In a one of the stupidest cases I have ever read, the District Court for the Eastern District Of New York just denied a suit bought by a self described domainer, who sued Donald Trump seeking a declaratory judgement that he was entitled to use 4 .com domain names that included the “trump” brand .
The case is was filed by the domain holder who lost a UDRP on the domain names trumpabudhabi.com, trumpbeijing.com, trumpindia.com and trumpmumbai.com back in March 2011.
Instead of going away, the domain holder filed a for a declaratory order that he was entitled to use the internet domain names because “his use of the Domain Names does not infringe on any of Defendant’s trademark rights or violate the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d).”
Here is some of the background from the court:
“Plaintiff is a self-described “domainer,” which he defines as somebody who “acquire[s] interesting and high value domain names and park[s] them initially with domain parking service providers and/or build[s] the website, if feasible, with interesting content which takes significant time to program, customize and debug the back-end codes.”
“Plaintiff explains that getting “high quality” domain names means “getting domain names that make sense, easy to remember, concise in spelling and convey a knowledge of quality of the internet in its name.”
“Besides the Domain Names, Plaintiff owns almost 200 other domain names, many of which contain names of well-known businesses, such as barclayscapitallehman.com, citigroupwachovia.com, goldmansachsgroup.com, hulufriend.com, milanvogue.com, silversurfergame.com and xbox360sdk.com.”
“In 2007, Defendant’s son, who is an Executive Vice President of the Trump Organization, announced plans to build TRUMP-branded hotels and condominiums in Mumbai. Subsequently, in September and November 2007, Plaintiff registered the Domain Names, trumpbeijing.com, trumpindia.com, trumpmumbai.com and trumpabudhabi.com.
Plaintiff states that the websites are not run for profit and host political and non-political commentary, satire and “shared complaints of the poor quality ultra-low budget reality TV show ‘The Apprentice.’”
The websites contain disclaimers that they are not affiliated with Defendant, such as: “The content and this website has [sic] NOT been approved by Donald Trump, or by the Trump Organization, or by the shows ‘The Apprentice’/’The Celebrity Apprentice.”
On October 27, 2010, an attorney representing the Trump Organization wrote a letter to Plaintiff asserting that his use of trumpmumbai.com and trumpindia.com violated Defendant’s common law and federal trademark rights, andsubjected Plaintiff to liability under the ACPA.
The letter threatened Plaintiff with litigation if he did not transfer the domain names to Defendant. Plaintiff declined to comply with Defendant’s demands, but consented to negotiate “in the hope of reaching a more mutually beneficial agreement.” The same day, counsel for the Trump Organization offered to pay $100 for trumpmumbai.com and trumpindia.com to cover “reasonable” transfer and registration costs incurred by Plaintiff. On November 8, 2010, Plaintiff replied that he “agrees to negotiate with your organization in hopes of reaching a more mutually agreeable terms [sic] . . . . [Plaintiff] believes the domain names, the large internet traffic from the site, and the development programming labor/work that has gone into building the site have significant value.”
Oefore the World Intellectual Property Organization pursuant to the Uniform Domain NameResolution Policy (“UDRP”), asserting that the Domain Names infringed on the TRUMP mark
Plaintiff opposed Defendant’s claims.
On March 5, 2011, the arbitrator ruled in favor of Defendant, and directed that Plaintiff transfer the Domain Names to Defendant.
In a written decision, the arbitrator found that the Domain Names were confusingly similar to theTRUMP trademark, Plaintiff had no legitimate interest in the Domain Names, and Plaintiff had registered and used the Domain Names in bad faith.
On March 22, 2011, Plaintiff filed the instant action seeking a declaration that he is entitled to use the Domain Names because they do not infringe on Defendant’s trademarks or violate the ACPA.
Defendant brought counterclaims against Plaintiff for: 1) federal trademark infringement pursuant to Section 32(1) of the Lanham Act, 15 U.S.C. §1114(1); 2) federal unfair competition pursuant to Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A); 3) federal dilution pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); 4) violation of the ACPA; 5) unfair competition under New York State common law; 6) violation of New York State Deceptive and Unfair Trade Practices Act pursuant to Section 349 of the New York State General Business Law; and 7) New York State law trademark dilution under Section 360- l of the New York State General Business Law.”
The court basically threw out the domain holders case for a declaratory judgement and granted all of Trumps counterclaims on the ACPA claims
Clearly the domain holder he should have take the $100 per domain plus registration costs and ran out the door 2 years ago.
If your wondering what attorney would have represented this guy, the answer is no one.
The domain holder represented himself and as the old saying goes someone who represents himself has a fool for a client