Barclays PLC v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1903001835579
Complainant is Barclays PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically March 25, 2019; the Forum received payment March 25, 2019.
On March 26, 2019, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2019, 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@barclayscardusa.com, postmaster@barclayscreditcard.com, postmaster@barclayes.com, and postmaster@barclaycardservices.com. Also on March 29, 2019, 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 April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant is one of the world’s oldest and leading financial institutions. Complainant provides a wide range of financial services, including without limitation, banking, mortgage, investment, asset management, securities trading, credit and debit card, and financial planning and advisory services. Complainant has rights in the BARCLAYS (e.g. Reg. No. 3,049,848, registered Jan. 24, 2006, filed Nov. 18, 2004) and BARCLAYCARD (e.g. Reg. No. 1,638,620, registered Mar. 19, 1991) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. 5. Respondent’s <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names are confusingly similar to Complainant’s mark as they add one or more generic/descriptive terms (“usa,” “card,” “credit,” and “services”), or add the letter “e,” while all of the domain names add the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the marks. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Respondent’s domain names resolve to websites containing advertisements for and hyperlinks to third-party businesses offering financial services that compete with Complainant’s services. See Compl. Ex. 7. Further, Respondent uses several different platforms to offer the domain names for sale. See Compl. Ex. 8. Additionally, Respondent engages in typosquatting by intentionally misspelling Complainant’s mark within the <barclayes.com> domain name.
Respondent registered and uses the <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names in bad faith. Respondent offers to sell each of the domain names. See Compl. Ex. 8. Further, each of the disputed domain names resolves to a parking website that contains advertisements for and hyperlinks to third-party sites that offer financial services that compete with Complainant’s financial services. See Compl. Ex. 7. Additionally, Respondent used a misspelling of Complainant’s mark, improperly targeting Internet users who commit typographical errors. Moreover, 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, meaning Respondent must have had actual knowledge of Complainant’s rights in the marks.
Respondent’s Contentions in Response in this Proceeding:
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the domain names on the following dates: <barclayscardusa.com> (August 20, 2007), <barclayscreditcard.com> (January 22, 2005), <barclayes.com> (June 20, 2006), and <barclaycardservices.com> (July 6, 2007). See Compl. Ex. 6.
FINDINGS
Complainant established rights and legitimate interests in the disputed domain names, each containing Complainant’s protected mark.
Respondent registered and used the disputed domain names, which are each confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names containing Complainant’s protected marks 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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere unsubstantiated arguments or conclusions without factual support. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar:
Complainant claims rights in the BARCLAYS (e.g. Reg. No. 3,049,848, registered Jan. 24, 2006, filed Nov. 18, 2004) and BARCLAYCARD (e.g. Reg. No. 1,638,620, registered Mar. 19, 1991) marks through registration of the marks with the USPTO. See Compl. Ex. 5. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Further, the relevant date of registration dates back to the filing date of the trademark application. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). Accordingly, the Panel finds that Complainant established rights in the BARCLAYS and BARCLAYCARD marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <barclayscardusa.com>, <barclayscreditcard.com>,<barclayes.com>,and <barclaycardservices.com> domain names are confusingly similar to Complainant’s marks as they add one or more generic/descriptive terms, a letter, and a gTLD. Similar changes in a registered mark failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein [under] Policy ¶ 4(a)(i).”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Morgan Stanley v Khodor Dimassi, FA 1672287 (Forum June 6, 2016) (finding the added letter ‘e’ in <emorganstanleybank.com> insufficient to distinguish the domain name from complainant’s MORGAN STANLEY mark). Here, the Panel notes that the <barclayscardusa.com> and <barclayscreditcard.com> domain names each add terms to the end of the BARCLAYS mark; the <barclayes.com> domain name adds an “e” to the BARCLAYS mark; and the <barclaycardservices.com> domain name adds the term “services” to the BARCLAYCARD mark. All of the domain names add the “.com” gTLD. For these reasons, the Panel finds that the disputed domain names are confusingly similar to the BARCLAYS and/or BARCLAYCARD marks under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered disputed domain names that contain Complainant’s protected marks and that are confusingly similar to that mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent has no rights or legitimate interests in the<barclayscardusa.com>,<barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names, as Respondent is not commonly known by the disputed domain names, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the marks. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS here identifies “Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the marks for any purpose. See Amend. Compl. Ex. 6. Accordingly, the Panel finds that Respondent is not commonly known by Complainant’s protected marks or the domain names at issue here under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s domain names resolve to websites containing advertisements for and hyperlinks to third-party businesses offering financial services that seek to compete with Complainant’s services. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the resolving webpages, all of which display links to various services relating to credit cards and other financial services. See Compl. Ex. 7. Accordingly, the Panel finds that Respondent’s use of the domain names to offer competing hyperlinks fails to confer rights and legitimate interests in the domain names for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant argues that Respondent uses several different platforms to offer the domain names for sale. Offering a confusingly similar domain name for sale can evidence a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides various screenshots of the sale offers, which include solicitations on the WHOIS information, on the resolving webpages, and on “afternic.” See Compl. Exs. 6-8. The Panel notes that the offers range from $1,571.00 to $8,999.00. Id. For these reasons, the Panel finds that Respondent offers the disputed domain names for sale, indicative of possessing no rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).
Additionally, Complainant claims that Respondent engages in typosquatting by intentionally misspelling Complainant’s mark within the <barclayes.com> domain name. Registering a domain name containing common typing errors in a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, the domain name incorporates the entire mark and adds the letter “e” without any other changes or additions. This Panel agrees that Respondent’s domain name is a typosquatted version of Complainant’s mark, and considers this as additional evidence showing lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent offers to sell each of the domain names. Offering to sell a confusingly similar domain name can evidence bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Once again, Complainant provides various screenshots of the sale offers, which include solicitations on the WHOIS information, on the resolving webpages, and on “afternic.” See Compl. Exs. 6-8. The offers range from $1,571.00 to $8,999.00. Id. Accordingly, the Panel finds Respondent’s general offer to sell the domain names to be evidence of bad faith under Policy ¶ 4(b)(i).
Next, Complainant claims that each of the disputed domain names resolves to a parking website that contains advertisements for and hyperlinks to third-party sites that offer financial services that compete with Complainant’s financial services. Using a confusingly similar domain name to offer competing advertisement hyperlinks evidences bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant provided screenshots of the resolving webpages, all of which display links to various services relating to credit cards and other financial services. See Compl. Ex. 7. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant urges that Respondent used a misspelling of Complainant’s mark, improperly targeting Internet users who commit typographical errors. This practice, known as typosquatting, evidences bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, the <barclayes.com> domain name incorporates the entire mark and adds the letter “e” without any other changes or additions. Thus, this Panel finds that Respondent’s changes of Complainant’s mark in said domain name further demonstrates Respondent’s bad faith.
Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BARCLAYS and BARCLAYCARD marks at the time of registering the <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the fact that 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. The Panel finds that based on fame and long term use, as well as the attempted use Respondent made, Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names containing Complainant’s protected marks in bad faith; Complainant satisfied the elements of ICANN 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 <barclayscardusa.com>, <barclayscreditcard.com>, <barclayes.com>, and <barclaycardservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
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