Donald Trump’s judicial challenges (and misfortunes) in his bid to return to the White House were not enough: even his attempts to recover two domain names proved more difficult than expected.

The battle for domain names, as is well known, is a no quarter fight, where even the most structured companies with the most extensive protection guaranteed by their trademark portfolios, often find it difficult to recover domains deemed to infringe their rights.

At issue for the ex-tenant of the White House were the two domain names ‘mar-a-lago.com’ and ‘maralago.com‘, corresponding to the name of the sumptuous residence in Palm Beach, Florida, owned by Mr. Trump. 

A triumph of decorative exuberance in the Moorish style, the mansion had first been the winter retreat of heiress and socialite Marjorie Merriweather Post and then Trump’s private residence; in the 1990s, it was then transformed into an exclusive club reserved for the happy few, to cope with a period of economic tribulation of the former president.

The name of the villa was filed as a trademark in the USA first as ‘THE MAR-A-LAGO CLUB’ in April 1997 (but claiming a use in commerce dating back to 1994) and then in 2009 as ‘MAR-A-LAGO’ (with first claimed use in commerce in 2008). DTTM Operations LLC, a company affiliated with The Trump Organisation and in charge of protecting Mr. Trump’s trademarks, then acquired the registrations and, in 2023, started proceedings to recover the domains through the WIPO Arbitration and Mediation Centre, which as well known, provides  a dispute resolution system to resolve conflicts related to domain names.

The Policy governing these disputes outlines specific criteria for the recovery of a domain name. The domain must in fact be:

• identical or extremely similar to an earlier right,
• the current holder must have no legitimate rights to the domain itself, and
• there must be evidence of bad faith of registration and use of the domain. The latter includes situations in which the domain was acquired in order to resell it at an exorbitant price, used to block the trademark owner from using the sign in a corresponding domain or to deceptively attract web traffic for financial gain.

In the course of the proceedings, a rather curious explanation for the choice of names for the two domains emerged. It turned out that the original owner of the domains, one Marc Quarius, had registered them in March and May 1997 to commemorate his three beloved pets who had passed away: “Mar” was a dog named in short after the owner’s first name, Marq. “A” represented “Alfred,” a duck that frequented the pond behind their home, named after Alfred Hitchcock. “Lago” was a nickname for “Lag”, a slow cat the family had rescued.”

Bizarrely, the initials of these animals made up precisely ‘MAR-A-LAGO’.

For years, domains were associated with a content-rich memorial site celebrating their lives. However, the redirection was then changed to point to a page proposing ‘odes to planet Earth’. Finally, Mr. Quarius transferred the domain ‘maralago.com’ to a third party, which removed any link with the former website.

Donald Trump’s lawyers relied on the absence of rights to or ownership of the two domains and bad faith in their use to request their reassignment to his company. However, it emerged in the course of the proceedings that, in the case of ‘maralago.com’, the domain did not refer to any website and, in the case of ‘mar-a-lago.com’, it referred to a site without any reference to the Palm Beach residence or club. Neither owner ever associated the websites with any commercial activity (except for a voluntary contribution for the maintenance of the site that the original owner of both domains had requested from users in the past). Moreover, the owners justified themselves by citing examples of other uses of the same name in geographical or commercial contexts in the States, which could be explained by the purely descriptive meaning of the expression ‘Mar-a-lago’ in Spanish (i.e., ‘from the sea to the lake’). This name, in fact, perfectly describes the location of the residence, situated between the Atlantic Ocean (the ‘sea’) and the Lake Worth Lagoon (the ‘lake’).

In both cases, the Panel rejected the hypothesis of bad faith, finding Trump’s claims unfounded. In particular, in the case of the ‘mar-a-lago.com’ site, it was ruled that its use did not constitute cybersquatting, i.e. the practice of registering domain names corresponding to well-known trademarks in order to resell them at a high price. It also appears that the former President failed to provide sufficiently convincing evidence of consistent use of his mark prior to the registration of the domain name; the first filing of the sign ‘MAR-A-LAGO’ as a trademark had in fact only taken place after the registration of the domain name.

In both cases, in general, the claimant’s arguments failed to prevail over those of the domain owners, which is quite an achievement, considering that their defence was based on the commemoration of three deceased pets.

The decisions illustrated here are a prime example of the obstacles a company may face in protecting its trademarks in the domain name sector and provide several pointers to take into account whenever deciding to proceed with an attempt to recover a domain:

• The administrative reassignment procedure is not designed to adjudicate all possible disputes that relate in any way to domain names and the Panel does not have the benefit of cross-examination of witnesses, disclosure of documents held by the parties, or the other instruments that are typically available to assist a court to resolve certain kinds of disputes and this  may lead to unfavourable outcomes for a trademark owner;
• Ownership of an exclusive trademark right that predates the domain registration is not always sufficient to guarantee its recovery. The complainant must also have solid evidence supporting the use of their prior trademark, especially if they intend to proceed based on a de facto right (or a common law trademark).
• The claimant may not merely assert the generic lack of rights to or ownership of a domain by its holder, but must instead provide evidence capable of convincing the Panel that this may be the only possible conclusion in the individual case.

For the real estate mogul, who has become an iconic figure in Manhattan, those setbacks are undoubtedly searing.

The bright side? He can find consolation and cope with these setbacks from the comfort of his majestic Palm Beach residence…