Barclays PLC v. Craven Casper
Claim Number: FA1810001811366
Complainant is Barclays PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Craven Casper (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barclaysbankdelaware.org> and <barclaysbankowned.com>, 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.org> and <barclaysbankowned.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 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.org, postmaster@barclaysbankowned.com. 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.
A timely Response was received and determined to be complete on November 5, 2018.
On November 6, 2018, pursuant to Complainant'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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names are confusingly similar to Complainant’s BARCLAYS mark.
2. Respondent does not have any rights or legitimate interests in the <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names.
3. Respondent registered and uses the <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names in bad faith.
B. Respondent
1. Complainant’s attorney is not licensed to practice law in the State of North Carolina.
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.org> and <barclaysbankowned.com> domain names on July 27, 2018, and does not actively use them. Respondent’s allegation regarding Complainant’s counsel is irrelevant to this proceeding.
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.
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.org> and <barclaysbankowned.com> 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.org> and <barclaysbankowned.com> 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.org> and <barclaysbankowned.com> 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 the registrant of the disputed domain names as “Craven Casper.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <barclaysbankdelaware.org> and <barclaysbankowned.com> 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).”).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names is demonstrated by its failure to use them for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant shows that the disputed domain names do not resolve to active webpages. The Panel therefore finds that Respondent’s inactive holding of the disputed domain names does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant contends that Respondent also registered two other domain names, <barclaysbankdelaware.us> and <barclaysbankowned.us>, and is using these domain names to impersonate Complainant in furtherance of phishing. The Panel finds that this is a further indication that Respondent has no rights or legitimate interest in any domain name containing Complainant’s BARCLAYS mark. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that, in light of the fame and notoriety of Complainant's BARCLAYS mark, it is inconceivable that Respondent could have registered the <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and notes that Respondent also uses the <barclaysbankdelaware.us> and <barclaysbankowned.us> domain names to impersonate Complainant. The Panel finds that Respondent had actual knowledge of Complainant's rights in the BARCLAYS mark prior to registering the disputed domain names, which is evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant asserts that Respondent’s failure to use the <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names is evidence of its bad faith. The Panel agrees and finds that Respondent’s inactive holding of the disputed domain names is bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
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 <barclaysbankdelaware.org> and <barclaysbankowned.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 7, 2018
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