Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 1 of 26 PageID #: 1188
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`WEB-ADVISO, J. TAIKWOK YUNG, pro se,
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` Plaintiff-Counterclaim
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`Defendant,
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`DORA L. IRIZARRY, U.S. District Judge:
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`OPINION AND ORDER
`11-cv-1413 (DLI) (VVP)
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`-against-
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`DONALD J. TRUMP,
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` Defendant-Counterclaim
`Plaintiff.
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`Pro se plaintiff-counterclaim defendant J. Taikwok Yung, who purportedly does business
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`under the name Web-adviso (“Plaintiff”),1 brought this action against defendant-counterclaim
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`plaintiff Donald J. Trump (“Defendant”) seeking a declaration that he is entitled to use the
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`internet domain names
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`trumpabudhabi.com,
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`trumpbeijing.com,
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`trumpindia.com
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`and
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`trumpmumbai.com (collectively, the “Domain Names”), because his use of the Domain Names
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`does not infringe on any of Defendant’s trademark rights or violate the Anti-Cybersquatting
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`Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). (See Compl., Dkt. Entry 1, ¶¶ 2, 17-
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`23.) Defendant brought counterclaims against Plaintiff for: 1) federal trademark infringement;
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`2) federal unfair competition; 3) federal trademark dilution; 4) violation of the ACPA; 5) New
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`York State law unfair competition; 6) violation of New York State Deceptive and Unfair Trade
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`Practices Act; and 7) New York State law trademark dilution. (See Counterclaim, Dkt. Entry 4,
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`¶¶ 26-60.)
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`1 It does not appear that Web-Adviso is an entity with a separate legal existence from Yung.
`Therefore, the court uses the term Plaintiff to refer to Yung personally and Yung as his d/b/a,
`Web-Adviso, interchangeably.
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`

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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 2 of 26 PageID #: 1189
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`Defendant moved for partial summary judgment pursuant to Rule 56 of the Federal Rules
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`of Civil Procedure on Plaintiff’s declaratory judgment claims and Defendant’s counterclaims for
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`federal and state trademark infringement, federal and state unfair competition and violation of
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`the ACPA. (See Mem. in Supp. of Def.’s Mot. for Partial Summ. J., Dkt. Entry 39 (“Def.’s
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`Mem.”), at 1.) Plaintiff opposed the motion. (See Pl.’s Aff. in Opp’n to Def.’s Mot. for Partial
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`Summ. J., Dkt. Entry 44 (“Pl.’s Opp’n”).) For the following reasons, Defendant’s motion is
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`granted with respect to the ACPA claim and denied as moot as to all other claims.
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`BACKGROUND
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`Plaintiff is a self-described “domainer,” which he defines as somebody who “acquire[s]
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`interesting and high value domain names and park[s] them initially with domain parking service
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`providers and/or build[s] the website, if feasible, with interesting content which takes significant
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`time to program, customize and debug the back-end codes.” (Pl.’s Opp’n ¶ 27.) Plaintiff
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`explains that getting “high quality” domain names means “getting domain names that make
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`sense, easy to remember, concise in spelling and convey a knowledge of quality of the internet in
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`its name.” (Id.) Besides the Domain Names, Plaintiff owns almost 200 other domain names,
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`many of which contain names of well-known businesses, such as barclayscapitallehman.com,
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`citigroupwachovia.com,
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`goldmansachsgroup.com,
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`hulufriend.com,
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`milanvogue.com,
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`silversurfergame.com and xbox360sdk.com. (Decl. of James D. Weinberger in Supp. of Def.’s
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`Mot. for Partial Summ. J, Dkt. Entry 41 (“Weinberger Decl.”), Ex. 9.)
