Barclay Damon LLP v. Kristina Glen / Barclay Damon LLP
Claim Number: FA2005001895762
Complainant is Barclay Damon LLP (“Complainant”), represented by John D. Cook of Barclay Damon LLP, New York, USA. Respondent is Kristina Glen / Barclay Damon LLP (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barclaydamonllp.com> (“Domain Name”), registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2020; the Forum received payment on May 11, 2020.
On May 11, 2020, Google LLC confirmed by e-mail to the Forum that the <barclaydamonllp.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barclaydamonllp.com. Also on May 18, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Barclay Damon, is a law firm with nearly 300 lawyers in the Northeastern United States. Complainant has rights in the BARCLAY DAMON mark based upon its application of the mark with the United States Patent and Trademark Office (“USPTO”). Further, Complainant has used the BARCLAY DAMON mark consistently since 2015. Respondent’s <barclaydamonllp.com> domain name is confusingly similar to Complainant’s BARCLAY DAMON mark, as the domain name incorporates the mark in its entirety and adds “llp” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <barclaydamonllp.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the BARCLAY DAMON mark in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the Domain Name.
Respondent registered and is using the <barclaydamonllp.com> domain name in bad faith. Specifically, Respondent uses the Domain Name to send fraudulent emails seeking financial information from Complainant’s clients.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but did send two e-mails, one of which contains the statement “Hello, I am sorry but I do not understand. I have no idea who barclay Damon is. I don’t know what that phone number is or that email.”
There is the possibility that the nominal Respondent in this matter is not the holder of the Domain Name registration. Rather, the actual registrant of the Domain Name may have falsified the WHOIS contact registration leaving the nominal Respondent as an innocent party. Pursuant to Policy ¶ 4(j) all decisions under the Policy are to be published over the internet in-full, except that a panel may determine, in exceptional cases, that portions of its decision be redacted. As the Panel does not have clear proof that the nominal Respondent in this matter is not the holder of the Domain Name registration the Panel finds that this is not such an exceptional case, but notes the possibility for the record.
Complainant holds trademark rights for the BARCLAY DAMON mark. The Domain Name is confusingly similar to Complainant’s BARCLAY DAMON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the BARCLAY DAMON mark based upon its application of the mark with the USPTO. An application of a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the BARCLAY DAMON mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant has operated a law firm of significant size under the BARCLAY DAMON name since June 1, 2015. The evidence in the Complaint is of a significant regional firm that has for almost 5 years used the BARCLAY DAMON mark as the distictinve identifier of its business. The Panel is satisfied from Complainant’s evidence as to legnth and manner of use that Complainant’s use of the BARCLAY DAMON mark for its legal business is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the BARCLAY DAMON mark for the purposes of Policy ¶ 4(a)(i).
In support of the above conclusion the Panel notes that section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” Such a situation has emphatically occurred in the present case where Respondent seeks to take advantage of people’s familiarity with Complainant and its mark by posing as Complainant.
The Panel finds that the <barclaydamonllp.com> domain name is confusingly similar to Complainant’s BARCLAY DAMON mark as it wholly incorporates the BARCLAY DAMON mark and then adds the descriptive abbreviation “llp” (short for “limited liability partnership”) and a “.com” generic top-level domain (“gTLD”). Addition of a generic or descriptive term and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BARCLAY DAMON mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “Kristina Glen / Barclay Damon LLP” as registrant of record. The fact that the Respondent has sought to register the Domain Name under the name “Barclay Damon LLP” does not assist it; given the denial by the named Respondent of any association or awareness of Complainant or its BARCLAY DAMON mark it is apparent that the use of “Barclay Damon LLP” amounts to the use of false contact details designed to lend apparent legitimacy to the registration when there is none. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services Complainant alleges, and provides evidence supporting its allegations, that Respondent uses an email address associated with Domain Name to attempt to pass itself off as Complainant (in particular a partner of the Complainant) in furtherance of a phishing scam. Use of a disputed domain name to pass off as a complainant through emails is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, March 26, 2020, Respondent had actual knowledge of Complainant’s BARCLAY DAMON mark. The Respondent uses the Domain Name to pass itself off as Complainant (and indeed a specific partner of Complainant) for financial gain or to disrupt Complainant’s business. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses an email address associated with the Domain Name to attempt to pass itself off as an partner of the Complainant to disrupt the Complainant’s business or for financial gain. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barclaydamonllp.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 17, 2020
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