The Complainant is BARCLAYS BANK PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are BARCLAYSCAPITALCAREERS.COM Privacy--P of Shanghai, China and Milan Kovac of Bratislava, Slovakia. 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 June 15, 2011. On June 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2011, 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 June 21, 2011providing 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 June 24, 2011.
On June 21, 2011, the Center transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On June 23, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent 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 the Respondents of the Complaint, and the proceedings commenced on June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 18, 2011.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 26, 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. The Respondents and the Language of the Proceeding
Since this case at the time of filing of the Complaint involved a privacy of proxy registration service, the Panel had to decide who is the proper respondent in this proceeding? Then, given that the language of the Registration Agreement is in Slovak and the Complainant requested that the proceeding is conducted in English, the Panel had to examine circumstances in relation to the language of the proceeding issue and determine the language of the proceeding.
The Complainant filed the Complaint against BARCLAYCAPITALSCAREERS.COM Privacy-P, Shanghai, China, a Respondent as identified in WhoIs at the time of filing. After the Registrar disclosed registrant and contact information for the disputed domain name – which differed from the originally named Respondent and contact information in the Complaint – the Center invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 24, 2011, requesting that this administrative proceeding is conducted against both the initially identified Registrant BARCLAYCAPITALSCAREERS.COM Privacy-P and the individual confirmed by the Registrar as the Registrant of the disputed domain name, Milan Kovac of Bratislava, Slovakia.
According to paragraph 4.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), in a UDRP case in which a privacy or proxy registration service is named as the respondent in a filed complaint (e.g., because the complainant was not aware of the identity of any underlying registrant) - and the concerned registrar (or the privacy or proxy service provider) in response to a request from the Center discloses an underlying registrant of the domain name that differs from the privacy or proxy registration service which appeared in the WhoIs at the time of filing of the complaint, ultimately the panel has discretion to determine the identity of the proper respondent.
The UDRP panels have recognized that in cases where a disclosure of an "underlying registrant" occurs, it is appropriate for a complainant to choose to add a disclosed underlying registrant as a co-respondent to the complaint and this Panel accepts such decision of the Complainant.
Under the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Here, the language of the Registration Agreement is Slovak, while the Complainant requested that the English be the language of the proceeding. The Complainant argues that the Respondent Milan Kovac has been involved in two other UDRP proceedings with which the relevant registration agreements have not been in English, and though in both cases the complainants formally requested English as the language of the proceeding, Milan Kovac failed to file any response, did not object to English as the language of the proceeding. Further, the Complainant argues that it is not able to communicate in Slovak, and for it to translate all documents in Slovak language would result in substantial and disproportionately high costs.
As to the language of the proceeding, the Panel decided to conduct this proceeding in English fully observing the spirit of paragraph 11 of the Rules towards ensuring fairness in the selection of the language.
In the present case, the Respondents have used English terms in the disputed domain name and their website in connection with the disputed domain name principally uses English language, with alternative options to language versions as Spanish, French, Chinese, German, Portuguese, Japanese, Korean, Dutch, Italian and Swedish, but no Slovak.
The Respondents have been given a fair chance to object to the Complainant’s choice of English as the language of the proceeding, but had not done so, and for these, and the reasons put forward by the Complainant, this Panel is convinced that the Respondents are clearly able to understand English language, and their choosing Slovak as the language of the Registration Agreement aimed at making any domain name recovery efforts against them difficult and disproportionately costly. 5. 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 extensive international presence in Europe, the Americas, Africa and Asia. The Complainant currently operates in over 50 countries, employs approximately 144,000 people, and moves, lends, invests and protects money for more than 48 million customers and clients worldwide. Barclays Capital is the investment banking division of the Complainant.
The Complainant owns numerous United Kingdom and Community Trademarks for wide range of goods and services including financial services, which consist and/or comprise of words BARCLAYS and BARCLAYS CAPITAL, e.g.:
- United Kingdom Trademark Registration No. 1314306 BARCLAYS and design, registered on June 24, 1987;
- United Kingdom Trademark Registration No. 2148576 BARCLAYS CAPITAL and design, registered on October 21, 1997;
- Community Trademark Registration No. 55236 BARCLAYS, registered on January 26, 1999;
- Community Trademark Registration No. 736298 BARCLAYS CAPITAL, registered on February 25, 1999.
