Web-adviso v. Trump

Web-adviso (plaintiff) was a business that acquired over 200 high-value domain names and “parked” them with domain-parking service providers. At the time, Donald Trump (defendant) was known primarily as a real estate developer, hotelier, and reality-show host. Trump had registered his last name in capital letters as a trademark with the United States Patent and Trademark Office and used the mark continuously for at least five years. After Trump’s son announced plans to build Trump hotels and residences in Mumbai and Bangalore, India, Web-adviso purchased the domain names trumpindia.com and trumpmumbai.com. Trump’s attorney informed Web-adviso that Web-adviso’s use of the domain names violated Trump’s rights. After Web-adviso refused to transfer the domain names, Web-adviso sued, seeking a declaration that Web-adviso is entitled to use the domain names. Trump brought counterclaims against Web-adviso, alleging trademark infringement, unfair competition, trademark dilution, violation of the Lanham Act’s Anticybersquatting Consumer Protection Act (ACPA), and unfair trade practices. Trump moved for partial summary judgment pursuant to Federal Rule of Civil Procedure 56 on Web-adviso’s claims and Trump’s counterclaims, arguing no genuine issue of material fact existed that Web-adviso has a protectable trademark, that Web-adviso’s use of the mark was likely to cause confusion, and that Web-adviso was a cybersquatter under the ACPA.