WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Jamaal Patterson
Case No. D2012-1661
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, (“United Kingdom “) represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Jamaal Patterson of New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <barclayscenterevents.net>, <barclayscenterlive.com> and <barclayscentertickets.org> (collectively “the Domain Names”) are all registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, and providing the contact details for the Domain Names.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on October 2, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel is satisfied that the Complaint has been properly notified to the Respondent, in accordance with paragraph 2 of the Rules.
By Procedural Order No. 1, dated October 16, 2012, the Panel requested a further statement from the Complainant addressing the question of whether a third party mentioned in the Complaint might have rights in a “Barclay Center” mark, and if so whether any bad faith on the part of the Respondent might have been directed at this third party, and not at the Complainant. The Complainant was requested to provide the further statement by October 19, 2012, and the time for the Panel to give its decision in the case was extended to October 24, 2012.
The Complainant provided its further statement on October 18, 2012.
On October 19, 2012, the Respondent sent an email to the Center stating: “I have sent repeated requests to settle this matter with no response…”
By Procedural Order No. 2, dated October 24, 2012, the Panel requested advice from the Complainant as to whether it would be appropriate for the Panel to suspend the proceeding for a short period, to enable the parties to settle the Complaint. The Complainant was given until Friday, October 26, 2012, to make any request for a suspension, and the time for the Panel to give its decision in the case was further extended to October 31, 2012. No request for suspension was made.
By Procedural Order No. 3, dated October 29, 2012, the Panel allowed the Respondent an opportunity to file a Response to the Complainant’s statement submitted in response to Procedural Order No. 1. Any such Response was to be submitted by November 2, 2012 and the time for the Panel to give its decision in the case was further extended to November 7, 2012.
The Respondent elected not to file any Response.
4. Factual Background
The Complainant is a major provider of banking and other financial services. It is based in the United Kingdom, and operates in a total of 50 countries.
It is the proprietor of a number of United Kingdom and European Community registrations of the mark BARCLAYS, in a range of classes relating to financial services.
The Complainant says that it has used the name BARCLAYS for the last 114 years, and that it has a significant reputation and goodwill in that mark in the commercial areas in which the Complainant specializes. It says that the BARCLAYS mark has acquired worldwide fame.
The Complainant produced a schedule of UK-registered trademarks owned by it. One of the marks listed in the schedule was BARCLAYS CENTER, registered in a number of classes on January 23, 2009, under No. 6106538.
The Barclay Center is a state-of-the-art sports and entertainment venue in Brooklyn, New York, which was due to have opened in September 2012. It was intended to be the home of a professional basketball team. According to the Complaint, the Complainant guaranteed a significant investment for the Barclay Center in 2007, in order to secure naming rights for this venue.
In the Complaint, the Complainant stated that the domain name <barclaycenter.com> was owned by Forest City Ratner Companies LLC, the developer of the Barclay Center (“the developer”).
The Respondent and the Domain Names
The Domain Names were all registered on January, 26, 2012.
The Complainant says, and the Respondent has not denied, that the Respondent has been using the Domain Names as holding pages displaying a number of finance-related sponsored links to third party websites offering products which compete with the Complainant’s products. The Complainant says the content of the websites at the Domain Names is tailored to match the Complainant’s core goods and services.
According to the Complaint, the Respondent is not known by any of the Domain Names, and the Complainant has never given the Respondent permission to register or use any domain name incorporating the Complainant’s BARCLAYS trademark.
Panel’s Visits to Websites
In accordance with normal practice, the Panel has visited the websites at the Domain Names. That was done on October 14, 2012.
The websites at “www.barclayscenterevents.net” and “www.barclayscenterlive.com” were very similar in style and contents. They consisted primarily of what appeared to be sponsored links to third party websites offering a variety of different products and services. One link was to a website which apparently provided a comparison between various banks’ products. Another link was to a website apparently operated by a bank or financial institution in the country in which the Panel visited the website. The web pages were each headed with a note to the effect that the web page was being parked for free, courtesy of the Registrar.
The website at “www.barclayscentertickets.org” also contained the introductory notice that the web page was being parked for free, courtesy of the Registrar. This website displayed a number of different sponsored links, including links to a number to websites offering tickets to theater and other events. However, one of the sponsored links was a link to a third party website offering tax-free term deposits in India.
