The Trump Organisation owns a lot of domain names – around 3,000, for everything from <TrumpOnTheRocks.com> to <TrumpRussia.com>. Unfortunately for the President, this impressive portfolio doesn’t include <TrumpHotels.org>.
Golf enthusiasts, honeymooners and high-powered executives wanting to stay at one of Trump’s 11 hotels will not find what they are looking for at <TrumpHotels.org>. The website features images of America’s immigrant detention camps, including photos of children in cages. A section titled “Thoughts From Our Manager” includes the President’s rant about Mexicans being “rapists” and a quote espousing the benefits of an authoritarian government.
The domain name was registered by Loren Collins, a self-described “libertarian/conservative” lawyer, who does not like President Trump’s federal immigration policies. The website states that is it intended solely for “entertainment, satirical, and political commentary purposes” and emphasises that the site has no connection with President Trump or his actual hotel business. It denies any claim of intellectual property infringement.
The Trump Organisation’s team of lawyers is no doubt clambering to get Mr Collins’ website taken down. And they are no strangers to WIPO’s Uniform Domain Name Dispute Resolution Policy.
In this post we examine the current state of the WIPO domain name dispute rules in the context of satire and fair use and consider what issues may arise for <TrumpHotels.org>.
A UDRP refresher
WIPO’s Uniform Domain Name Dispute Resolution (UDRP) Policy governs certain disputes regarding ownership and use of generic top level domains and some country code top level domains. A person can initiate an administrative proceeding by submitting a complaint. Paragraph 4(a) of the Policy outlines the elements that must be made out for a complaint to be successful:
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the domain name holder has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Identical or confusingly similar
The Trump Organisation has rights in the TRUMP HOTELS trade mark. One of Trump’s companies applied for registration of the mark on 7 May 2018. The mark has been approved for publication, but has not yet published for opposition. It is clear that the <TrumpHotels.org> domain name is identical to the TRUMP HOTELS mark. (Panels disregard domain name suffixes like “.org” when comparing domain names to trade marks).
Rights or legitimate interests
Mr Trump’s lawyers would argue that Mr Collins has no rights or legitimate interests in respect of the domain name. Mr Collins would likely seek to rebut this by claiming fair use.
Paragraph 4(c)(iii) of the Policy states that a respondent can demonstrate rights or legitimate interests to a domain name if they are “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”.
The factors that a Panel will consider in establishing “noncommerical or fair use” are set out below.
The nature of the domain name
The situation here is different from the “sucks” cases, where it is clear from the domain name that the website is a criticism or parody site (for example, <bewareoftitangarages.com>).
Panels have expressed conflicting views where a domain name is identical to a trade mark and the website at the domain name is a criticism or parody site.[1]
The dominant view is that a right to criticise does not extend to registering or using a domain name that would otherwise be considered identical or confusingly similar to a Complainant’s trademark.
Another view has been adopted in some cases involving parties exclusively from the United States. Applying US First Amendment principles, Panels have found that even if a domain name is identical to a trade mark, if that domain name is being used for a bona fide noncommercial criticism site this may support a legitimate interest. This position was helpfully summarised by the Panel in WIPO Case No. D2014-1821, as follows:
US jurisprudence recognizes a qualified free speech right to display a trademark in connection with genuine criticism, even in the context of a domain name identical or confusingly similar to a trademark, where there is not a commercial motivation or indicia of bad faith, such as an attempt to create a likelihood of confusion on the associated website.
While the dominant view favours the President (and his team of lawyers), a Panel may be inclined to favour the second (First Amendment) approach, given that both parties are from the US.
Circumstances beyond the domain name itself
A Panel may consider the context in which the website exists by considering circumstances beyond the domain name itself. These circumstances may include whether the respondent reasonably believes use of the trade mark in the disputed domain name (whether referential, or for praise or criticism) to be truthful and well-founded, and whether it is clear to visitors of the respondent’s website that the website is not operated by the trade mark owner. In this case, the website <TrumpHotels.org> carries a clear disclaimer.
Commercial activity
After weighing up the above, Panels will consider whether the website at the domain name is being used for commercial gain (for example, by providing goods or services for sale or displaying pay-per-click links). In Mr Collins’ favour, the website at <TrumpHotels.org> is clearly not intended for commercial gain.
Trump and the UDRP
Mr Trump has had his fair share of domain name disputes. Many have tried (and failed) to make use of TRUMP marks in their domain names.[2]
In Donald J. Trump v Britt Reeves, a complaint was filed by Mr Trump requesting the transfer of the domain name <trumppalace.com>. Mr Trump had registered the TRUMP PALACE mark in 2004. The Respondent was using the <trumppalace.com> domain name to re-direct users to their real estate website. In its decision, the Panel noted that the domain name was identical to the TRUMP PALACE mark. However, unlike the website at <TrumpHotels.org>, the website did not use satire. The Panel found that the Respondent had used the domain name as a marketing lure by taking advantage of the Complainant’s famous marks, thereby satisfying the bad faith requirement. This resulted in a finding of bad faith and the domain name was transferred to future leader of the free world.
The case of Donald J. Trump v Web-adviso provides yet another distinction to the <TrumpHotels.org> situation. This case concerned four disputed domain names that used the TRUMP mark (eg <trumpindia.com> and <trumpmumbai.com>). The Respondent claimed that the sites were used for satire purposes and even included a disclaimer stating that they were parody and news and information websites. The Panel was not satisfied that this was true. The sites have since been taken down, but in its decision the Panel stated that “[a]ll of the video ‘parodies’ posted at Respondent’s websites were originally created by third-parties and posted at www.youtube.com”. The Respondent was described as a frequent cyber-squatter, having been found liable of cybersquatting by courts in the United States. The Panel decided in favour of Mr Trump and ordered that the disputed domain names be transferred to Mr Trump’s ever-growing domain name portfolio.
Will the “Trump” card be played?
As far we are aware – and we checked his recent Twitter posts – the President has not taken any action in relation to the <TrumpHotels.org> domain name. However, the website has remained in the spotlight. Last week, Twitter users reported they were unable to post about <TrumpHotels.org> website and the associated #trumphotels hashtag. According to one article, users reported that their tweets were being marked as ‘suspicious’, ‘spam’, or ‘malicious’, and were prevented from posting about the site.[3]
We are sure that there will be plenty more IP-related tussles between the President and his vocal critics. We are keeping an eye on @POTUS for updates, so watch this space.
This article was prepared by Rebecca Slater and Kai Nash.
[1] See WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) available at <http://www.wipo.int/amc/en/domains/search/overview3.0/#item24>.
[2] Fun fact: Back in 2015, before President Trump had begun “Making America Great Again”, our own John Swinson (with his WIPO panellist hat on) decided in Mr Trump’s favour in relation to the domain name <TrumpCard.com> available at <http://www.wipo.int/amc/en/domains/decisions/text/2015/d2015-0077.html>.
[3] See ‘Twitter prohibits users from sharing links to fake Trump hotel website’ by Luke Barnes available at <https://thinkprogress.org/twitter-prohibits-users-from-posting-links-to-trumphotelorg-96998a76b0b4/>.
