Complainant is Barclays Bank PLC of London, the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, the United Kingdom of Great Britain and Northern Ireland.
The First Respondent is B, Privacy-P of Shanghai, the People’s Republic of China; the Second Respondent is Rampe Purda of Hailuoto, Finland. 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 December 13, 2010. On December 14, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 17, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 20, 2010. On December 17, 2010, the Center also transmitted an email to the parties in both the Finnish and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents of the Complaint, and the proceedings commenced on December 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2011. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on January 13, 2011.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 19, 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
Complainant Barclays Bank PLC is a major global financial services provider engaged in retail banking, credit cards, corporate and investment banking, wealth management and investment management services. Complainant currently operates in over 50 countries and moves, lends, invests, and protects money for more than 48 million customers and clients worldwide.
Complainant owns a number of United Kingdom and European Union registrations that incorporate, in whole or in part, the mark BARCLAYS for use in a range of classes, including financial services. Complaint, Annex 3. The BARCLAYS mark has been used by Complainant for the last 114 years. Complainant also owns a number of domain name registrations, including and . Complaint, Annex 4.
The disputed domain name, , was registered on May 5, 2010. Complaint, Annex 5. The disputed domain name is being used as a holding page containing a number of finance-related pay per click sponsored links which relate to products and services offered by competitors of Complainant.
Complainant’s counsel sent a cease and desist letter to the First Respondent on June 25, 2010, and follow-up letters on August 9, 2010 and September 21, 2010, seeking transfer of the disputed domain name. Complaint, Annexes 6 and 7. No response to any of these letters was received. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name contains a word that is identical and, therefore, confusingly similar to the BARCLAYS mark, in which Complainant has common law rights and for which Complainant has registered trademarks. According to Complainant, “[t]he inclusion of the generic words ‘Bank’ and ‘Mortgage’ does not avoid confusion. In fact, since the term describes Complainant’s core services, the addition of ‘bank’ and `mortgage’ is more likely to increase confusion.”
Complainant further contends that Respondents have no rights or legitimate interests in respect of the disputed domain name. As explained by Complainant,
“[t]he 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 or Second Respondent. The First Respondent registered the 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 Domain Name is tailored to match the Complainant's core goods and services. This means that when internet users view the content displayed at the Domain Name and clicks one of the sponsored links on the website the First or Second Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAYS in the Domain Name.”
Complainant asserts that such activity “does not qualify as non commercial or fair use.”
Complainant also maintains that Respondents have never asked for, or been given, permission by Complainant to register or use any domain name incorporating Complainant’s BARCLAYS mark. It also contends that Respondents are not known by the domain name.
With respect to the issue of “bad faith” registration and use, Complainant points out that the Second Respondent, Rampe Purda, has been the named respondent in eight reported UDRP proceedings, all of which resulted in a transfer order. “This is highly suggestive that [Purda] is a professional domainer.”
Complainant also asserts that Respondents have intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with Complainant’s BARCLAYS mark, in violation of paragraph 4(b)(iv) of the Policy. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complainant requested that the language of these proceedings should be English, notwithstanding the fact that the language of the registration agreement is Finnish. The Panel refers to previous UDRP decisions to which Respondents were a party, notably The RueDuCommerce Company v. Rampe Purda/Privacy--P,WIPO Case No. D2010-1632. This Panel concurs with the opinions articulated in that decision, and accordingly decides that the language of these proceedings should, as requested by the Complainant, be English. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name, , is confusingly similar to the BARLCAYS mark. The addition of the descriptive terms “bank” and “mortgage” and of the generic top-level domain “.com” does not avoid a determination of confusing similarity. The term “Barclays” clearly is the most distinctive component of the domain name, and such term is identical to the BARCLAYS mark.
The evidence also establishes that Complainant has rights in the BARCLAYS mark. The evidence indicates that Complainant owns a number of registrations for the BARCLAYS mark and has used such mark for over 100 years. C. Rights or Legitimate Interests
The Panel concludes that Complainant has met its burden of proof in establishing that Respondents have no rights or legitimate interests in the disputed domain name. Use of the disputed domain name in connection with a pay per click site does not constitute bona fide use of domain name. Nor does it constitute either noncommercial or fair use of the domain name. It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests. See, e.g., Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc.,WIPO Case No. D2010-1185; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881. D. Registered and Used in Bad Faith
The Panel holds that the disputed domain name was registered and is being used in bad faith. The evidence establishes that Respondents are using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant’s BARCLAYS mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products or services on such site, within the meaning of paragraph 4(b)(iv) of the Policy. As noted and found above, Respondents are using the domain name in connection with a pay per click site that provides sponsored links to financial services offered by Complainant’s competitors and the disputed domain name is confusingly similar to the BARLCAYS mark. As such, Internet users are likely to believe that Respondents’ site and the services offered at such site are owned and/or sponsored by Complainant.
Further evidence of the requisite bad faith is found in the fact that Complainant’s counsel’s letters were never answered and the history relating to earlier UDRP decisions relating to the Second Respondent. 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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: January 26, 2011
Full & Egal Universal Law Academy