The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, United Kingdom.
The First Respondent is Privacy Protect of Shanghai, the People’s Republic of China. The Second Respondent is Callum Macgregor of Isle of Skye, Scotland, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD (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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to this invitation as well as a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 26, 2010.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 20, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 5, 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
The Complainant is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an extensive international presence in Europe, the Americas, Africa and Asia. The Complainant currently operates in over 50 countries, employs approximately 144,000 people and has more than 48 million customers and clients worldwide.
The Complainant is the owner of a variety of trademark registrations for the word mark BARCLAYS including United Kingdom (“UK”) trademarks number 1286579 registered on October 1, 1986 in class 36 and number 1380658 registered on April 19, 1989 in class 35.
The disputed domain name was registered on July 6, 2010. The website associated with the disputed domain name displays sponsored advertising listings relating to financial services including “International Online Banking” and “International Investment Banking”.
On August 27, 2010, the Complainant’s representatives wrote to the First Respondent advising the Respondent of the Complainant’s various trademarks and requesting that the First Respondent cease its use of the disputed domain name. The First Respondent failed to respond to that letter or to the Complainant’s representatives’ follow-up letters of September 10, 2010 and September 29, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondents have no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The disputed domain name contains a word which is identical and therefore confusingly similar to the name BARCLAYS in which the Complainant has common law rights and for which the Complainant has registered trademarks. The addition of the generic words “international” and “bank” do not distinguish the disputed domain name from the name BARCLAYS in which the Complainant has rights. In fact, given the Complainant’s worldwide reputation and core services, the use of these words is likely to cause further confusion.
Neither the First nor Second Respondent is known by the disputed domain name and they have never asked for, and have never been given, any permission by the Complainant to register or use any domain name incorporating the Complainant’s trademarks. Given the worldwide fame, reputation and notoriety of the name BARCLAYS, no trader would choose the disputed domain name unless with the intention to create a false impression of association with the Complainant to attract business from the Complainant or misleadingly to divert the public from the Complainant to the First or Second Respondent.
The content found at the disputed domain name is pay per click sponsored links which relate to financial services. Such activity does not qualify as non-commercial or fair use.
The sponsored links displayed at the disputed domain name relate to competitor products and services to those of the Complainant. The disputed domain name is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the First Respondent and Second Respondent. The Respondents registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. The content on the website at the disputed domain name is tailored to match the Complainant’s core goods and services. When Internet users view the content displayed at the disputed domain name and click one of the sponsored links on the website the First Respondent and now the Second Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAY in the disputed domain name.
The First and Second Respondent have intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trade marks in breach of paragraph 4(b)(iv) of the Policy. Neither the First nor the Second Respondent will ever be capable of using the disputed domain name 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 First and Second Respondent and the Complainant, and/or between the First and Second Respondent and the BARCLAYS trademarks. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 disputed domain name consists of three elements, “barclays”, “international” and “bank”. The top level domain “.com” may be disregarded as is customary in cases under the Policy on the basis that this is required for technical reasons only and is wholly generic. The Complainant has provided evidence that it is the owner of several registered trademarks for the word mark BARCLAYS which is identical to the first and, in the Panel’s opinion, the most distinctive element of the disputed domain name. The remaining elements “international” and “bank” are merely descriptive.
Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). Furthermore, in the present case, the Complainant’s trademark BARCLAYS is well-known in the context of international banking. This, in the Panel’s opinion, intensifies the confusing similarity of the disputed domain name to the Complainant’s trademarks.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCLAYS trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent.
The Complainant submits that neither of the Respondents is known by the disputed domain name, nor has either Respondent asked for or been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trademarks. The Complainant has also asserted that the content found at the disputed domain name is pay per click sponsored links relating to the sphere of activities of the Complainant and that this does not qualify as non-commercial or fair use.
The Panel considers that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name. The Respondents have failed to file a response in this case which might have provided an explanation of their conduct, albeit that the Panel cannot imagine any legitimate interest which either Respondent might have demonstrated.
The First Respondent, apparently acting as agent or proxy for the Second Respondent in the provision of a WhoIs privacy service, failed to reply to the Complainant’s representatives despite their sending three emails to the address specified by the First Respondent on the WhoIs for the disputed domain name over a two month period. The Panel considers that it is also reasonable to infer that the First Respondent’s failure to make contact either on its own or on the Second Respondent’s behalf in such circumstances is indicative of a lack of rights or legitimate interests in the disputed domain name on the part of both the First Respondent and Second Respondent.
In these circumstances, the Panel finds that the Complainant has proved that the Respondents have no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the present case, the Complainant identifies the Second Respondent’s use of a privacy registration service and the failure of either of the Respondents to reply to the Complainant’s correspondence as indicative of bad faith. While neither of these submissions relate to the specific circumstances outlined in paragraph 4(b) of the Policy these are expressed to be non-exclusive and accordingly the Panel may consider these submissions under the general terms of paragraph 4(a)(iii) of the Policy. The Complainant also refers to the Respondents’ use of “pay per click” or sponsored advertising listings on the website associated with the disputed domain name and asserts that this activity falls within the provisions of paragraph 4(b)(iv) of the Policy.
Privacy registration services can be employed for entirely legitimate motives, such as for example, a desire on the part of the registrant to reduce the volume of unsolicited commercial or “spam” email received at the email address associated with a domain name. However, the Panel considers that in certain circumstances it is reasonable to infer a bad faith motivation arising from the selection of such a service. In the present case, given the nature of the disputed domain name and the use to which it has been put, it appears to the Panel that the Second Respondent was well aware that it was targeting the Complainant’s rights at the point of registration of the disputed domain name and that it deliberately selected a privacy registration service in order to conceal its true identity from the Complainant for as long as possible. Whether or not this was the Second Respondent’s motive, the Panel concurs with the view expressed by the panel in Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015 that the use of such a privacy registration service calls for an explanation. In the absence of this, the Panel finds that this is a factor which points in the direction of bad faith.
The Complainant also submits that neither of the Respondents replied to its letter in which it raised concerns regarding the use of the disputed domain name, nor to its follow-up correspondence which it sent over a two month period. The Panel notes that such a failure has been held in previous cases to be a compounding factor in bad faith. See, for example, Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and , WIPO Case No. D2009-0266. Accordingly, the Panel finds that this, too, is a factor pointing in the direction of bad faith.
Finally, the Complainant provides clear evidence that the website associated with the disputed domain name has been used for “pay per click” or sponsored advertising services. The listings on the website directly target the business activities of the Complainant and were clearly selected with a view to commercial gain. The potential for confusion and diversion of Internet traffic is clear, given that the Complainant’s trademark has been included in its entirety in the disputed domain name along with descriptive elements which relate to the type of business in which the Complainant engages. In the Panel’s view the Complainant’s evidence points to an intentional attempt by one or both of the Respondents, most likely the Second Respondent, to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s mark, in accordance with paragraph 4(b)(iv) of the Policy.
In all of the above circumstances, the Panel finds that the Respondents have registered and used the disputed domain name in bad faith. 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.
Andrew D. S. Lothian
Sole Panelist
Dated: January 17, 2011
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