The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLC, United Kingdom.
The Respondent is Rico Martinez of La Paz, the Plurinational State of Bolivia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010.
The Center appointed Dana Haviland as the sole panelist in this matter on January 7, 2011. 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
According to the undisputed allegations of the Complaint, the Complainant Barclays Bank PLC is a global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, and wealth management services, currently operating in over 50 countries. The Complainant has provided evidence that it is the registered owner of various United Kingdom and European Community registered trademarks for BARCLAYS, including trademarks related to financial services (collectively the “BARCLAYS Mark” or the “Complainant’s Mark”). The Complainant asserts, without rebuttal by the Respondent, that it has used the name Barclays in its business for 114 years.
The Domain Name was registered on June 8, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Complainant has provided evidence of its prior use and numerous registrations of the BARCLAYS Mark under which it has operated its banking business for many years before the registration of the Domain Name. The Domain Name incorporates the BARCLAYS Mark in its entirety, adding only the prefix “e”, the generic word “groups”, and the “.com” suffix.
The specific top level of a domain name such as “.com,” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom,WIPO Case No. D2005-1115.
Many UDRP panelists have held that the inclusion of an additional descriptive or generic word in a domain name incorporating a well-known trademark in its entirety generally does not negate the confusing similarity of the domain name to that trademark. See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company,WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey,WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea,WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627. Here, neither the prefix “e” nor the generic word “groups” included in the Domain Name negates the confusing similarity of the Domain Name to the BARCLAYS Mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that it has never given the Respondent permission to register or use any domain name incorporating the Complainant’s Mark, that the Respondent is not known by the Domain Name, and that the Respondent is not making any bona fide offering of goods and services or legitimate noncommercial or fair use of the Domain Name. On the contrary, the Complainant alleges, the Domain Name is being used for a pay-per-click website that displays finance-related sponsored links to products and services of the Complainant’s competitors, in order to redirect Internet traffic intended for the Complainant away from the Complainant and to competitors’ products and services, with an intention to generate income for the Respondent.
In support of its allegations with respect to the use of the Domain Name, the Complainant has submitted a copy of an August 27, 2010 cease and desist letter from its counsel to the Registrar’s “Moniker Privacy Service” utilized by the Respondent, enclosing a schedule of the Complainant’s registered trademarks and requesting that the Respondent cease its use of the BARCLAYS Mark in the URL at “www.”:
“The [Domain Name] being used by you in the course of trade is identical to the [Complainant’s] Marks and is being applied to goods and/or services that are identical with the offering for which the Marks are registered. This is a blatant attempt to trade off our client’s reputation and inevitably the resulting confusion will cause loss and damage to our client’s reputation and goodwill.” Complaint, Annex 7.
The annexes to the Complaint do not include any document directly evidencing the actual pay-per-click use of the Domain Name website at the time of the August 27, 2010 cease and desist letter or at the time of filing of the Complaint on November 19, 2010. At the time of the Center’s compliance review of the Complaint after it was filed, the Domain Name did not resolve to an active website and does not do so now. Although the evidence of the pay-per-click use complained of is thus minimal, the Panel finds that the August 27, 2010 cease and desist letter submitted by the Complainant does support an inference of such use of the Domain Name by the Respondent prior to that date. Further, the Respondent has not submitted any response or objection to the Complainant’s allegations and evidentiary submissions.
This commercial use of the Domain Name by the Respondent to offer goods and services competing with those of the Complainant does not demonstrate any right or legitimate interest in the Domain Name. The Respondent's prior use of the Complainant's Mark for a website displaying click-through links to the Complainant's competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,WIPO Case No. D2009-1638; Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741; Unilever N.V. v. Kentech, Inc.,WIPO Case No. D2005-1021.
The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
The Respondent’s use of the Domain Name for a pay-per-click website diverting Internet users to sponsored links for products and services offered by the Complainant’s competitors, in order to generate income for the Respondent, constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See also Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,supra (pay-per-click case finding both bad faith registration and use under similar facts); Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (use of prior trademark in domain name for pay per click landing page that included links to competitors of complainant constituted both bad faith registration and use under paragraph 4(b)(iv) of the Policy).
The Panel finds that the Complainant has established the Respondent’s registration and use of the Domain Name in bad faith, and that the Complainant has therefore satisfied the third element of its claim, under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dana Haviland
Sole Panelist
Dated: January 18, 2011
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