The Complainant’s solicitors wrote to the Respondent on March, 27, 2012 advising the Respondent of the Complainant’s registered BARCLAYS trademarks, and requesting a transfer of the Domain Names to it. No response was received to that letter, or to follow-up letters sent on April 13 and May 8, 2012.
The Complainant’s Supplementary Statement
In its supplementary statement, the Complainant referred to the naming rights agreement for the Barclay Center, which was entered into by a sister company within the Complainant group. One of the counter-parties to this agreement was Brooklyn Arena LLC, an affiliate of the developer.
A confidentiality provision was said to preclude the Complainant from producing a copy of this agreement.
The Complainant stated that the developer was authorized by it to register the domain names <barclayscenter.com> and <barclaycenter.com> on the Complainant’s behalf. However, the authorization did not extend to a grant of rights to use any of the Complainant’s trademarks, and the naming rights agreement contained a provision which required Brooklyn Arena LLC and its affiliates (which would include the developer) to assign and transfer to the contracting Barclays Bank company, all right, title and interest in the domain name <barclayscenter.com>, and similar variants of that domain name.
Finally, the Complainant referred in its supplementary statement to the decision in Barclays Bank Plc v. Current Events, WIPO Case No. D2010-1989, relating to the domain names <barclaycenters.com> and <barclaycenters.info>. The panel in that case noted that the Complainant was the proprietor of the United States-registered trademark BARCLAYS CENTER. It ordered that the disputed domain names be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Names all contain a word (“Barclays”) which is identical and therefore confusingly similar to the Complainant’s BARCLAYS mark. The Domain Names also contain, in its entirety, the Complainant’s BARCLAYS CENTER mark. The inclusion of the words “center”, “live”, “tickets”, and “events” in the Domain Names does not diminish the significance of the use of the trademarks BARCLAYS and BARCLAYS CENTER in the Domain Names. Each of the additional words is only intended to reflect the fact that the Barclays Center is a sports and entertainment venue. “BARCLAYS” and/or “BARCLAYS CENTER” are the key identifying term in the Domain Names, and they are therefore the dominant or principal components of the Domain Names. The Domain Names are all confusingly similar to those marks.
2. The developer has no rights in a BARCLAY CENTER trademark. Rights in that mark lie solely with the Complainant.
3. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant relies on the following matters:
(i) The Respondent is not known by any of the Domain Names.
(ii) The Complainant has not given the Respondent permission to register or use any domain name incorporating the Complainant’s BARCLAYS or BARCLAYS CENTER marks.
(iii) The websites at the Domain Names make it clear that the Respondent is aware of the Complainant’s rights in the BARCLAYS name, and of the Barclay Center – the content of the websites is tailored to match the Complainant’s core goods and services.
(iv) The Respondent registered the Domain Names knowing that they were likely to attract interest from Internet users searching for the Complainant.
The Respondent has not been making a legitimate noncommercial or fair use of any of the Domain Names. The websites at the Domain Names contain pay-per-click sponsored links which relate to financial services. Such activity cannot qualify as noncommercial or fair use.
(v) The Domain Names are being used to redirect Internet traffic intended for the Complainant, away from the Complainant and to competitor products and services, with the intention of generating income for the Respondent.
(vi) It is likely that the Respondent may attempt to use the Domain Names to procure events or sell tickets to events taking place at the Barclay Center, without any authority to do so.
(vii) The Domain Names have been acquired with the intention to sell them to the developer or to the Complainant, for an excessive sum.
4. The Domain Names were registered and are being used in bad faith. The Complainant relies on the following matters:
(i) The Respondent failed to reply to cease and desist letters sent to him on March 27, April 13, and May 8, 2012.
(ii) Given the widespread use, reputation and notoriety of the Complainant’s famous BARCLAYS mark, and the publicity surrounding the development of the Barclay Center (which the Respondent would have been aware of given that he resides in Brooklyn, New York), the Respondent must have been aware that in registering the Domain Names he was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademark.
(iii) The Respondent’s registration of the Domain Names has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trademark rights, contrary to paragraph 4(b)(ii) of the Policy.
(iv) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites at the Domain Names by creating a likelihood of confusion with the Complainant’s trademarks, in breach of paragraph 4(b)(iv) of the Policy.
