Complainant is Barclays Bank PLC of London, the United Kingdom of Great Brittan and Northern Ireland, represented by Pinsent Masons Solicitors, the United Kingdom of Great Brittan and Northern Ireland.
Respondent is Current Events of New York, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 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 GoD, Inc a request for registrar verification in connection with the disputed domain names. On November 20, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010
Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on January 10, 2010. 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
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.
Complainant has traded as Barclays PLC since 1985. Prior to this Complainant had traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. Complainant currently operates in over 50 countries and employs approximately 144,000 people. Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide.
Complainant is the registered owner of a variety of United Kingdom of Great Britain and Northern Ireland (“UK”) registered, United States of America (“US”) registered and Community registered trademarks in the name BARCLAYS in a range of classes, including those in relation to financial services. Complainant is the registered owner of US trademark registration number 3195676 for the trademark BARCLAYS, registered January 9, 2007, in relation to a broad range of financial services.
In addition to its registered trademarks, through its use of the name BARCLAYS over the last 114 years Complainant has acquired goodwill and a significant reputation in relation to financial services.
On January 18, 2007, Complainant announced in New York City, New York, that it entered into a sponsorship agreement with the owner of a USD 4.9 billion entertainment, leisure and sports venue to be named Barclays Center to be constructed in Brooklyn, New York, which will play host to world-class concerts, awards shows, National Basketball Association and college basket ball games, boxing, tennis as well as family entertainment including circus and ice shows. Complainant is the owner of United States Trademark Registration Number 3816051 for the trademark BARCLAYS CENTER registered, July 13, 2010, in relation to a broad range of goods and services associated with sports and entertainment complexes. The official website for the Barclays Center is “”, which was registered on November 6, 2006.
Respondent registered the disputed domain names and on July 15, 2010. 5. Parties’ Contentions A. Complainant
A.1. Identical or Confusingly Similar
Complainant states that, as found in section 4 above, it is the registered owner of a variety of UK registered, US registered and Community registered trade marks in the name Barclays in a range of classes including in relation to financial services.
Complainant states that the disputed domain names incorporates the term “barclay”, which is confusingly similar to Complainant’s numerous BARCLAYS trademarks.
Complainant further states that given the worldwide fame, reputation and notoriety of the name Barclays, no trader would choose the disputed domain names or unless it intended to create a false impression of association with Complainant, in order to either attract business from Complainant or misleadingly to divert the public from Complainant to Respondent.
A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent registered the disputed domain names on July 15, 2010 at which time Complainant's involvement with and connection to the Barclays Center entertainment and sports complex was within the public domain.
Complainant states that the disputed domain names are being used by Respondent as pay-per-click websites. The home pages associated with the disputed domain names both display finance related sponsored links, which relate to competing products and services to those of Complainant. The disputed domain names are being used to redirect Internet traffic intended for Complainant away from Complainant and to competitors’ products and services, with an intention to generate income for Respondent. Respondent has registered the disputed domain names knowing that they are likely to attract interest from Internet users who are searching for Complainant. The content on the websites at the disputed domain names is tailored to match Complainant's core goods and services. To Complainant this means that when internet users view the content displayed at the disputed domain names and click one of the sponsored links on the website Respondent receives revenue directly from the initial interest arising from the use of the name BARCLAY in the disputed domain names.
Complainant states that Respondent is not known by the disputed domain names. Complainant argues that it is clear that Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names. The content found at the landing pages associated with the disputed domain names is pay per click sponsored links, which relate to financial services. Such activity does not qualify as noncommercial or fair use.
Complainant further submits that Respondent has never asked for, and has never been given, any permission by Complainant to register or use any domain name incorporating Complainant's trademarks.
Complainant states that it’s agent wrote to Respondent on August 27, 2010 advising Respondent of Complainant's registered trade marks in the name BARCLAYS and to ask for the disputed domain names to be transferred to Complainant. Respondent failed to respond to this letter thus further letters were sent on September 10, 2010 and September 24, 2010 asking for a response to the letter of August 27, 2010. Respondent again failed to respond. Despite the correspondence, the content on the disputed domain names remained unchanged.
A.3. Registration in Bad Faith
Complainant submits that given the widespread use, reputation and notoriety of the famous BARCLAYS mark and the publicity surrounding the development of the Barclays Center, Respondent must have been aware that in registering the disputed domain names he was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademark.
A.4. Use in Bad Faith
Complainant states that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites associated with the disputed domain names by creating a likelihood of confusion with the Complainant's trade marks in breach of paragraph 4(b)(iv) of the Policy.
Complainant further states that the disputed domain names are being used by Respondent as pay-per-click websites. The home pages associated with the disputed domain names both display finance related sponsored links, which relate to competing products and services to those of Complainant. The disputed domain names are being used to redirect Internet traffic intended for Complainant away from Complainant and to competitor products and services, with the intention to generate income for Respondent. Respondent has registered the disputed domain names knowing that they are likely to attract interest from Internet users who are searching for Complainant as the content on the websites at the disputed domain names is tailored to match Complainant's core goods and services. This means that when Internet users view the content displayed at the disputed domain names and click one of the sponsored links on the website, Respondent receives revenue directly from the initial interest arising from the use of the trademark BARCLAY in the disputed domain names.
Complainant states that Respondent will never be capable of using the disputed 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 Respondent and Complainant, and/or between Respondent and the BARCLAYS trademark. B. Respondent
Respondent did not reply to Complainant’s contentions 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response permits the Panel to draw certain inferences from Complainant’s evidence: the Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trade mark and demonstrate that the disputed domain names are identical to or confusingly similar to the trade mark in which Complainant has rights.