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`Defendant is, among other things, a real estate developer and hotelier. (See Decl. of Eric
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`F. Trump in Supp. of Def.’s Mot. for Partial Summ. J., Dkt. Entry 40 (“Trump Decl.”), ¶ 9.) He
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`has authored several books and hosts the nationally broadcast television shows The Apprentice
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`and The Celebrity Apprentice. (Id. ¶¶ 12-13; Compl. ¶ 4.) In connection with his business
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`2
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 3 of 26 PageID #: 1190
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`interests, Defendant has registered his last name in capital letters, “TRUMP,” as a trademark
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`with the United States Patent and Trademark Organization (“USPTO”). (See Trump Decl. Ex.
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`1.) He has used this mark, personally and through a privately held business entity, The Trump
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`Organization, to promote myriad goods and properties, including residential buildings, hotels,
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`golf courses, clothing and home furnishings. (See id. ¶¶ 4-5, 10.) Defendant also has affirmed to
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`the USPTO that he has used the TRUMP mark continuously for five years or more in connection
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`with hotel services, bottled water and golf course services. (See Weinberger Decl. Ex. 1.)
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`Defendant also holds various domain names that he uses to promote his “brand.” (Trump
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`Decl. ¶ 17.) While the “main website” for The Trump Organization is located at trump.com,
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`Defendant also holds domain names with the word “trump” followed by a geographic location,
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`which promote “TRUMP-branded” real estate projects in the location indicated by the domain
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`name. (Id. ¶¶ 17-19.) These domain names include trumpchicago.com, trumphollywood.com
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`and trumpistanbul.com.tr, promoting real estate bearing the TRUMP mark in Chicago, Illinois,
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`Hollywood, Florida, and Istanbul, Turkey, respectively. (Id. ¶ 19.)
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`In 2007, Defendant’s son, who is an Executive Vice President of the Trump
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`Organization, announced plans to build TRUMP-branded hotels and condominiums in Mumbai
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`and Bangalore, India. (Id. ¶ 21 & Ex. 4.) Subsequently, in September and November 2007,
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`Plaintiff registered the Domain Names, trumpbeijing.com, trumpindia.com, trumpmumbai.com
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`and trumpabudhabi.com. (Pl.’s Opp’n ¶ 16.) Plaintiff states that the websites are not run for
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`profit and host political and non-political commentary, satire and “shared complaints of the poor
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`quality ultra-low budget reality TV show ‘The Apprentice.’” (Id. ¶¶ 5, 17.) The websites
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`contain disclaimers that they are not affiliated with Defendant, such as: “The content and this
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`website has [sic] NOT been approved by Donald Trump, or by the Trump Organization, or by
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`3
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 4 of 26 PageID #: 1191
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`the shows ‘The Apprentice’/’The Celebrity Apprentice.’” (Id. ¶ 6 & Ex. C.)
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`On October 27, 2010, an attorney representing the Trump Organization wrote a letter to
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`Plaintiff asserting that his use of trumpmumbai.com and trumpindia.com violated Defendant’s
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`common law and federal trademark rights, and subjected Plaintiff to liability under the ACPA.
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`(Trump Decl. Ex. 5.) The letter threatened Plaintiff with litigation if he did not transfer the
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`domain names to Defendant. (Id.) By e-mail dated November 4, 2010, Plaintiff declined to
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`comply with Defendant’s demands, but consented to negotiate “in the hope of reaching a more
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`mutually beneficial agreement.” (Id. Ex. 6.) The same day, counsel for the Trump Organization
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`offered to pay $100 for trumpmumbai.com and trumpindia.com to cover “reasonable” transfer
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`and registration costs incurred by Plaintiff. (Id. Ex. 7.) On November 8, 2010, Plaintiff replied
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`that he “agrees to negotiate with your organization in hopes of reaching a more mutually
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`agreeable terms [sic] . . . . [Plaintiff] believes the domain names, the large internet traffic from
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`the site, and the development programming labor/work that has gone into building the site have
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`significant value.” (Id. Ex. 8.)
