Complainant is BARCLAYS BANK PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Pinsent Masons LLP, United Kingdom.
According to the Registrar and “WhoIs” information, Respondent is Stakeinc of perak, Malaysia. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Wild West Domains, Inc. (“Registrar”). 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 Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2011, Registrar transmitted by email to the Center its verification response disclosing the name of the registrant and contact information for the Disputed Domain Name, which name and contact information differed from the earlier named respondent (Domains by Proxy, Inc.) and contact information in the earlier filed Complaint. The Center sent an email communication to the Complainant on August 22, 2011 providing the name of the registrant (Stakeinc) and contact information provided by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint dated August 26, 2011 and it was received by the Center on that date.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 7, 2011. In accordance with the Rules,
paragraph 5(a), the due date for Response was September 27, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2011.
The Center appointed James H. Grossman as the sole panelist in this matter on October 17, 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 is one of the world’s 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 around the world. Complainant’s predecessor was incorporated on July 20, 1896 and has traded as Barclays PLC since 1985. Complainant currently operates in 50 countries with approximately 144,000 employees with more than 48 million customers and clients worldwide.
Complainant has a variety of UK registered and European Community registered trade marks in the name BARCLAYS in a range of classes including, but not limited to, those relating to financial services. For example, Complainant has trademarks for BARCLAYBANK (UK Reg. #1336098) registered on February 19, 1988 as well as for BARCLAYS (UK Reg.#1314306) registered on June 24, 1987 and BARCLAYS again with other classes (UK Reg. #1314306) registered on January 11, 2008. In the European Community, Complainant owns trademarks including BARCLAYS (EU Reg. #55236 January 26, 1999 and February 13, 2003).
Complainant is the registrant of a number of domain names including registered on November 23, 1993 and which was registered prior to August 1996.
Respondent registered the Disputed Domain Name on November 10, 2010.
It is important to note that the Disputed Domain Name apparently expired on October 11, 2011. On September 7, 2011, the Center wrote to the Registrar noting the impending expiration of the Disputed Domain Name and requesting the Registrar confirm its compliance with Paragraph 3.7.5.7 of the ICANN Domain Deletion Policy which gives Complainant during a pending dispute the option to renew or restore the domain name. In response on the same day, the Registrar confirms the lock on the Disputed Domain Name expires only when the Registrar receives an order dismissing or suspending the case or “upon the expiration of the domain registration including the Redemption Grace and Pending Delete Periods at the Registry”. In accordance with the terms of the ICANN Policy cited above, the Registrar states the Complainant must bear the burden of ensuring that the domain name do[es] not expire. Notwithstanding the above, the Registrar confirms it does take “steps to ensure that the domain name remains in status quo during the pending dispute.” The Panel notes this rather confusing position taken by the Registrar. While there can be no assurance of action by this Registrar, the Panel is hopeful that what has now evidently become an expired Disputed Domain Name will remain in the status quo pending the decision of the Panel in this matter. 5. Parties’ Contentions A. Complainant
Complainant points out that in addition to its registered trade marks and domain name filings, Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. Thus, the name BARLCLAYS is identified with both Complainant and the services it provides. The Disputed Domain Name contains the full word BARCLAYS, and, therefore, is identical and confusingly similar to Complainant’s trade marks, domain names, and also its common law rights. While the word “bank” is generic in nature, when placed together with the word BARCLAYS, it adds to the likelihood that an Internet user will be confused in thinking that this is Complainant’s site and services. After 114 years of doing business, the name BARCLAYS has become a distinctive identifier associated with Complainant and the services it provides. Complainant states that it has given Respondent no rights to use the BARCLAYS name nor is Respondent known by the Disputed Domain Name. Nor is there any legitimate noncommercial or fair use involved in Respondents usage. The diversion by Respondent of the world famous name BARCLAYS can only have been done with clear intent to misappropriate the valuable intellectual property rights of Complainant and thus was done in bad faith.
Beginning in January 2011, Complainant’s counsel emailed Respondent on a number of occasions informing him of Complainant’s trademark rights and requesting transfer to Complainant of the Disputed Domain Name. One of such requests provided Respondent with a ready made reply turning over all rights to the Disputed Doman Name to Complainant. Copies of such emails were provided to the Panel. Complainant states in its Complaint that Respondent did not respond to any of the communications from counsel for Complainant and that this as well should be considered in the Panel’s consideration of bad faith by Respondent. Complainant also notes Respondent’s attempt to confuse the issue by adding Domains by Proxy, Inc. as a registrant in which to hide behind. Nevertheless, the documentation from Registrar still refers to Respondent as the registrant. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no right or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “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.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15 (a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnetmarketing, inc., NAF Claim No. 95095. A. Identical or Confusingly Similar
The Panel agrees with the points set forth above by the Complainant. Further, the additions of the letters “be” to a domain name that is the indicia of one of the world’s most well recognized financial institutions does nothing to avoid the fact that the Disputed Domain Name is clearly identical or confusingly similar.F. Hoffman La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629 ("The Panel finds that [the] Domain Name is confusingly similar to Complainant’s trademark because the addition to [of] the letters “la” to the trademark XENICAL does not change the fact that the Domain Names looks and reads like Complainant’s XENICAL trademark.”). An Internet user could possibly think that the Disputed Domain Name with the “BE” following the word BANK may relate to the Complainant’s offices in Belgium, but of course that is not the case. In fact the Disputed Domain Name is being used to redirect Internet traffic away from the Complainant. When the Panel went to the Disputed Domain Name Internet site, there were a number of listings for new bank accounts at other financial institutions, so it may be reasonably presumed that Respondent is receiving revenues from the sponsored links for sending Internet users to these sites. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
There is no evidence that Respondents are known by the Disputed Domain Name nor have any connection with the name BARCLAYS or BANK. The Panel is advised that Respondent has never asked or been given any permission whatsoever to use the Disputed Domain Name incorporating Complainant’s trademark or its domain name. It is also clear that Respondent is not making a legitimate noncommercial or fair use of Complainant’s trademark or domain names.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that a respondent lacks rights or a legitimate interest. The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455.
Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel agrees with Complainant that the Respondent had to know it was misappropriating a world recognized trademark and domain name when in 2010 it registered the Disputed Domain Name.
There can be no reason other than a bald faced attempt by the Respondent to divert Internet users who believe that the Disputed Domain site is related to Complainant. Caesars World, Inc v. Forum LLC., WIPO Case No. D2005-0517 (“Respondent’s use of the disputed Domain Name is considered by the Panel as an action to misdirect Complainant’s clients, attract them to Respondent’s services for Respondent’s profit.“) The Panel finds that 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 Disputed Domain Name, be transferred to Complainant.
James H. Grossman
Sole Panelist
Dated: October 24, 2011
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