Complainant, as detailed in section 4 above, is the registered owner of a variety of UK registered, US registered and Community registered trade marks in the name BARCLAYS in a range of classes including in relation to financial services. Complainant is also the owner of US trademark BARCLAYS CENTER in relation to a broad range of goods and services associated with sports and entertainment complexes.
The disputed domain name differs from Complainant’s registered trademark BARCLAYS CENTER solely in the placement of the “s”; the absence of the letter “s” in BARCLAYS and the addition of the letter to CENTER.
The disputed domain name differs from complainant’s registered trademark BARCLAYS CENTER by the absence of the letter “s” from BARCLAYS. Further, Barclays Center is the name of a major entertainment and sports complex, which was publicly announced in New York City, New York, on January 18, 2007, and currently being constructed in Brooklyn, New York.
The Panel finds that Respondent is involved in “typosquatting”; the practice of using a domain name misspelling Complainant’s trademarks. Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362 (finding that the domain name , with a “zero” in place of the letter “o” was calculated to trade on the complainant’s name by exploiting likely mistakes by users of the URL).
In Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675, it was found that, “the deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i)”. This is supported by Universal City Studies, Inc. v. HarperStephens,WIPO Case No. D2000-0716, where it was found that the deletion of a letter from the complainant’s mark did not change the overall impression of the mark and thus made the domain name confusingly similar to that of the mark.
Furthermore, “typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark.” National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011.
The disputed domain names differ from Complainant’s widely known trademark BARCLAYS by the absence of the letter “s” and the addition of the word “center” or “centers”. Respondent may not avoid likely confusion by simply adding a descriptive or generic term, such as center to Complainant's trademark. Many UDRP decisions have held that the addition of a descriptive or generic term to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g., Educational Testing Service v. ESL Pro Systems, Ltd.,WIPO Case No. D2006-0245 (finding the domain names , , and confusingly similar to complainant's TOEFL and TOEIC marks because generic words do not avoid confusing similarity).
The inclusion of the top level domain descriptor “.com” in the disputed domain names does not affect a finding of confusing similarity. UDRP panels have consistently held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that here Complainant has proven that the disputed domain names are confusingly similar to Complainant’s trademarks BARCLAYS and BARCLAYS CENTER. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks.
The disputed domain names, as of December 1, 2010, directed users to parked websites that offer links to Complainant’s competitors’ financial services and products as well as websites relating to sporting events. Respondent's use of the confusingly similar domain names to divert traffic to its websites is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain names. (See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486, finding no rights or legitimate interests where domain name resolves to a parked website and respondent presumably generates click-through fees from a use).
On the basis of the content of the webpages associated with the disputed domain names and the WhoIs search results for the disputed domain name, the Panel finds that Respondent is not commonly known by the “barclaycenters” or “barclaycenter” names. (See, Braun Corp. v. Loney, NAF Claim No. 699652 concluding that the respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark; see also Tercent Inc. v. Lee Yi, NAF Claim No. 139720 finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name).
It is generally difficult for a complainant to prove the negative, that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name. Once this showing is made, the burden of persuasion shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent neither filed a Response nor availed itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
C.1. Registered in Bad Faith
Complainant, as discussed above, is the registered owner of a variety of UK registered, US registered and Community registered trademarks BARCLAYS relating to a wide range of goods and services in a broad range of classes relating to financial services The Panel having found that Complainant’s trademark BARCLAYS is widely known in relation to financial services. The parking page associated with the disputed domain names include links to companies offering financial services in competition with financial services covered in Complainant’s trademarks..
The Panel finds on a balance of probabilities that Respondent must have been aware of Complainant’s trademark rights in BARCLAYS in relation to financial services when it registered the disputed domain names.
Complainant is also the owner of the trademark BARCLAYS CENTER, registered July 13, 2010, in relation to a broad range of goods and services associated with sports and entertainment complexes. It was publicly announced in New York City, New York, on January 18, 2007, that Complainant was granted the naming rights to use the name and trademark BARCLAYS CENTER in association with a USD 4.9 billion entertainment, leisure and sports venue which is currently under construction in Brooklyn, New York. Barclays Center is a venue that will play host to world-class concerts, awards shows, basketball games by the NBA New York Nets basketball team, college sports, boxing, tennis as well as family entertainment including circus and ice shows. The BARCLAYS CENTER entertainment, leisure and sports venue is being constructed in Brooklyn in close proximity to Respondents address in New York City. Some of the advertisements on the parking page associated with the disputed domain names relate to sports teams and sporting events.
The Panel finds that Respondent must have been aware of the Complainant’s trademark BARCLAYS CENTER at the time the disputed domain names were registered on July 15, 2010.
C.2. Domain Name Used in Bad Faith
The Panel finds that Respondent is using the disputed domain names in bad faith to host websites featuring pay-per-click links to third party websites featuring financial products, financial services, sports teams and sporting events associated with third parties. This common pay-per-click scheme is misleading to consumers who will naturally believe that the domain names point to a site endorsed or otherwise associated with Complainant’s trademarks BARCLAYS and BARCLAYS CENTER and Complainant’s financial products and services or goods and entertainment and sporting events associated with the respective trademarks.
The Panel finds that Respondent is using the confusingly similar disputed domain names and to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s trade mark BARCLAYS and BARCLAYS CENTER as to source, sponsorship, affiliation or endorsement of Respondent’s website, which is evidence of bad faith registration and use under paragraph 4(b)(iv) 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 names and be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: January 16, 2011
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