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`On December 17, 2010, Defendant brought an arbitration proceeding against Plaintiff
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`before the World Intellectual Property Organization pursuant to the Uniform Domain Name
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`Resolution Policy (“UDRP”), asserting that the Domain Names infringed on the TRUMP mark.
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`(Weinberger Decl. Ex. 4, ¶ 50.) Plaintiff opposed Defendant’s claims. (See id. Ex. 5.) On
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`March 5, 2011, the arbitrator ruled in favor of Defendant, and directed that Plaintiff transfer the
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`Domain Names to Defendant. (Id. Ex. 6 at 9.) In a written decision, the arbitrator found that the
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`Domain Names were confusingly similar to the TRUMP trademark, Plaintiff had no legitimate
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`interest in the Domain Names, and Plaintiff had registered and used the Domain Names in bad
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`4
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 5 of 26 PageID #: 1192
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`faith. 2 (Id. at 6-9.)
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`On March 22, 2011, Plaintiff filed the instant action seeking a declaration that he is
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`entitled to use the Domain Names because they do not infringe on Defendant’s trademarks or
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`violate the ACPA. (See Compl. ¶¶ 2, 17-23.) Defendant brought counterclaims against Plaintiff
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`for: 1) federal trademark infringement pursuant to Section 32(1) of the Lanham Act, 15 U.S.C. §
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`1114(1); 2) federal unfair competition pursuant to Section 43(a)(1)(A) of the Lanham Act, 15
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`U.S.C. § 1125(a)(1)(A); 3) federal dilution pursuant to Section 43(c) of the Lanham Act, 15
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`U.S.C. § 1125(c); 4) violation of the ACPA; 5) unfair competition under New York State
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`common law; 6) violation of New York State Deceptive and Unfair Trade Practices Act pursuant
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`to Section 349 of the New York State General Business Law; and 7) New York State law
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`trademark dilution under Section 360-l of the New York State General Business Law. (See
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`Counterclaim ¶¶ 26-60.)
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`Defendant moved for partial summary judgment pursuant to Rule 56 of the Federal Rules
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`of Civil Procedure on both of Plaintiff’s declaratory judgment claims and Defendant’s
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`counterclaims for federal and state trademark infringement, federal and state unfair competition
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`and violation of the ACPA. (See Def.’s Mem. 1.) Defendant contends that there is no genuine
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`issue of material fact that: 1) he has a protectable right in the TRUMP mark; 2) Plaintiff’s use of
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`the mark is likely to cause confusion; and 3) Plaintiff is a “cybersquatter” under the ACPA. (See
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`id.) Plaintiff opposed the motion, contending that: 1) the word “trump” is generic; 2) Plaintiff
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`2 The parties have not addressed the implications of the UDRP proceeding on this action, but it
`appears that it has no precedential value. As one court in this circuit has explained: “[t]he
`UDRP process has been described as ‘adjudication lite’ because the proceedings are handled
`entirely upon written submissions and the arbitration panel has total discretion to determine the
`application of precedent and rules of evidence. The UDRP decisions are not binding on the
`courts.” Gen. Media Comm’ns, Inc. v. Crazy Troll, LLC, 2007 WL 102988, at *4 (S.D.N.Y. Jan.
`16, 2007) (internal citation omitted).
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`5
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 6 of 26 PageID #: 1193
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`does not run the websites at issue for profit and has not tried to sell the Domain Names; 3) the
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`websites do not cause confusion because they contain disclaimers explaining that they are not
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`affiliated with Defendant; 4) the First Amendment to the United States Constitution and the
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`ACPA’s safe harbor provision entitles Plaintiff to maintain the allegedly infringing websites
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`because they are used for parody and commentary; and 5) Defendant’s claims are barred by the
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`doctrine of laches. (See generally Pl.’s Opp’n.)
