Barclays Bank PLC v. Gene Finch / Ariel Sokolovsky
Claim Number: FA1510001642110
Complainant is Barclays Bank PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Gene Finch / Ariel Sokolovsky (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barclayscenterflorist.com> and <barclayssportscenterflorist.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2015; the Forum received payment on October 12, 2015.
On October 13, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <barclayscenterflorist.com> and <barclayssportscenterflorist.com> 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 October 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@barclayscenterflorist.com, postmaster@barclayssportscenterflorist.com. Also on October 14, 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 November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” To support its claim that both the <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names are controlled by the same entity, Complainant makes the following arguments: both domain names are similar in their appearance, the domain names were registered on the same day with the same registrar, both domain names resolve to nearly identical websites, and the listed registrant for the <barclayscenterflorist.com> domain name (Gene Finch) confirmed with Complainant by telephone that he owned both of the domain names.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BARCLAYS trademark (e.g., Reg. No. 3,195,676, registered Jan. 9, 2007), as well as the BARCLAYS CENTER trademark (e.g., Reg. No. 3,826,772, registered Aug. 3, 2010). The BARCLAYS mark has been used by Complainant for years in connection with its offerings of financial services. The BARCLAYS CENTER mark is used in connection with the promotion of various entertainment-related events that take place at a sports arena by the same name located in New York. To promote this mark, it is used on various merchandise items (e.g., keychains, license plate covers, clocks, jewelry, ornamental lapel pins, etc.) and in printed publications. The <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names are confusingly similar to both the BARCLAYS and the BARCLAYS CENTER marks because both domain names contain both marks in their entirety, and make only insignificant alterations such as adding the generic terms “sports” and/or “florist,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by either of the domain names, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because the domain names resolve to webpages that offer services unrelated to Complainant.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business and attempting to commercially profit from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s trademark rights at the time the domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Barclays Bank PLC of London, United Kingdom. Complaint is the owner of USA registrations for the marks BARCLAYS and BARCLAYS CENTER. Complainant purportedly has been in existence in excess of 300 years and operates in more than 70 countries and territories throughout the world. Complaint has continuously used its marks since at least as early as 1999 in connection with its provision of goods and services in the banking and financial services industry.
Respondent is Gene Finch / Ariel Sokolovsky of Brooklyn, NY USA and Boston, MA, USA respectively. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names were registered on or about October 24, 2011.
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 owns trademark registrations with the USPTO for the BARCLAYS trademark (e.g., Reg. No. 3,195,676, registered Jan. 9, 2007), as well as the BARCLAYS CENTER trademark (e.g., Reg. No. 3,826,772, registered Aug. 3, 2010). The BARCLAYS mark has been used by Complainant for years in connection with its offerings of financial services. The BARCLAYS CENTER mark has been used for years in connection with the promotion of various entertainment-related events that take place at a sports arena by the same name located in New York. To promote this mark, it is used on various merchandise items (e.g., keychains, license plate covers, clocks, jewelry, ornamental lapel pins, etc.) and in printed publications. The Panel finds that registrations with the USPTO sufficiently establish Complainant’s rights in the trademarks under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names are confusingly similar to both the BARCLAYS and the BARCLAYS CENTER marks. Complainant contends that both domain names contain both marks in their entirety, and make only insignificant alterations such as adding the generic terms “sports” and/or “florist,” along with the gTLD “.com.” Prior panels have found that the gTLD “.com” cannot distinguish a domain name from the mark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Prior panels have also found confusing similarity where the domain name contained the entire mark and added various generic terms. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). The Panel here finds that the <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names are confusingly similar to both the BARCLAYS and the BARCLAYS CENTER marks under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known as either the <barclayscenterflorist.com> or <barclayssportscenterflorist.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use either mark in domain names. The Panel notes that “Ariel Sokolovsky” is listed as the registrant of record for the <barclayssportscenterflorist.com> domain name, and “Gene Finch” is listed as the registrant of record for the <barclayscenterflorist.com> domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. Due to Respondent’s failure to provide any supporting evidence Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant additionally argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that both domain names resolve to websites where Respondent is using both marks to offer florist, gift basket, and related services in the Brooklyn, New York area. Previous panels have declined to find respondents rights under Policy ¶¶ 4(c)(i) or (iii) where a confusingly similar domain name was used to run a business unrelated to the mark(s) at issue. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel here finds that the disputed domain names are confusingly similar to Complainant’s BARCLAYS and BARCLAYS CENTER marks, and that Respondent lacks rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant contends that its business is being disrupted because Respondent’s use of the BARCLAYS and BARCLAYS CENTER marks on the resolving webpages drives business away from Complainant. The Panel again notes that both domain names resolve to webpages that purport to offer fruit basket and floral delivery services. Past panels have expanded the definition of “competition” to include “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). The Panel here finds that Respondent’s use of the domain names is in competition with Complainant and its marks, thus supporting the conclusion that bad faith exist under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant contends that a likelihood of confusion exists because the websites resolving from the disputed domain names contain both marks at issue. Further, Complainant correctly notes that Respondent’s use of a disclaimer on the resolving webpages fail to negate any confusion. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Previous panels have found that where a likelihood of confusion for commercial profit exists, bad faith is also present under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel here finds that Respondent’s use of the disputed domain names creates a likelihood of confusion for commercial profit and thus supports a finding of bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <barclayscenterflorist.com> and <barclayssportscenterflorist.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 23, 2015
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