The Complainant is Barclays Bank PLC, London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Whois privacy services, provided by DomainProtect LLC/ NA, Andrei Ivanov, of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Domus Enterprises LLC dba DOMUS. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 15, 2011, the Center transmitted by email to Domus Enterprises LLC dba DOMUS a request for registrar verification in connection with the disputed domain name. On August 16, 2011, Domus Enterprises LLC dba DOMUS 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 August 25, 2011, 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 August 29, 2011.
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 Respondent of the Complaint, and the proceedings commenced on September 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 12, 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.
On October 25, 2011, the Panel issued a Procedural Order requesting the Complainant to provide any evidence in its possession supporting the assertions contained in the amended Complaint relating to use of the disputed domain name and to the disputed domain name being offered for sale. On October 26, 2011, the Complainant transmitted by email to the Center two screenshots of the website to which the disputed domain name resolved at different times on January 24, 2011. 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 prior to that as “Barclays Bank PLC”, “Barclays Bank Limited” and “Barclay & Company Limited” since 1896. The Complainant currently operates in over 50 countries, employs approximately 144,000 people and has more than 48 million customers and clients.
The Complainant is the proprietor of a number of United Kingdom and European Community registrations for the trademarks BARCLAY and BARCLAYS, dating back to 1986. The Complainant is the registrant of a number of domain names containing its trademarks, including registered prior to August 1996 and registered on November 23, 1993, which are used to promote and offer its banking and financial-related goods and services.
The Respondent registered the disputed domain name on January 15, 2011. The disputed domain name currently resolves to a blank page. The Complainant provided screenshots showing that the website to which the disputed domain name resolved on January 24, 2011, contained a number of sponsored links to finance-related and insurance-related products and services provided by competitors of the Complainant and a notice advertising that the disputed domain name was for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends the disputed domain name contains a word that is identical to “BARCLAY” in which the Complainant has common law and registered trademark rights, and is confusingly similar to the name BARCLAYS in which the Complainant has common law and registered trademark rights.
The Complainant contends the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the website to which the disputed domain name resolved was a holding page containing insurance-related sponsored links to products and services in competition with those offered by the Complainant and these links generated income for the Respondent; (ii) the Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant; (iii) the website to which the disputed domain name resolved displayed a notice advertising that the disputed domain name was for sale and that the Respondent was attempting to financially benefit from trading in a domain name that incorporates the Complainant’s trademark; (iv) the Respondent is not known by the disputed domain name; (v) it is clear the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; and (vi) the Respondent has never asked for, nor been given, permission by the Complainant to register or use any domain name incorporating the Complainant’s trademark.
The Complainant contends the disputed domain name was registered and is being used in bad faith because: (i) on March 25, 2011, the Complainant’s legal representative wrote to the Respondent advising that the registration and use of the disputed domain name was infringing the Complainant’s rights in the trademark BARCLAYS and requesting it to be transferred to the Complainant, and this letter and two follow-up letters in May 2011 and June 2011 received no response; (ii) given the widespread use, reputation and notoriety of the famous BARCLAYS trademark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademark; (iii) by registering the disputed domain name the Respondent has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trademarks contrary to paragraph 4(b)(ii) of the Policy; (iv) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademarks in breach of paragraph 4(b)(iv) of the Policy; (v) the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the public will always assume that there is an association between the Respondent and the Complainant and/or between the Respondent and the BARCLAYS trademark; and (vi) it is reasonably anticipated that the disputed domain name will divert potential custom from the Complainant’s business due to the presence on the website to which the disputed domain name resolved of links to competitor websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates wholly the Complainant’s registered trademark BARCLAY and adds the characters “pipin”. The distinctive aspect of the disputed domain name is the Complainant’s registered trademark BARCLAY. The addition of the characters “pipin” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s registered trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not provided any evidence that it has been commonly known by the disputed domain name. The Respondent registered the disputed domain name 25 years after the Complainant first registered the BARCLAY trademark. The Complainant provided screenshots dated January 24, 2011, showing that the website to which the disputed domain name resolved contained a number of sponsored links to finance-related and insurance-related products and services provided by competitors of the Complainant and a notice advertising that the disputed domain name was for sale. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has conducted a substantial business of international renown for very many decades under the trademarks BARCLAY and BARCLAYS. This Panel is persuaded that the Respondent was likely aware of the Complainant’s trademarks when it registered the disputed domain name. Moreover, this Panel is persuaded that the Respondent has used the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website. Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name, , be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: October 28, 2011
Full & Egal Universal Law Academy