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`LEGAL STANDARD
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`Summary judgment is appropriate where “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
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`R. Civ. P. 56(a). The court must view all facts in the light most favorable to the nonmoving
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`party, but “only if there is a ‘genuine’ dispute as to those facts.” Scott v. Harris, 550 U.S. 372,
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`380 (2007). “When opposing parties tell two different stories, one of which is blatantly
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`contradicted by the record, so that no reasonable jury could believe it, a court should not adopt
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`that version of the facts for purposes of ruling on a motion for summary judgment.” Id. A
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`genuine issue of material fact exists if “the evidence is such that a reasonable jury could return a
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`verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`The nonmoving party, however, may not rely on “[c]onclusory allegations, conjecture, and
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`speculation.” Kerzer v. Kingly Mfg., 156 F. 3d 396, 400 (2d Cir. 1998). “When no rational jury
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`could find in favor of the nonmoving party because the evidence to support its case is so slight,
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`there is no genuine issue of material fact and a grant of summary judgment is proper.” Gallo v.
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`Prudential Residential Servs., Ltd. P’ship, 22 F. 3d 1219, 1224 (2d Cir. 1994) (citing Dister v.
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`Cont’l Grp., Inc., 859 F. 2d 1108, 1114 (2d Cir. 1988)).
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`In addition, the court holds pro se pleadings to “to less stringent standards than formal
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`6
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 7 of 26 PageID #: 1194
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`pleadings drafted by lawyers.” Hughes v. Rowe, 449 U.S. 5, 9 (1980). The court construes them
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`“to raise the strongest arguments that they suggest.” Triestman v. Fed. Bureau of Prisons, 470 F.
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`3d 471, 474 (2d Cir. 2006) (per curiam) (emphasis omitted).
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`I.
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`Anti-Cybersquatting Consumer Protection Act
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`DISCUSSION
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`The ACPA was enacted to protect consumers and holders of distinctive trademarks from
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`“cybersquatting,” which “involves the registration as domain names of well-known trademarks
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`by non-trademark holders who then try to sell the names back to the trademark owners.”
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`Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F. 3d 489, 493 (2d Cir. 2000). The ACPA
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`imposes civil liability on a person who, “without regard to the goods or services of the parties”:
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`(i) has a bad faith intent to profit from that mark, including a personal name which
`is protected as a mark under this section; and
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`(ii) registers, traffics in, or uses a domain name that –
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`(I) in the case of a mark that is distinctive at the time of registration of the
`domain name, is identical or confusingly similar to that mark; [or]
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`(II) in the case of a famous mark that is famous at the time of registration of
`the domain name, is identical or confusingly similar to or dilutive of that
`mark.
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`15 U.S.C. § 1125(d)(1)(A). Thus, Defendant must show that: (1) the TRUMP mark is either
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`distinctive or famous; (2) the Domain Names are identical or confusingly similar to the TRUMP
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`mark; and (3) Plaintiff had a bad faith intent to profit from use of the mark. See Sporty’s Farm
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`L.L.C., 202 F. 3d at 497-99.
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`A.
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`“Distinctive” or “Famous”
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`Under the ACPA, the court “must first determine whether [the mark at issue] is a
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`distinctive or famous mark and thus entitled to the ACPA’s protection.” Id. at 497. There is no
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 8 of 26 PageID #: 1195
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`genuine issue of material fact that the TRUMP mark is distinctive and entitled to the ACPA’s
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`protection.3 Prior to Plaintiff registering the Domain Names in 2007, Defendant attested to the
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`USPTO that the TRUMP mark was incontestable when used in hotel services, bottled water and
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`golf club services, because Defendant had registered and continuously used the mark in
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`connection with these goods and services for at least five years. (See Weinberger Decl. Ex. 1;
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`see also Trump Decl. Ex. 1.) The USPTO accepted and acknowledged Defendant’s attestation.
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`(See Weinberger Decl. Ex. 1.) This serves as “conclusive evidence of the validity of the
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`registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and
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`of the registrant’s exclusive right to use the registered mark” in connection with hotel services,
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`bottled water and golf club services, subject to certain exceptions enumerated in the Lanham Act.