The Complainant is – among others – the registrant of domain names and since August 1996 and November 23, 1993 and uses these domain names to promote and offer its banking and financial related goods and services.
The disputed domain name was obtained on November 16, 2010 and was and is still being used as a holding page containing a number of banking and finances related search terms matching the Complainant’s core goods and services.
The Complainant tried several times to solve this conflict in a peaceful manner, but the Respondents never replied, all emails addressed to the Respondents bounced back as undeliverable. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contains a word which is confusingly similar to the name BARCLAYS in which it has trademark and common law rights, and inclusion of the generic word “capital” does not avoid confusion. In fact since the term “capital” is synonymous with the Complainant’s core services, addition of the word “capital” is more likely to increase confusion with the Complainant.
The Complainant further submits that trademarks and the goodwill associated with the name BARCLAYS are the property of the Complainant and cannot pass to any third party without a formal assignation. The Complainant contends that it has not assigned any such rights in favor of the Respondents, neither are they known by the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith, since it functions as a holding page containing a number of banking related search. By clicking on these search terms, Internet users are directed to a web pages consisting of finance related sponsored links which relate to competitor products and services to those offered by the Complainant. The disputed domain name has been and is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor goods and services, with intention to generate income for the Respondents. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 7. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in the WIPO Overview 2.0 that a respondent’s default does not automatically result in a decision in favor of the complainant.
The complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or services 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
Under this paragraph, there are two requirements which the Complainant must establish, firstly that it has rights in a trade or service marks, and secondly that the disputed domain name is identical of confusingly similar to the trademark.
It has been a consensus view of the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant provided to the Complaint an exhaustive schedule of its various trademarks consisting of and/or comprising – among others – BARCLAY and BARCLAYS CAPITAL. For the purpose of this proceeding, the Panel established that the Complainant valid Community Trademark Registration No. 736298 BARCLAYS CAPITAL, registered on February 25, 1999 satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in BARCLAYS CAPITAL, the Panel next assessed whether the disputed domain name, , is identical of confusingly similar to the Trademark. The disputed domain name fully incorporates the Complainant's BARCLAYS CAPITAL trademark.
According to paragraph 1.2 of the WIPO Overview 2.0 in order to satisfy the threshold test for confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name differs from the Complainant’s trademark BARCLAYS CAPITAL in having the descriptive term “careers” added to the trademark, and in the view of this Panel this amount to confusing similarity between the Complainant’s trademark and the disputed domain name. It is likely to believe that consumers will think that the disputed domain name is connected with the Complainant, and for these reasons this Panel finds that the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondents may demonstrate their rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice to;
(ii) they have been commonly known by the disputed domain name;
(iii) they are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted uncontested evidence that it owns rights in the trademarks BARCLAYS and BARCLAYS CAPITAL and that the disputed domain name has been used to redirect consumers to websites that for the most part relate to either identical or similar products and services offered by the Complainant.
The Complainant never authorized either of the Respondents to use its BARCLAYS or BARCLAYS CAPITAL trademarks in a domain name, or to use these names in any other way. The Complainant’s prior rights in the trademark BARCLAYS, and for the purpose of this administrative proceeding in the trademark BARCLAYS CAPITAL in particular long preceded the date of registration of the disputed domain name.
It has been a consensus view of the UDRP panels that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests the burden of production shifts to the respondent.
By defaulting and failing to respond, the Respondents have failed to offer this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, and circumstances brought forward by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondents have no rights or legitimate interests in the disputed domain name. Therefore the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] 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
(iiI 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.”
Given the widespread recognition of the BARCLAYS mark, and incorporation of the Complainant’s BARCLAYS CAPITAL mark into the disputed domain name in its entirety is an indicative to the Panel that the Respondents have surely been aware of these trademarks and have registered the disputed domain name to misappropriate the value of these trademarks of the Complainant.
The disputed domain name has been and is being used as a holding page containing a number of banking and finance related search terms and links which relate to products and services offered by the Complainant, a circumstance which is also indicative of bad faith on the side of the Respondents.
The disputed domain name has been and is being used to redirect traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondents and the Panel find this as interference with the legitimate commercial business of the Complainant, and in addition to the above a further evidence of satisfying paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Dated: August 8, 2011
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