to sell the domain name to the highest bidder. Further, the website both now and in the past contains a very large number of links to other web pages prominently featuring advertisements and promotional offerings.
In view of prior panel decisions such as Auto-C, LLC v. MustNeed.com,
WIPO Case No. D2004-0025, the Panel in
this case is persuaded that a prima facie showing has been made for purposes
of paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests
in the disputed domain name. See also Compagnie de Saint Gobain v. Com-Union
Corp., WIPO Case No. D2000-0020. Once
a complainant makes a prima facie showing that a respondent lacks rights
to the domain name at issue, the respondent must come forward with proof that
it has some legitimate interest in the domain name to rebut this presumption.
Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is nothing in the record remotely suggesting that the Respondent has been commonly known by the disputed domain name. Nor does the Respondent so contend. Further, the Respondent strenuously denies that he is using the disputed domain name in connection with an offering of goods or services. Instead, he maintains that he is making a legitimate noncommercial or fair use of the domain name in connection with a fan site and/or a parody website.
The Panel concludes for the reasons set forth below that the Respondent has failed to demonstrate that he is making a legitimate noncommercial or fair use of the domain name under Paragraph 4(c)(iii) of the Policy sufficient to rebut the Complainant’s prima facie showing. First, the Respondent’s initially registered the disputed domain name under the fictitious name “Web Domains for Sale”. The Respondent also provided fictitious contact information to the registrar. The Respondent claims “Web Domains for Sale” is a default registration that he uses in his web consulting business on behalf of clients. But the Respondent provides no evidence of such other registrations. Moreover, the Respondent maintains that his registration of the disputed domain name was for his personal use and was not business related, and that he always intended to use the domain name in connection with a fan site. If that is true, then there would be no reason for Respondent to have listed the registrant as “Web Domains for Sale”.
The Respondent’s conduct in identifying the registrant as “Web
Domains for Sale” and providing fictitious contact information is inconsistent
with the Respondent’s claim that he registered the domain name for fair
use purposes. See Bandon Dunes L.P. v. DefaultData.com, WIPO
Case No. D2000-0431 (initial registrant listed as “NameIsForSale.com”).
Further, the record indisputably reflects that the Respondent posted on the
website an offer to sell the domain name to the highest bidder.11
The Respondent did not remove the offer to sell the domain name from the website,
or change the domain name registrant from “Web Domains for Sale”
to “Parody Sites”, or revise the website to claim that it was a
parody site, until after the Respondent received the demand letter from the
The Panel also finds unpersuasive the Respondent’s attempt to characterize as noncommercial the presence on his website of a large number of links to web pages at the <donaldtrump.star-profiles4u.com> website. The Respondent’s claim that these links have been listed for purposes of “search engine optimization”, rather than negating any commercial motive, suggests to the Panel that exactly the opposite is true. The Respondent’s website strongly resembles a “link farm” site. Search engines like Google, Yahoo and MSN routinely search the web for content and attempt to relate content to keywords. “Link farm” sites are specifically set up for the purpose of allowing other sites to “buy” large numbers of inbound links in the hope of achieving “search engine optimization”. The Respondent, who is in the web consulting business, certainly would be aware of this.
Paragraph 4(c)(iii) of the Policy recognizes that a respondent may have a right
or legitimate interest in making a legitimate noncommercial or fair use of a
domain name. Panel decisions are divided as to whether a respondent legitimately
can operate a fan site or parody site utilizing a domain name that is identical
or confusingly similar to the complainant’s mark.12
But it is clear that a respondent must demonstrate that the domain name is being
used without intent for commercial gain in order to successfully invoke this
paragraph. See Helen Fielding v. Anthony Corbert aka Anthony Corbett,
WIPO Case No. D2000-1000.
The circumstances of the Respondent’s registration and use of the domain name in this case do not negate such intent for commercial gain. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie showing under Paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
The overriding objective of the Policy is to prevent abusive domain name registration
and use for the benefit of legitimate trademark owners, and the Panel notes
that the examples of bad faith registration and use set forth in paragraph 4(b)
are not meant to be exhaustive of all circumstances from which such bad faith
may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The Respondent argues that no bad faith registration is possible under the
circumstances of this case, since he registered the disputed domain name some
eight months before the Complainant’s first use of MELANIA TRUMP as a
mark. As a general rule, when a domain name is registered before any trademark
rights are established, the registration of the domain name is not in bad faith
since the registrant could not have contemplated the complainant’s non-existent
right. In certain situations, however, when the respondent is aware of the complainant
and the circumstances indicate that the aim of the registration was to take
advantage of potential complainant rights, bad faith can be found. See, e.g.,
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo
Towne Centre Online, WIPO Case No. D2003-0845.
