The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Fred Johnson of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited (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 Mesh Digital Limited a request for registrar verification in connection with the disputed domain name. On November 22, 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 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 22, 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
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 has traded as Barclays PLC since 1985 and traces its history back to 1896 when it began trading as Barclay & Company Limited. 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 marks BARCLAY and 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 created on June 17, 2010. The website associated with the disputed domain name displays sponsored advertising listings relating to financial services including ‘Online Savings Accounts’ and ‘Online Banking’.
On August 27, 2010, the Complainant’s representatives wrote to the Respondent advising the Respondent of the Complainant’s various trademarks and requesting that the Respondent cease his use of the disputed domain name. The Respondent failed to respond to that letter or to the Complainant’s representatives’ follow-up letters of September 10, 2010 and October 8, 2010. The Respondent also did not change the content on the website associated with the disputed domain name as requested by the Complainant’s representatives. 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 Respondent has no right 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 confusingly similar to the name BARCLAYS in which the Complainant has common law rights and for which the Complainant has registered trademarks.
The disputed domain name displays finance related sponsored links which relate to competitor products and services to those offered by 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 Respondent. The Respondent has 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.
The Respondent is not known by the disputed domain name and has never asked for, and has 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 Respondent.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks in breach of paragraph 4(b)(iv) of the Policy. The Respondent will never 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 Respondent and the Complainant, and/or between the Respondent and the BARCLAYS trademarks. B. Respondent
The Respondent 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 Complainant asserts in its submissions that the disputed domain name contains a word which is confusingly similar to the name BARCLAYS for which the Complainant has registered trademarks. The disputed domain name contains two elements, “Barclay” and “Online”. Although it did not refer directly to it in its submissions, the Complainant provided evidence that it is the owner of several registered trademarks for the word mark BARCLAY which is identical to the first and most distinctive element of the disputed domain name. The second element of the disputed domain name “Online” is 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).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCLAY trademark 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 the Respondent is not known by the disputed domain name and that the Respondent has never 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 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 Respondent.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed any response in this case which might have provided an explanation of its conduct or set out any evidence of rights or legitimate interests. Furthermore, the Respondent failed to respond to the Complainant’s representatives despite their sending three letters to the address specified by the Respondent on the WhoIs for the disputed domain name over a three month period. The Panel considers that it is reasonable to infer that the Respondent’s failure to make contact in such circumstances is also indicative of a lack of rights or legitimate interests in the disputed domain name.
In these circumstances, the Panel finds that the Complainant has proved that the Respondent has 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”.
On this topic, the Complainant asserts that at the time of the registration the Respondent must have known of the Complainant’s trademark given the worldwide fame, reputation and notoriety of the name BARCLAYS and thus that the Respondent had an intention to target the Complainant’s rights. The Complainant notes that 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. The Panel accepts the Complainant’s contentions in this regard and finds that the Respondent registered the disputed domain name with an awareness of the Complainant’s rights and that the disputed domain name was registered in bad faith.
With regard to use in bad faith, the Complainant’s submissions focus on the content of the website to which the Respondent or others on his behalf have pointed the disputed domain name. The Panel observes that the sponsored link page appears to be of a standard nature which may have been provided by the Respondent’s registrar. The prominent banner advertisements at the top and bottom of the page relate to the Respondent’s registrar’s business and thus it is likely that the Respondent’s registrar is in some way involved in the delivery of the content. Nevertheless, whether or not the Respondent himself was actively or passively involved in the selection of the content targeting the Complainant’s business, that content is entirely the Respondent’s responsibility as the registrant of the disputed domain name. The Respondent may not necessarily be the party in receipt of advertising revenues from the page concerned but there is no doubt in the Panel’s mind that such revenues will be unfairly generated by the Respondent’s free riding on the goodwill established by the Complainant.
In choosing not to file a Response in these proceedings and in failing to reply to correspondence from the Complainant’s representatives the Respondent has denied himself the opportunity to put forward any evidence of alleged good faith intent or any suitable explanation for the pointing of the disputed domain name to sponsored advertising links targeting the Complainant’s business. In these circumstances the Panel is also satisfied that the disputed domain name has been used 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 5, 2011
Full & Egal Universal Law Academy