(v) The Respondent will never be able to use the Domain Names for a legitimate purpose, as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYS trademark.
(vi) It is reasonably anticipated that the Domain Names will divert potential custom from the Complainant’s business due to the reference to BARCLAYS and the links to competitor websites which are displayed on the websites at the Domain Names.
(vii) The Respondent acquired the Domain Names in an opportunistic manner. It is likely that the Respondent may attempt to use the Domain Names in order to promote events or sell tickets to events taking place at the Barclay Center, without any authority to do so.
(viii) The Domain Names have been acquired with the intention of selling them to the developer or to the Complainant, for an excessive sum.
With the exception of his email to the Center dated October 19, 2012, referred to in Section 3 of this decision, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently proved this part of the Complaint.
The Center’s document “WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition” (“WIPO Overview, 2.0”), describes at paragraph 1.2 the consensus view of WIPO panels on the approach to paragraph 4(a)(i) of the Policy, in the following terms:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
In this case, the Complainant is the registered proprietor of the United Kingdom-registered marks BARCLAYS and BARCLAYS CENTER, and it is also the registered proprietor of the latter mark in the United States. Both marks are included in their entirety (and are recognizable as the Complainant’s marks) within each of the Domain Names. The additions of the generic expressions “center”, “events”, “live”, and “tickets” in the Domain Names do nothing to dispel the likelihood of confusion arising out of the use of the Complainant’s BARCLAYS and BARCLAYS CENTER marks within the Domain Names.
The Panel accordingly concludes that the Domain Names are confusingly similar to the BARCLAYS and BARCLAYS CENTER marks in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Names are confusingly similar to the Complainant’s BARCLAYS and BARCLAYS CENTER marks, and the Complainant has not authorized the Respondent to use those marks, whether in a domain name or otherwise. There is nothing in the evidence which suggests that the Respondent, or any business or organization operated by him, is commonly known by any of the Domain Names, and there is therefore no basis for thinking that the Respondent might have a right or legitimate interest in any of the Domain Names under paragraph 4(c)(ii) of the Policy. Similarly, the commercial nature of the uses to which the Domain Names have been put effectively rules out any possibility of a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that he has some right or legitimate interest in respect of the Domain Names. The Respondent having failed to submit any formal Response, that burden has not been discharged, and the Complainant’s prima facie proof prevails. The Panel therefore finds that the Respondent has no right or legitimate interest in respect of any of the Domain Names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or …
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel can deal with this part of the Complaint quite briefly.
First, there can be no doubt that the Respondent was aware of the Barclay Center when he registered the Domain Name: he lives in Brooklyn, where the Barclay Center is located, and the references to “events” and “tickets” in two of the Domain Names leave no room for doubt that he had in mind an events center called the “Barclay Center” or the “Barclays Center”.
Secondly, the Respondent could hardly have failed to appreciate that many Internet users would mistakenly assume that any websites at the Domain Names would be official websites operated or endorsed by the owner or operator of the Barclay Center, where information about events at the Barclay Center could be obtained, and bookings for those events could be made.
If the Respondent appreciated that the registration of the Domain Names would create that false impression, he must be taken to have intended to create it.
In the absence of any Response, the only sensible inference is that the Respondent registered the Domain Names for commercial gain of some sort. The expected gain might have been in the form of pay-per-click revenue from the websites at the Domain Names (in which case the circumstances would fall within paragraph 4(b)(iv) of the Policy), or by way of profit on a sale of the Domain Names to whoever held the rights in the expressions “Barclays” and/or “Barclays Center” (in which case the circumstances would fall within paragraph 4(b)(i) of the Policy). Perhaps the Respondent intended to profit in both of those ways.
In the end, it does not matter which of those possible reasons for the Respondent’s registration and use of the Domain Names is the correct one. Each possibility leads inevitably to a conclusion that the Domain Names have been registered and are being used in bad faith.
The Panel’s overall impression of bad faith on the part of the Respondent is reinforced by his failure to respond to the Complainant’s cease and desist letters, and by his failure to defend this proceeding.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <barclayscenterevents.net>, <barclayscenterlive.com> and <barclayscentertickets.org> be transferred to the Complainant.
Dated: November 7, 2012