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`15 U.S.C. § 1115(b). It also entitles Defendant “to a presumption that its registered trademark is
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`inherently distinctive.” Sporty’s Farm L.L.C., 202 F. 3d at 497 (quoting Equine Techs., Inc. v.
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`Equitechnology, Inc., 68 F. 3d 542, 545 (1st Cir. 1995)). Thus, Plaintiff cannot argue that the
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`TRUMP mark lacks secondary meaning. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469
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`U.S. 189, 191, 203 (1985) (action to enjoin the infringement of an incontestable mark cannot be
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`defended on grounds that mark is descriptive and lacks secondary meaning).
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`Reading his submissions liberally, Plaintiff attempts to rebut the presumption of
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`distinctiveness by asserting that the word “trump” is not entitled to protection because it is a
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`generic “dictionary word” that means “any playing card of a suit that for the time outranks other
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`suits, such a card being able to take any card of another suit.” (Pl.’s Opp’n ¶ 5; Compl. ¶ 21.)
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`3 Because it is distinctive, the court need not decide whether the TRUMP mark is also famous.
`See Prime Publishers, Inc. v. American-Republican, Inc., 160 F. Supp. 2d 266, 277 (D. Conn.
`2001) (“In contrast to the Federal Trademark Dilution Act (‘FTDA’), 15 U.S.C. § 1125(c), which
`protects marks that are both famous and distinctive from dilution, a mark needs only one of those
`qualities to merit protection under the ACPA.”).
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 9 of 26 PageID #: 1196
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`This argument is meritless.
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`Under the Lanham Act, “no incontestable right shall be acquired in a mark which is the
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`generic name for the goods or services or a portion thereof, for which it is registered.” 15
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`U.S.C. § 1065(4) (emphasis added). In other words, a term is only generic to the extent that it
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`“name[s] the species or object to which the mark applies.” Nabisco, Inc. v. PF Brands, Inc., 191
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`F. 3d 208, 215 (2d Cir. 1999), abrogated on other grounds, Moseley v. Secret Catalogue, Inc.,
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`537 U.S. 418 (2003). However, an otherwise generic term can become non-generic, and entitled
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`to protection, when used in connection with goods or services unrelated to its generic meaning.
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`See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, § 12:1 (4th ed.)
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`(“Certainly, a term can be a generic name of one thing but be a valid trademark for some other
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`product. For example: APPLE is a generic name for the edible fruit of the apple tree, but is a
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`trademark for computers.” (footnote omitted)). When an otherwise generic term is used as a
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`trademark for a good or service that bears little or no relationship to its ordinary generic
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`meaning, it becomes “arbitrary and fanciful,” and thus is inherently distinctive. See Virgin
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`Enters. Ltd. v. Nawab, 335 F. 3d 141, 148-49 (2d Cir. 2003) (“In relation to the sale of consumer
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`electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and
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`fanciful; the word ‘virgin’ has no intrinsic relationship whatsoever to selling such equipment.”);
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`Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F. 2d 1072, 1075-76 (2d Cir. 1993) (“An
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`arbitrary term is one that has a dictionary meaning – though not describing the product – like
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`IVORY for soap.”); Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112, 123 (D. Conn.
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`2002) (“The Court has no doubt that the marks ‘omega’ and ‘O’, as used in connection with the
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`manufacture and sale of watches, clocks, and electronic timing equipment, are inherently
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`distinctive. The meanings associated with the word ‘omega’ and letter ‘O’ do not suggest time
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 10 of 26 PageID #: 1197
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`or watches.”).
