Barclays Bank PLC v. Elbi Rodriguez
Claim Number: FA1504001614369
Complainant is Barclays Bank PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Elbi Rodriguez (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2015; the Forum received payment on April 14, 2015.
On April 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@barclayscarservice.com, postmaster@barclayscarservice.net, postmaster@barclayscarservice.info, and postmaster@barclayscarservice.org. Also on April 20, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant
1. The manner in which the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i)).
2. Respondent should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the Complaint. (UDRP Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)).
3. The domain names should be considered as having been registered and used in bad faith. (UDRP Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org> domain names are confusingly similar to Complainant’s BARCLAYS marks.
2. Respondent does not have any rights or legitimate interests in the <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org> domain names.
3. Respondent registered or used the <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org> 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(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.”).
Complainant Barclays Bank PLC (including its affiliates, collectively, “Barclays” or “Complainant”) is one of the world’s oldest and leading financial institutions. Founded over 300 years ago, Barclays currently maintains operations in over seventy countries and territories worldwide. In the United States, beginning at least as early as 1935, Barclays and its licensees have used names and marks containing or comprising BARCLAYS, alone and with other words and/or design elements (collectively, the “BARCLAYS Marks”), in connection with banking, financial and related services. For numerous years, Barclays has presented the BARCLAYS Marks prominently utilizing the color blue, including Pantone “Process Cyan,” in Barclays’ proprietary Expert Sans and Expert Serif typefaces and/or in conjunction with a silhouette of an eagle (collectively, “BARCLAYS Trade Dress”).
Barclays also has used its BARCLAYS Marks and BARCLAYS Trade Dress in connection with numerous other goods and services, including those related to transportation. For example, for numerous years, Barclays has used its BARCLAYS Marks and BARCLAYS Trade Dress in connection with various golf-related goods and services, including in connection with the annual THE BARCLAYS golf tournament in the New York metropolitan area. There, among other things, Barclays’ BARCLAYS Marks prominently are used in connection with the tournament’s multitude of official vehicles.
The Disputed Domain Names, each of which incorporates Complainant’s BARCLAYS Marks in whole are deemed to be virtually identical or confusingly similar to Complainant’s registered BARCLAYS Marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
The addition of the descriptive term “car service” in each of the Disputed Domain Names does not obviate the confusing similarity between the Disputed Domain Names and Complainant’s BARCLAYS Marks. See Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Nat. Arb. Forum Mar. 24, 2009) (addition of generic or descriptive words “bank” and “online” in domain MORGANSTANLEYBANKONLINE to complainant’s MORGAN STANLEY mark did not obviate confusion); eBay Inc. v. ebayMoving / Izik Apo, D2006-1307 (WIPO Jan. 31, 2007) (EBAYMOVING.COM confusingly similar to EBAY mark).
Similarly, the addition of the gTLDs .COM, .NET, .ORG and .INFO in the Disputed Domain Names fails to distinguish the Disputed Domain Names from Complainant’s BARCLAYS Marks. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Nat. Arb. Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
The Panel finds the subject domain names are identical and/or confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (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.”).
Based upon the record herein, neither BARCLAYS nor the Disputed Domain Names are part of Respondent’s name. Additionally, it is apparent prior to the time Complainant established rights in its BARCLAYS Marks and the time BARCLAYS CENTER venue opened, Respondent did not actually engage in any legitimate business or commerce under the name BARCLAYS or the Disputed Domain Names, and Respondent was not commonly known by either of those names. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Nat. Arb. Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name); Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Nat. Arb. Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BARCLAYS Marks or the Disputed Domain Names. Respondent has no relationship to Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Respondent’s use of confusingly similar domain names to attract and mislead consumers to a website and business that consumers likely mistakenly will believe emanates from or is sponsored, licensed or endorsed by Complainant or BARCLAYS CENTER venue is not a legitimate or bona fide use of a domain name under the Policy. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and goodwill surrounding mark as means of attracting Internet users to unrelated business was not bona fide offering of goods or services).
Indeed, given (a) the fame and renown of Complainant, its BARCLAYS Marks, including the mark BARCLAYS CENTER, and its BARCLAYS Trade Dress, (b) Respondent’s apparent lack of connection or association with the name “Barclays” and (c) Respondent’s use of a name, a mark, a logo, a font and colors confusingly similar to the BARCLAYS Marks and BARCLAYS Trade Dress—in connection with a purported business located and offering transportation services in close proximity to BARCLAYS CENTER—there can be no other logical explanation for Respondent’s selection and adoption of the Disputed Domain Names other than to create some impression of association with Complainant or BARCLAYS CENTER. See Drexel University v. David Brouda, D2001- 0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Lastly, Respondent does not have any legitimate rights in the disputed domain name given the prior use and registration of Complainant’s BARCLAYS Marks. The Panel finds, due to the fame of Complainant’s mark, that Complainant’s prior use and registration of such marks give Respondent actual knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Nat. Arb. Forum Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks prior to registration of domain name due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with USPTO provided constructive notice to respondent of complainant’s rights in MORGAN STANLEY marks).
Complainant has a long and well established reputation in its marks through its exclusive and wide spread use in connection with its goods and services. There is no reasonable doubt that Respondent was aware of Complainant’s marks when it chose and registered the Disputed Domain Names, and in fact chose the domain names because they were confusingly similar to Complainant’s well-known marks and because Respondent intended to capitalize on that confusion to attract Internet users to his webpage and business. This alone constitutes evidence of bad faith use and registration of the Disputed Domain Names. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Nat. Arb. Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”).
Respondent’s use of a confusingly similar domain name to trade upon Complainant’s goodwill in its BARCLAYS Marks, including the mark BARCLAYS CENTER, in order to attract and misdirect consumers to a website that consumers likely mistakenly will believe emanates from or is sponsored, licensed or endorsed by Complainant is strong evidence of bad faith use and registration of the disputed domain name. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its website by using complainant’s famous marks and likeness); Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Nat. Arb. Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”).
Finally, because Complainant’s BARCLAYS Marks are well known and registered in many countries throughout the world, including the United States, Respondent is presumed to have had actual knowledge of such marks at the time Respondent registered his confusingly similar Disputed Domain Names. This knowledge indicates Respondent’s bad faith. See Carnival Plc v Belize Domain WHOIS Service Lt, FA 997973 (Nat. Arb. Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barclayscarservice.com>, <barclayscarservice.net>, <barclayscarservice.info>, and <barclayscarservice.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 29, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page