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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barcade, Inc. v. Miguel Sandoval

Case No. DVG2016-0001

1. The Parties

The Complainant is Barcade, Inc. of Brooklyn, New York, United States of America, represented by Cozen O’Connor, United States of America.

The Respondent is Miguel Sandoval of Mexico City, Mexico.

2. The Domain Name and Registrar

The disputed domain name <barcade.vg> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2016, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2016.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 10, 2017. 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.

4. Factual Background

The Complainant offers bar and restaurant services combined with classic arcade video games under the BARCADE trademark. The Complainant opened its first bar in Brooklyn in the year 2004. Since then, the Complainant has opened many bar and restaurant locations in the United States, including those in New Jersey, Connecticut, Pennsylvania, and numerous locations in New York.

The Complainant is the owner of several trademark registrations for BARCADE, including United States registration No. 3,401,355 registered on March 25, 2008 and International Registration No. 1,166,147 in Class 43, which designates Mexico as well as numerous other countries and which was registered on June 14, 2013. The Complainant also holds the Mexican trademark application No. 1,757,542 filed on June 6, 2016.

The disputed domain name was registered on March 21, 2016. The disputed domain name is used to host a website offering links to videos and news about videogames.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

With respect to the rights and legitimate interest of the Respondent, the Complainant states that:

- the Respondent is not affiliated with the Complainant.

- the Complainant has not authorized the Respondent to use its trademark.

- the Respondent does not use the disputed domain name in connection with a bona fide offer of goods or services.

- the Respondent is using a domain name that is confusingly similar to the Complainant’s trademark in order to promote goods and services that are confusingly similar to the goods and services offered by the Complainant.

With respect to bad faith registration and use the Complainant states that:

- In May 2016, the Respondent was affirmatively put on notice of the Complainant’s rights, he has linked the disputed domain name to infringing content in bad faith and has continued to operate and is using the disputed domain name in bad faith, despite knowledge of the Complainant’s rights.

- The Respondent always uses BARCADE in large font with VG in small font to emphasize the BARCADE portion over the VG portion.

- The Complainant filed a trademark infringement report with Instagram and Instagram suspended the Respondent’s account based on the Respondent’s infringing use of BARCADE putting the Respondent on further notice of the Complainant’s trademark rights.

- By registering and using the disputed domain name, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark in order to attract Internet users to the Respondent’s website for the Respondent’s commercial gain, which shows bad faith.

- Users attempting to visit the Complainant’s website will be diverted to the disputed domain name divesting profits away from the Complainant. Consumers are likely to believe that the Complainant sponsors or endorses the disputed domain name to the benefit of the Respondent and to the detriment of the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has rights, through registration and use, in its trademark BARCADE. The disputed domain name entirely incorporates the Complainant’s trademark. It is a well-accepted principle that the country code Top-Level Domain (“ccTLD”), in this case “.vg”, is to be typically disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trademark.

The Panel concludes that the disputed domain name is identical to the Complainant’s trademark.

Paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Respondent is commonly known by the disputed domain name nor is there evidence of a legitimate noncommercial or fair use of the disputed domain name (paragraphs 4(c)(i) and (iii) of the Policy) or use of the disputed domain name in connection with a bona fide offering of goods or services.

A prima facie case has been established by the Complainant. Accordingly, the onus of production shifts to the Respondent to rebut the Complainant’s contentions with evidence of his rights or legitimate interests. The Respondent has not come forward to explain its bona fides, and has instead allowed the allegations in the Complaint to go unrebutted.

By the time the disputed domain name was registered in 2016, the Complainant had already used the BARCADE trademark for 12 years. The Respondent did not deny knowledge of the Complainant and of its BARCADE trademark when he registered the disputed domain name. Thus the Respondent was clearly aware of the Complainant and its trademark and the evidence suggests that he has been using the disputed domain name to misleadingly divert consumers for commercial gain (paragraph 4(c)(iii) of the Policy).

The Panel finds credible the Complainant's allegations that Respondent has made no legitimate noncommercial or fair use of the Domain Name, is not commonly known by the disputed domain name, and has made no use of the disputed domain name (or demonstrable preparations to use the disputed domain name) in connection with a bona fide offering of goods or services.

The Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel determines that there has been bad faith registration and use of the disputed domain name. Based on the evidence offered, the Respondent was clearly aware of the Complainant and of its BARCADE trademarks when he registered the disputed domain name.

According to the statements made in the Complaint, not disputed by the Respondent, the Complainant has been offering services with the BARCADE trademark since the year 2004, while the disputed domain name was registered only recently in March 21, 2016. In addition, the Complainant registered its trademark in the United States and in Mexico, that is, the Respondent’s location.

The Panel visited the website under the disputed domain name and was able to verify that it contains links to videos and news about videogames, the main theme of the Complainant’s bars and restaurants. The “contact” page available at the website states “for business, events, invitations, doubts and suggestions you can contact us in the following addresses”, which is evidence of the commercial use of the disputed domain name. In addition, the BARCADE term displayed at in the disputed domain name appears prominently in a font resembling the one used in the videogame Pac Man, including the design of the Pac Man icon instead of the letter “c”. The Panel notes that Pac Man is a videogame offered in several locations of the Complainant (See “http://barcade.com/games/”).

The Respondent’s conduct and the evidence shows he has been using the disputed domain name to misleadingly divert consumers for commercial gain (paragraph 4(c)(iii) of the Policy). By registering and using the disputed domain name, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s trademark in order to attract Internet users to the Respondent’s website for the Respondent’s commercial gain, which is evidence of bad faith.

The Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <barcade.vg>, be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: January 24, 2017

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