Wipo – World Intellectual Property Organization – with decision of November 24th 2023, Case D2023-4147 rejected the request to transfer a domain name filed by DTTM Operations LLC, which manages the trademarks of The Trump Organization group, linked to the former president of the United States Donald J. Trump.
The disputed domain name
The domain name object of transfer request was “Mar-A-Lago.com”, registered by a Floridian citizen. The expression “Mar-A-Lago” is also the name of the luxurious Palm Beach estate of the ex US president Trump, used both as private residence and also as a renowned golf court.
In particular, DTTM claimed before WIPO the right to transfer the disputed domain name by reason of the trademarks “THE MAR-A-LAGO CLUB” (filed on October 11th 1995 and registered on April 29th 1997) and “MAR-A-LAGO” (filed on May 1st 2008 and registered on December 1st 2009).
The owner of the domain named replied to the objections raised, arguing to have registered the domain name on March 28th 1997 with the sole purpose of creating a memorial website dedicated to his three pets, using the union of their names: Mar the dog, Alfred the duck and Lag the cat.
WIPO decision
WIPO carried out an in-depth analysis of the necessary requirements to transfer the domain name.
In particular, it confirmed the existence of the first requirement concerning the identity or confusing similarity between the disputed domain name and the distinctive signs owned by the complainant. As a matter of facts, in this case, the trademark “MAR-A-LAGO” results to be entirely included in the domain name object of dispute and the same wording constitute a distinctive element of the trademark “THE MAR-A-LAGO CLUB”.
WIPO verified moreover the existence of the second requirement, related to the absence of the right or legitimate interests of the registering subject with respect to the disputed domain name. In fact, from an thorough exam, WIPO was able to determine that the website, originally created for pet-memorial purposes, then changed in content, becoming rather a collection of “odes to the earth”.
Lastly, WIPO evaluated the existence of the third requirement related to bad faith of the registrant. From the documentation and the conduct of the same, it was possible to find that the registration and the use of the domain name were carried out in good faith, without any commercial purpose or intent to create confusion with the activity of the Trump Organization.
In light of the above, WIPO rejected integrally the request to transfer the disputed domain name due to the lack of the third requirement.
Elena Bandinelli