## Facts

- Web‑Adviso (J. Taikwok Yung) operated a domain‑name business that acquired more than 200 high‑value domain names and “parked” them through domain‑parking services to generate advertising revenue.
- Donald J. Trump was widely known as a real‑estate developer and hotel operator (and as a reality‑television personality) and owned federal trademark registrations for **TRUMP** used in connection with real‑estate and hospitality goods and services.
- Trump had used the TRUMP mark continuously for at least five years after registration, giving the mark incontestable status under the Lanham Act.
- After Trump’s son publicly announced plans for TRUMP‑branded hotels and residences in India, including in Mumbai and Bangalore, Web‑Adviso registered domain names incorporating the mark and geographic terms, including **trumpindia.com** and **trumpmumbai.com** (and other TRUMP + location domains referenced by the court).
- Web‑Adviso used the domains in connection with parked pages and advertising links rather than an operating business associated with “Trump India” or “Trump Mumbai.”
- Trump’s counsel demanded that Web‑Adviso transfer the domains, asserting that the registrations and use violated Trump’s trademark rights; Web‑Adviso refused.
- Web‑Adviso filed a declaratory‑judgment action seeking a ruling that its registration and use of the domains did not infringe Trump’s rights and did not violate the Anticybersquatting Consumer Protection Act (ACPA).
- Trump counterclaimed for Lanham Act trademark infringement and unfair competition, dilution, ACPA violations, and related state‑law claims.
- Trump moved for partial summary judgment on Web‑Adviso’s declaratory claims and on Trump’s counterclaims, arguing there was no genuine dispute that TRUMP was protectable, the domains were confusingly similar, and Web‑Adviso acted with bad faith intent to profit.
- The court had before it a prior UDRP decision ordering transfer of the domains, but treated that decision as background rather than binding authority.

## Issues

1. Whether the TRUMP mark was distinctive (including by incontestable status) for purposes of the Lanham Act and the ACPA.
2. Whether Web‑Adviso’s TRUMP + geographic domain names (e.g., trumpindia.com and trumpmumbai.com) were identical or confusingly similar to the TRUMP mark.
3. Whether Web‑Adviso registered and used the domains with a bad faith intent to profit under the ACPA, 15 U.S.C. § 1125(d)(1)(A).
4. Whether Web‑Adviso’s domain use created a likelihood of confusion supporting Trump’s trademark infringement and unfair‑competition counterclaims.
5. Whether defenses such as parody/First Amendment, disclaimers, noncommercial use, or laches barred Trump’s requested relief on summary judgment.

## Decision

- The court granted Trump’s motion for summary judgment on Web‑Adviso’s request for declaratory relief.
- The court granted summary judgment for Trump on liability under the ACPA, holding that TRUMP was a distinctive mark, the domains were confusingly similar, and Web‑Adviso acted with bad faith intent to profit.
- The court granted summary judgment for Trump on trademark infringement and unfair‑competition liability under the Lanham Act based on likely consumer confusion.
- The court rejected Web‑Adviso’s defenses grounded in parody/First Amendment arguments, reliance on disclaimers, and laches on the summary‑judgment record.

## Legal Principles

- Under the ACPA, a plaintiff must show (1) a distinctive or famous mark, (2) a domain name that is identical or confusingly similar to the mark, and (3) the registrant’s bad faith intent to profit. 15 U.S.C. § 1125(d)(1)(A).
- Continuous use of a federally registered mark for the required period may render the mark incontestable, strengthening the owner’s showing of validity and distinctiveness in Lanham Act litigation.
- Adding a geographic term to a well‑known mark in a domain name generally does not avoid confusing similarity; in context, it can suggest a mark owner’s local project or affiliation.
- “Parking” domains with pay‑per‑click advertising can support an inference that the registrant sought to profit from user confusion rather than from a bona fide offering of goods or services.
- A claimed parody or commentary defense is weakened where the domain name itself reads as a source identifier tied to the trademark owner and is used commercially; disclaimers on the landing page may not cure confusion generated by the domain name.
- Laches requires an unreasonable delay and prejudice to the defendant; the defense fails where the record does not show reliance‑based harm from the plaintiff’s timing.

## Conclusion

In *Web‑adviso v. Trump*, the Eastern District of New York entered summary judgment for Trump, concluding that Web‑Adviso’s registration and monetized use of TRUMP + geographic domain names (including trumpindia.com and trumpmumbai.com) was confusingly similar to Trump’s incontestable TRUMP mark and was undertaken with bad faith intent to profit, establishing liability under the ACPA and supporting trademark infringement and unfair‑competition claims; Web‑Adviso’s declaratory‑judgment claims and asserted defenses, including parody/disclaimers and laches, did not prevent judgment for Trump.


Web-adviso v. Trump, 927 F. Supp. 2d 32 (2013)