By Steve Levy
In 1985 Donald Trump purchased the Mar-a-Lago estate in Florida and, in 1995, developed it into a resort which includes a golf course, beach club, spa, guest suites, dining, boutique, and catered events for members and guests. The Club is advertised in print and online at www.maralagoclub.com. In March of 1997, a Florida man named Marq Quarius registered the mar-a-lago.com domain name and redirected it to another website that appears to be a memorial to Mr. Quarius’ mother. The operating company for Mar-a-Lago, DTTM Operations LLC, sent demand letters to Mr. Quarius in 1998 and again in 2020 but the matter remained unresolved. This year, DTTM filed a UDRP complaint against the mar-a-lago.com domain name claiming that it is confusingly similar to the registered MAR-A-LAGO trademark, that the Respondent, Mr. Quarius, has no rights or legitimate interests in the domain, and that he registered it in bad faith with an intent to cause confusion, for commercial gain, and to deprive Complainant of using its famous trademarks as domain names to promote its business. Respondent claims that he created the domain at his mother’s suggestion after three family pets died. “Mar” was a dog named in short after the Respondent’s first name, Marq, “A” represented “Alfred,” a duck that frequented the pond behind their home, named after Alfred Hitchcock, and “Lago” was a nickname for “Lag”, a slow cat the family had rescued.
While the panel found that Respondent’s explanation “strain[s] credulity”, it noted that the MAR-A-LAGO mark was registered in April of 1997, one month after Respondent registered the disputed domain name. As required by UDRP par. 4(a)(iii), a brand owner must prove that the domain name was both registered and used in bad faith. Where a domain name is registered prior to the existence of a complainant’s trademark rights, it typically cannot have been targeting the then non-existent mark in bad faith. Here, the MAR-A-LAGO resort and common law (“unregistered”) trademark existed long before the April 1997 registration but Complainant’s counsel only submitted into evidence a copy of the registration certificate. The panel noted that “despite the fact that this is an important aspect of this case, the Complaint does not include evidence of such early use to support common law rights before trademark registration.” The bottom line is that DTTM’s lawyer didn’t fully understand how the UDRP works and failed to submit truly critical and easily obtainable pieces of evidence. Unfortunately for them, UDRP complaints may not be re-filed and so the only option at this point is for DTTM to file a court action against Mr. Quarius. But maybe there’s a silver lining here as they could put him on the witness stand and see if his pet memorial story holds up under cross-examination.
As an aside, in response to the 2020 demand letter, Mr. Quarius offered to voluntarily transfer the domain name if DTTM would make a donation in his mother’s name, equal to the cost of the domain registration fees, to an animal welfare society. DTTM didn’t respond to this but, three years later, filed the UDRP complaint. What can FairWinds Partners and its clients learn from this part of the story? Sometimes it’s better to take a pragmatic approach by settling a case for a few hundred dollars rather than risk a few thousand dollars on a questionable UDRP complaint.