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`Here, the generic dictionary definition of trump is unrelated to any good or service for
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`which the TRUMP mark is used by Defendant. The word “trump” is defined in the dictionary
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`as, inter alia, “all the cards of a suit. . . that if legally played will win over a card that is not of
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`this suit” and “to get the better of.” Webster’s Third New International Dictionary
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`(Unabridged), 2455 (1993). There is no intrinsic connection between these generic definitions
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`and hotel services, bottled water or golf course services, for which the TRUMP mark has become
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`incontestable. These dictionary definitions also bear no relation to the other goods and products
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`for which the TRUMP mark has been registered, but has not yet become incontestable, such as
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`real estate services, vodka, magazines, restaurant services and furniture. (See Trump Decl. Ex.
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`1.) The TRUMP mark is arbitrary in these contexts because it is derived from Defendant’s last
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`name, not from any colloquial use relating to card games or getting the better of somebody. (See
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`Trump Decl. ¶ 14.) Thus, its generic meaning in unrelated settings does not undermine its
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`strength or validity here.
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`Accordingly, as a matter of law, the TRUMP mark is distinctive when used in connection
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`with Defendant’s businesses.
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`B.
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`Identical or Confusingly Similar
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`The court next must consider whether the Domain Names are “identical or confusingly
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`similar to” the TRUMP mark. 15 U.S.C. § 1125(d)(1)(A)(ii)(I). The Domain Names,
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`trumpbeijing, trumpindia, trumpmumbai and trumpabudhabi,4 are not identical to the TRUMP
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`mark because of the geographic terms following the word trump, so the court looks at whether
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`4 “When evaluating whether a domain name is confusingly similar to a trademark, a district court
`disregards the top-level domain name (e.g. ‘.com’, ‘.org’, ‘.net’ etc.).” Omega S.A., 228 F. Supp.
`2d at 126 n.36.
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 11 of 26 PageID #: 1198
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`there are any genuine material factual issues as to whether the Domain Names and the mark are
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`confusingly similar. In determining whether the Domain Names are confusingly similar to the
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`TRUMP mark within the meaning of the ACPA, the court compares “solely [Defendant’s] marks
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`and [Plaintiff’s] domain names, including their intrinsic sound, sight, and meaning, without
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`reference to goods or services with which the domain name is associated by the parties’ use.”
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`Omega S.A., 228 F. Supp. 2d at 127.
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`A comparison reveals that no reasonable juror could conclude that the Domain Names are
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`not confusingly similar to the TRUMP mark. The similarities are instantly apparent because of
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`the inclusion of the word “trump” in the Domain Names, and Plaintiff does not argue that the
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`“trump” in the Domain Names reference anything other than Defendant’s last name. The
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`differences between the Domain Names and the TRUMP mark lie in the geographic terms in the
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`Domain Names. However, names of places, such as Beijing or India, are similar to the types of
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`common words that other courts have held do not distinguish a domain name from a mark. See,
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`e.g., id. at 127 (“[T]he Court concludes . . . that the domain names ‘OMEGATIME’ and
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`‘OMEGAWATCH’ are confusingly similar to the marks ‘omega’ or ‘O’.”); Mattel, Inc. v.
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`Adventure Apparel, 2001 WL 1035140, at *2 (S.D.N.Y. Sept. 7, 2001) (“The similarities
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`between ‘barbiesbeachwear.com’, ‘barbiesclothing.com’ and the BARBIE trademark are
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`apparent on their face.”); Prime Publishers, Inc., 160 F. Supp. 2d at 280 (“We do not believe the
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`Defendant’s addition of a generic or geographic term such as ‘ct’ is sufficient to distinguish the
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`domain name from Plaintiff’s protected mark.”). The place names actually add confusion in this
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`instance. The Domain Names’ inclusion of geographic terms mimics many of the domain names
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`Defendant uses
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`to promote TRUMP-branded properties
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`in specific places, such as
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`trumpchicago.com, trumphollywood.com, trumptoronto.ca and trumpwaikiki.com. (See Trump
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 12 of 26 PageID #: 1199
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`Decl. ¶ 19.) As a result, the inclusion of “mumbai” in trumpmumbai.com, for example, rather
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`than distinguishing the domain name from the TRUMP mark, makes it appear to the
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`unsuspecting internet user that the website is promoting a property in Mumbai, India, associated
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`with Defendant.
