Barclays PLC v. Craven Casper
Claim Number: FA1810001811368
Complainant is Barclays PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Craven Casper (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barclaysbankdelaware.us> and <barclaysbankowned.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2018; the Forum received payment on October 11, 2018.
On October 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2018 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@barclaysbankdelaware.us, postmaster@barclaysbankowned.us. Also on October 17, 2018, 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 November 9, 2018, pursuant to Barclays PLC’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names are confusingly similar to Complainant’s BARCLAYS mark.
2. Respondent does not have any rights or legitimate interests in the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names.
3. Respondent registered and uses the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names in bad faith.
B. Respondent failed to submit a response.
Complainant, a well-known financial institution, holds a registration for its BARCLAYS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,305,566, registered Jan. 4, 2000).
Respondent registered the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names on July 27, 2018. Respondent uses the <barclaysbankowned.us> domain name to resolve to a parking page, and uses of the <barclaysbankdelaware.us> domain names to pass off as Complainant and engage in phishing.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of the BARCLAYS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark.)
Respondent’s <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names incorporate the BARCLAYS mark and simply add common terms. Adding a generic/descriptive term, geographic term, or a gTLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). The Panel therefore finds that Respondent’s <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names are confusingly similar to Complainant’s BARCLAYS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names and is not commonly known by the domain names. Complainant has not authorized Respondent to use the BARCLAYS mark in any way. The WHOIS information of record identifies Respondent as “Craven Casper.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further asserts that Respondent fails to use the disputed domain names for a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant demonstrates that the <barclaysbankowned.us> domain name resolves to a parked page with a message stating “website coming soon.” The Panel finds that this use does not establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Complainant contends that Respondent uses the <barclaysbankdelaware.us> domain name to pass off as Complainant and engage in phishing. Use of a domain name to pass off as a complainant and engage in phishing is evidence of a lack of rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant argues that the website at <barclaysbankdelaware.us> was designed to impersonate Barclays and shows that Respondent uses it to seek personal information from Internet users, such as their names and email addresses through “sign up” and “contact us” forms on the website. The Panel finds that this use does not establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or (iii).
The Panel therefore finds that Respondent has no rights or legitimate interests in the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names, and that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names in bad faith because Respondent uses the domain names to divert Internet users away from Complainant, thereby disrupting Complainant’s business. The Panel agrees and finds that Respondent disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”).
Respondent uses the <barclaysbankdelaware.us> domain name to phish for Internet users’ personal information. The Panel finds that under Policy ¶ 4(a)(iii). Respondent registered and uses the <barclaysbankdelaware.us> domain name in bad faith by phishing for Internet users’ personal information. See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name).
Complainant also argues that, in light of the fame and notoriety of Complainant’s BARCLAYS marks, it is inconceivable that Respondent could have registered the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names without actual knowledge of Complainant’s rights in the mark. Where a mark is famous, respondent may be presumed to have actual knowledge of complainant’s mark per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Accordingly, the Panel finds that, due to the fame of the BARCLAYS mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names and thus registered them in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 12, 2018
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