927 F. Supp. 2d 32
E.D.N.Y2013Background
- Plaintiff Yung, doing business as Web-Adviso, seeks a declaratory judgment that trumpbeijing.com, trumpindia.com, trumpmumbai.com, and trumpabudhabi.com may be used without infringing Trump’s marks or violating the ACPA.
- Defendant Trump holds the TRUMP mark registered with the USPTO and uses it to promote real estate, hotels, and related services; his TRUMP mark is incontestable for certain goods and services.
- Plaintiff registered the Domain Names in 2007 and maintains noncommercial, commentary and parody content with disclaimers denying affiliation with Trump.
- Arbitration under the UDRP in 2010-2011 found the Domain Names confusingly similar to the TRUMP mark and ordered transfer to Trump.
- Trump moved for partial summary judgment on the ACPA and related claims; the court granted summary judgment on the ACPA claim and denied mootness as to other claims.
- The court also addressed laches, concluding Plaintiff cannot rely on laches due to bad faith conduct in registering the Domain Names.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| ACPA applicability: is TRUMP distinctive and the Domain Names confusingly similar? | Yung argues TRUMP is generic and Domain Names are non-confusing. | Trump contends TRUMP is distinctive and Domain Names are confusingly similar; geographic terms do not defeat similarity. | Yes; TRUMP is distinctive and Domain Names are confusingly similar. |
| Bad faith under ACPA: did Yung register and use domain names with bad faith to profit? | Yung asserts noncommercial, fair use and First Amendment defenses. | Yung registered high-value domain names to profit from goodwill and divert traffic. | Yes; bad faith proven under ACPA. |
| Fair use/First Amendment defense: Do safe harbor or fair use apply? | Content is commentary/parody; safe harbor applies. | Domain names are not communicative commentary and do not fall under safe harbor. | No; safe harbor and First Amendment defenses do not apply to these domain names. |
| Laches defense: Is laches a bar to ACPA relief? | Defendant waited years to press rights; prejudicial delay. | Bad faith and lack of clean hands negate laches as a defense. | Laches fails; bad faith defeats laches as a defense. |
| Relief and mootness: proper scope of summary judgment and declaratory relief? | Domain Names do not infringe; declaratory relief warranted. | ACPA provides the appropriate remedy; other claims become moot. | Grant of summary judgment on ACPA; other claims moot. |
Key Cases Cited
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (ACPA framework and bad-faith factors guidance for cybersquatting)
- Planned Parenthood Fed’n of Am., Inc. v. Bucci, 152 F.3d 920 (2d Cir. 1998) (First Amendment considerations and domain-name use in trademark context)
- Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004) (reaffirms that domain-name use to drive traffic may be infringing)
- Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) (generic-name and trademark strength considerations under ACPA)
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (inherent distinctiveness and trademark protection concepts)
- Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) (arbitrary marks and protectability in trademark context)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (concepts of secondary meaning and general trademark strength (cited in discussion))