Barclays Bank PLC v. John Peterson
Claim Number: FA1501001598260
Complainant is Barclays Bank PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is John Peterson (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebarclayscenter.org>, registered with Mesh Digital Limited (R1728-Lror).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2015; the National Arbitration Forum received payment on January 6, 2015.
On January 7, 2015, Mesh Digital Limited (R1728-Lror) confirmed by e-mail to the National Arbitration Forum that the <thebarclayscenter.org> domain name is registered with Mesh Digital Limited (R1728-Lror) and that Respondent is the current registrant of the name. Mesh Digital Limited (R1728-Lror) has verified that Respondent is bound by the Mesh Digital Limited (R1728-Lror) 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 January 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2015 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@thebarclayscenter.org. Also on January 8, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
1. Respondent’s <thebarclayscenter.org> domain name is confusingly similar to Complainant’s BARCLAYS CENTER mark.
2. Respondent does not have any rights or legitimate interests in the <thebarclayscenter.org> domain name.
3. Respondent registered and uses the <thebarclayscenter.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers financial services under its BARCLAYS mark. Complainant uses its BARCLAYS CENTER mark in connection with an event center in Brooklyn, New York. The BARCLAYS CENTER mark is registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,816,051, registered July 13, 2010).
Respondent registered the <thebarclayscenter.org> domain name on June 26, 2014, and uses it to promote the sale of tickets to events at the Barclays Center without Complainant’s authorization.
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(e), 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 (Nat. Arb. 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 USPTO registration establishes Complainant’s Policy ¶ 4(a)(i) rights in the BARCLAYS CENTER mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <thebarclayscenter.org> domain name is confusingly similar to the BARCLAYS CENTER mark in that it adds the term “the” and a gTLD to the mark and nothing more. These changes do not distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel finds that Respondent’s <thebarclayscenter.org> name is confusingly similar to Complainant’s BARCLAYS CENTER 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant contends that Respondent is not commonly known by the <thebarclayscenter.org> domain name and Respondent is not licensed to use the BARCLAYS CENTER mark. The registrant of record for this domain name as listed in WHOIS is “John Peterson.” The Panel finds that there is no evidence to suggest that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant argues that Respondent uses the disputed domain name to promote the sale of tickets to events at the Barclays Center, without Complainant’s authorization. In Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005), the panel found that using a domain name to create the impression that consumers would be doing business with the complainant is not a protectable use under Policy ¶ 4(c)(i) as it is not bona fide. The Panel finds that Respondent’s use of the <thebarclayscenter.org> domain name is not a bona fide offering, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent sought to sell the domain name in response to Complainant’s cease-and-desist demand, requesting a sum of $10,000. This constitutes bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name.
Complainant argues that Respondent attempts to pass itself off as Complainant by promoting the BARCLAYS CENTER events without authorization. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found that making unauthorized sales under the complainant’s own trademarks suggested the intent to profit from a likelihood of confusion. The Panel agrees and finds that Respondent’s offer of tickets to BARCLAYS CENTER events shows a clear intent to profit from confusion among Internet users who believe they are dealing with Complainant. This constitutes Policy ¶ 4(b)(iv) bad faith.
The Panel finds that 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 <thebarclayscenter.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 8, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page