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`Plaintiff asserts that the Domain Names could not cause any confusion because the
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`websites contain disclaimers, such as: “The content and this website has [sic] NOT been
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`approved by Donald Trump, or by the Trump Organization, or by the shows ‘The
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`Apprentice’/’The Celebrity Apprentice.’” (Pl.’s Opp’n ¶ 6.) Plaintiff’s contention misses the
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`mark. The relevant inquiry is whether the Domain Names are confusingly similar to the TRUMP
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`mark, not whether the actual websites accessed using the Domain Names cause confusion or
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`compete with Defendant’s business. Under the ACPA, “any similarities or distinctions between
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`the products themselves, i.e., whether or not the content of [Plaintiff’s] website might compete
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`with [Defendant’s] product, are irrelevant.” Prime Publishers, Inc., 160 F. Supp. 2d at 279; see
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`also 15 U.S.C. § 1125(d)(1)(A) (liability attaches under the ACPA “without regard to the goods
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`or services of the parties”). “It is irrelevant under the ACPA that confusion about a Web site’s
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`source or sponsorship could be resolved by visiting the Web site identified by the accused
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`domain name.” McCarthy, supra, § 25:78 (citing Coca-Cola Co. v. Purdy, 382 F. 3d 774 (8th
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`Cir. 2004)).
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`Congress designed the ACPA to prevent “individuals seeking extortionate profits by
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`reserving Internet domain names that are similar or identical to trademarked names with no
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`intention of using the names in commerce themselves.” H.R. Rep. No. 106-412, at 6 (1999). In
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`drafting the ACPA, Congress also found that cybersquatters hurt businesses, because “consumers
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`seeking a trademark owner’s Web site are diverted elsewhere, which means lost business
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 13 of 26 PageID #: 1200
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`opportunities for the trademark owner.” Id. at 6. These wrongs would hardly be prevented if
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`individuals could register domain names similar or identical to protectable marks, so long as
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`there is a disclaimer somewhere on the website itself. Owners of trademarks still would face
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`extortionate demands for money from individuals looking to profit off of the goodwill associated
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`with the mark and businesses would be robbed of domain names where potential customers
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`could easily find their products and services. Cf. Savin Corp. v. Savin Grp., 391 F. 3d 439, 458
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`n.12 (2d Cir. 2004) (“A significant purpose of a domain name is to identify the entity that owns
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`the [website]. Customers searching for a company’s website will often search using a domain
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`name identical or similar to the company’s name or mark . . . . Customers unable to locate [a
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`plaintiff’s] website using domain names identical to its marks, . . . may fail to continue to search
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`for [the plaintiff’s] own home page, due to anger, frustration, or the belief that [the plaintiff’s]
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`home page does not exist.” (quoting Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424, 431 (M.D.N.C.
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`2003)) (alterations in original)).
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`Accordingly, there is no genuine issue of material fact that Defendant has satisfied the
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`“confusingly similar” prong of his ACPA claim.
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`C.