In this case, the Respondent, who describes himself as long time avid fan of Donald Trump, was well aware of the highly publicized relationship between the Complainant and Donald Trump at the time he registered the disputed domain name. The public announcement of the couple’s engagement was made within a brief time following the Respondent’s registration of the domain name. The Respondent’s own website reflects the Complainant’s celebrity status and the Complainant’s commercial use of her name, both before and after her marriage to Mr. Trump. The Respondent acknowledges in his Response that he registered the domain name <melaniatrump.com> and constructed his website in a manner intended to maximize the diversion of Internet users searching for the Complainant to his website. Thus, the Respondent clearly hoped to benefit from the initial interest confusion and diversion of web traffic. Under the circumstances of this case, the fact that the Complainant had not established common law trademark rights in MELANIA TRUMP at the time of the registration of the disputed domain name does not preclude a finding of bad faith registration.
In the final analysis, the Panel finds from the totality of the circumstances that the Respondent both has registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii). The indicia of bad faith include the Respondent’s registration of a domain name identical to the Complainant’s mark in order to create confusion and divert web traffic to his website, the Respondent’s use of fictitious registrant names, the Respondent’s provision of false contact information, the Respondent’s use of his website to offer the domain name for sale to the highest bidder (which the Respondent retracted only after receipt of the Complainant’s cease and desist letter), and the inclusion of a very large number of links on the Respondent’s website consistent with the operation of a “link farm” site, all of which this Panel finds to be inconsistent with the Respondent’s claim to have registered the domain name for purely noncommercial use in connection with a fan site and/or parody site.
Accordingly, the Panel finds that the Complainant has met her burden under
Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <melaniatrump.com> be transferred to the Complainant.
William R. Towns
Dated: November 1, 2005
discussed below, Parody Sites appears to be a fictitious name used by an individual
known as Eitan “Ed” Dvir.
2 Prior to her marriage to Mr. Trump, the Complainant was professionally known as Melania Knauss.
3 The Response submitted to the Panel states that Eitan “Ed” Dvir, the owner of E-agle Web Consulting, is the registered domain name holder and identifies him as the Respondent. Nevertheless, Mr. Dvir’s name appears nowhere in the contact information respecting the registration of the domain name. Initially, the registrant was listed as “Web Domains for Sale”. The registration was amended sometime after June 24, 2005 to identify “Parody Sites” as the registrant. The mailing address given for “Parody Sites” is the same address which Mr. Dvir provides for himself in the Response. However, the email contact for “Parody Sites” and the email contact provided for Mr. Dvir in the Response are not the same.
4 The term “Respondent” as used hereinafter refers collectively to Mr. Dvir and what apparently are the fictitious names he used to register the disputed domain name.
5 The Complainant’s counsel conducted a Whois search of the domain on June 24, 2005. At that time, the registrant was identified as “Web Domains for Sale”. The street address given for the registrant – 233 Main Street, Glen Rock, NJ 07452 – was not correct. The Respondent’s correct address is 233 Rock Road, Glen Rock, NJ 07452.
6 The Respondent also changed the name of the registrant from “Web Domains for Sale” to “Parody Site” after receiving the Complainant’s demand letter.
7 The term “trademark
or service mark” as used in Paragraph 4(a)(i) encompasses both registered
marks and common law marks. See e.g., The British Broadcasting Corporation
v. Jaime Renteria, WIPO Case No. D2000-0050;
United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO
Case No. D2002-0005, The Professional Golfers’ Association of America
v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO
Case No. D2001-0218. Common law rights in a trademark or service mark may
be established by extensive or continuous use sufficient to identify particular
goods or services as those of the trademark owner. See United Drug Co. v.
Theodore Rectanus Co., 248 U.S. 90 (1918).
8 The Panel notes that under United States trademark law a mark that is primarily a surname cannot be registered on the principal register of the USPTO unless it has acquired secondary meaning. 15 U.S.C. § 1052(e)(4). A designation that is likely to be perceived by prospective purchasers of goods or services as a personal name generally is not considered to be inherently distinctive. Rather, such a designation is distinctive only if it has acquired secondary meaning. See Restatement (Third) Unfair Competition § 14.
9 The Complainant’s evidence has been summarized above in the Panel’s discussion of the “Factual Background” of the case.
10 The Panel finds
no evidence that the Complainant had established common law rights in the MELANIA
TRUMP mark at the time the Respondent initially registered the disputed domain
name. Nevertheless, it is not necessary under paragraph 4(a)(i) for the Complainant
to demonstrate that her rights in the mark arose prior to the Respondent’s
registration of the disputed domain name. See, e.g., Digital Vision, Ltd.
v. Advanced Chemill Systems, WIPO Case
No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),
WIPO Case No. D2003-0320; AB Svenska
Spel v. Andrey Zacharov, WIPO Case No. D2003-0527;
Iogen Corporation v. IOGEN, WIPO Case
No. D2003-0544; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598. See PC Mall,
Inc. v. Pygmy Computer Systems, Inc., WIPO
Case No. D2004-0437.
11 The Panel is not persuaded that the Respondent’s offer to sell the domain name on the website was merely a joke. The Respondent apparently believes no one would take seriously his offer to sell to Donald Trump for one million dollars a domain name trading on the good will in Mr. Trump’s wife’s name and mark. Even were that true, the Respondent fails to explain why internet users diverted to his website would not take the Respondent’s further statement that the “[S]ite will go to the highest bidder” seriously.
12 Refer to WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.