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 Kevin Hernandez of Dover, Delaware, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 16, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 16, 2011, eNom 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”).
On June 22, 2011, the Center sent an email communication to the Registrar regarding the expiration date of the disputed domain name, which is September 16, 2011. On the same date, the Registrar confirmed that the disputed domain name will remain locked until the UDRP proceedings are concluded or terminated. On June 23, 2011, the Center sent an email communication to the Parties advising of the expiration date.
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 June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2011.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 22, 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 in this administrative proceeding is Barclays Bank PLC. 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 proved to be the registered owner of a variety of United Kingdom registered and Community registered trade marks in the name BARCLAYS in a range of classes including financial services. In addition, the Complainant has traded as Barclays PLC since 1985. The Complainant is also the registrant of a portfolio of domain names including which was registered prior to August 1996 and which was registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Respondent registered the disputed domain name on September 16, 2009. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) BARCLAYS has become a distinctive identifier associated with the Complainant and the services it provides;
2) The disputed domain name contains a word which is identical and therefore confusingly similar to BARCLAYS in which the Complainant has common law rights and for which the Complainant has registered trade marks;
3) Given the widespread use, reputation and notoriety of the BARCLAYS mark, the Respondent must have been aware that by registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks. No trader would choose the disputed domain name unless it was with the intention to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent;
4) The Respondent is not authorized by the Complainant to use the Complainant’s mark BARCLAYS in his domain name, nor is the Respondent commonly known by the disputed domain name or any term incorporated therein;
5) The Respondent registered the disputed domain name knowing that it was likely to attract interest from Internet users who were searching for the Complainant;
6) The content on the website at the disputed domain name is tailored to match the Complainant's core goods and services yet appears to divert Internet traffic to cruise vacation websites and in so doing the Respondent will generate click through revenue;
7) The disputed domain name displays an article which recommends consumers to partner with Barclays to see a return on investment;
8) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content found at the disputed domain name is pay per click sponsored links from which the Respondent will benefit. Such activity does not qualify as noncommercial or fair use.
9) The Respondent has 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.
9) The Respondent failed to respond to a letter from the Complainant's agent in relation to the disputed domain name advising the Respondent of the Complainant's registered trade marks in the name BARCLAYS and asking for clarification as to the purpose of the disputed domain name registration.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark BARCLAYS registered, among other products, for “financial services’’.
This Panel considers that the addition of the descriptive terms “return” and “plans” to a trademark registered and used in connection with financial services, is not sufficient to avoid confusing similarity. On the contrary, this combination can increase confusion to the Internet consumers looking for services (and/or clarification on services) offered by the Complainant.
Supporting this, is for example, Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988, where the panel held that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark (e.g., Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai,WIPO Case No. D2010-0144).”
The suffix incorporated in the disputed domain name is a descriptive word which is not distinctive. Used in conjunction with the BARCLAYS trademark further aggravates the likelihood of confusion” (Volvo Trademark Holding AB v. Uvelov,WIPO Case No. D2002-0521).
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. A. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, he or she used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the disputed domain name, even if he or she has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as ”Barclays-Return-Plans” or by a similar name, and he has not alleged any facts to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, and has not proven nor alleged in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b):
i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the Complainant’s well-known trademark, its long use in the market, also on the Internet through the domain names and and the fact that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims, it appears:
1) that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that the alleged use of the disputed domain name, i.e., to redirect users to third parties’ websites, where pay-per-click advertisements are displayed is inference of bad faith use. In this sense see Grosbill S.A. v. Richard J.,WIPO Case No. D2006-1254 finding that: “Even if it was not the intention of the Respondent to promote goods which directly compete with those of the Complainant, it is nevertheless clear that the disputed domain name was chosen to attract web traffic for the purposes of commercial gain by creating a likelihood of confusion with the Complainant’s mark”.
3) that there is no other apparent explanation for the registration of the disputed domain name other than Respondent’s intent to profit off the goodwill of Complainant’s well-known trademarks.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Fabrizio Bedarida
Sole Panelist
Dated: July 25, 2011
Full & Egal Universal Law Academy