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`Bad Faith
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`The court next turns to whether Plaintiff “has a bad faith intent to profit from” the
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`TRUMP mark. 15 U.S.C. § 1125(d)(1)(A)(i). The statute provides nine factors to assist courts
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`in determining whether a party has a bad faith profit motive. These nine factors are:
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`(I) the trademark or other intellectual property rights of the person, if any, in the
`domain name;
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`(II) the extent to which the domain name consists of the legal name of the person
`or a name that is otherwise commonly used to identify that person;
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`(III) the person’s prior use, if any, of the domain name in connection with the
`bona fide offering of any goods or services;
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`(IV) the person’s bona fide noncommercial or fair use of the mark in a site
`accessible under the domain name;
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`(V) the person’s intent to divert consumers from the mark owner’s online location
`to a site accessible under the domain name that could harm the goodwill
`represented by the mark, either for commercial gain or with the intent to tarnish or
`disparage the mark, by creating a likelihood of confusion as to the source,
`sponsorship, affiliation, or endorsement of the site;
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`(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to
`the mark owner or any third party for financial gain without having used, or
`having an intent to use, the domain name in the bona fide offering of any goods or
`services, or the person’s prior conduct indicating a pattern of such conduct;
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`(VII) the person’s provision of material and misleading false contact information
`when applying for the registration of the domain name, the person’s intentional
`failure to maintain accurate contact information, or the person’s prior conduct
`indicating a pattern of such conduct;
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`(VIII) the person’s registration or acquisition of multiple domain names which the
`person knows are identical or confusingly similar to marks of others that are
`distinctive at the time of registration of such domain names, or dilutive of famous
`marks of others that are famous at the time of registration of such domain names,
`without regard to the goods or services of the parties; and
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`(IX) the extent to which the mark incorporated in the person’s domain name
`registration is or is not distinctive and famous within the meaning of subsection
`(c) of this section.
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`Id. § 1125(d)(1)(B)(i). The Second Circuit has stressed that courts “are not limited to
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`considering just the listed factors when making [a] determination of whether the statutory
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`criterion has been met. The factors are, instead, expressly described as indicia that ‘may’ be
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`considered along with other facts.” Sporty’s Farm L.L.C., 202 F. 3d at 498.
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`The court finds that the evidence of Plaintiff’s bad faith here is overwhelming. This
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`conclusion ineluctably follows from the nine statutory factors, as well as the holdings by both the
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`district court and the Second Circuit in a previous ACPA action involving Plaintiff. That case,
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`Webadviso v. Bank of America Corp., is materially identical to the instant matter. In Webadviso,
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`Case 1:11-cv-01413-DLI-VVP Document 56 Filed 02/28/13 Page 15 of 26 PageID #: 1202
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`Plaintiff registered the domain names bofaml.com and mlbofa.com on the same day that Bank of
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`America Corporation (“Bank of America”) and Merrill Lynch & Co., Inc. (“Merrill Lynch”)
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`announced their merger. Webadviso v. Bank of Am. Corp., 2009 WL 5177997, at *2 (S.D.N.Y.
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`Dec. 31, 2009). An arbitrator found that the domain names were confusingly similar to Bank of
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`America’s and Merrill Lynch’s trademarks and that Plaintiff had no legitimate right to
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`bofaml.com and mlbofa.com. Id. at *3. Plaintiff subsequently filed an action in the Southern
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`District of New York seeking a declaration that he did not violate the ACPA and Bank of
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`America and Merrill Lynch brought counterclaims under federal and state law. Id. at *1. In
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`granting a preliminary injunction preventing Plaintiff’s use of the domain names and then
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`granting summary judgment in favor of Bank of America and Merrill Lynch, then-District Judge
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`Denny Chin of the Southern District of New York held that Plaintiff acted in bad faith because:
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`1) Plaintiff never had previously used any iterations of “bofa” or “ml” in his business; 2) despite
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`Plaintiff’s assertions that he has never sold a domain name, the record shows that he is a
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`“domainer” who “seeks to register domain names incorporating well-known marks with the hope
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`that he can sell the domain names back to the trademark owners;” 3) Plaintiff had registered
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`approximately 180 domain names, some of which included well-known trademarks; 4) Plaintiff
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`registered bofaml.com and mlbofa.com the same day the media reported the Bank of America-
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`Merrill Lynch merger; and 5) an arbitrator found that the domain names at issue were
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`confusingly similar to Bank of America’s and Merrill Lynch’s trademarks and that Plaintiff
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`registered the domain names in bad faith. Id. at *4-5; Webadviso v. Bank of Am. Corp., 2010
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`WL 521117, at