Barclays PLC v. Antwan Barnes
Claim Number: FA1809001806411
Complainant is Barclays PLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Antwan Barnes (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barclaysbankus.com>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2018; the Forum received payment on September 17, 2018.
On September 20, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <barclaysbankus.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@barclaysbankus.com. Also on September 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
A. Complainant
Complainant, Barclays PLC, is one of the world’s oldest and leading financial institutions. Complainant currently maintains operations in over seventy countries and territories worldwide. Complainant has rights in the BARCLAYS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,049,848, registered Jan. 24, 2008). Respondent’s <barclaysbankus.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the disputed domain name plus the descriptive terms “bank” and “us” as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <barclaysbankus.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to commercially gain by operating a parked webpage that contains advertisements and hyperlinks to third parties that compete with Complainant’s business. Further, Respondent offers the disputed domain name for sale to the general public on the resolving webpage.
Respondent registered and uses the <barclaysbankus.com> domain name in bad faith. Respondent offers the domain name for sale on the resolving webpage associated with the domain name. Further, Respondent has a history of registering confusingly similar domain names, as a reverse WHOIS search using Respondent’s email address reveals numerous other domain names containing famous third-party marks. Additionally, Respondent disrupts Complainant’s business by intentionally attempting to attract Internet users to its website where it commercially benefits through the offering of competitive click-through advertisements. Finally, Respondent clearly had actual knowledge of Complainant’s mark prior to registering the domain name given Complainant’s long and well established reputation in its mark through its exclusive and wide spread use in connection with its goods and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Barclays PLC, is one of the world’s oldest and leading financial institutions. Complainant currently maintains operations in over seventy countries and territories worldwide. Complainant has rights in the BARCLAYS mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 3,049,848, registered Jan. 24, 2008). Respondent’s <barclaysbankus.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <barclaysbankus.com> domain name on October 23, 2009.
Respondent lacks rights and legitimate interests in the <barclaysbankus.com> domain name. Respondent attempts to commercially gain by operating a parked webpage that contains advertisements and hyperlinks to third parties that compete with Complainant’s business. Further, Respondent offers the disputed domain name for sale to the general public on the resolving webpage.
Respondent registered and uses the <barclaysbankus.com> 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(f), 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 (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 has rights in the BARCLAYS mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. 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 Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015).
Respondent’s <barclaysbankus.com> domain name is confusingly similar to Complainant’s mark as Respondent incorporates the entire mark in the disputed domain name, adding the descriptive terms “bank” and “us” as well as the “.com” gTLD.
Respondent has no rights or legitimate interests in the <barclaysbankus.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Antwan Barnes” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BARCLAYS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <barclaysbankus.com> domain name under Policy ¶ 4(c)(ii).
Respondent uses the <barclaysbankus.com> domain name to resolve in a parked website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. 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). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Further, Complainant claims that Respondent offers the <barclaysbankus.com> domain name for sale. Offering a confusingly similar domain name for sale to the public can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Respondent offers the <barclaysbankus.com> domain name for sale, which shows bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Respondent has a history of registering confusingly similar domain names to famous third party marks. A complainant may use cybersquatting arguments against a respondent in the current proceeding to show bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides a screenshot of a reverse WHOIS search using Respondent’s email address, which shows Respondent owns at minimum 124 domain names incorporating marks such as “MEDICARE,” “AMTRAK,” and “APPLEBEES.” Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering domain names incorporating famous third-party marks.
Additionally, Respondent registered and uses the <barclaysbankus.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Finally, Respondent had actual knowledge of Complainant’s rights in the BARCLAYS mark at the time of registering the <barclaysbankus.com> domain name. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barclaysbankus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 20, 2018
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