The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (the Ünited Kingdom” or “UK”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is New City Resources Inc. of Bowmanville, Ontario, Canada [Provided in Response: Barclay Investment Co., Ltd. Hong Kong, China]. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2011, GoD, Inc. 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”).
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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Response was filed with the Center on October 18, 2011.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 11, 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 is Barclays Bank PLC, 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 is the registered proprietor of a variety of UK registered and Community registered trade marks in the name Barclays in a range of classes including in relation to financial services. Furthermore, the Complainant is the registrant of a portfolio of domain names including which was registered prior to August 1996 and which was registered on November 23, 1993. These domain names are used by the Complainant to promote and offer its banking and financial related goods and services.
As indicated in the Response, the Respondent is Barclay Investment Co. Ltd., located in Hong Kong, China. The Respondent registered the disputed domain name on March 29, 2010.
The Complainant through its authorized representative, Pinsent Masons LLP, wrote to the Respondent on June 8, 2010 in relation to the disputed domain name advising the Respondent of the Complainant’s registered trade marks in the name Barclays. The Respondent denied that there was any possibility of confusion between the Complainant’s trade marks in the name Barclays and the disputed domain name. No further response was received from the Respondent, despite several follow-up letters from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The reasons are as follows:
1. The Complainant asserts that it is the registered registered proprietor of a variety of UK registered and Community registered trade marks in the name Barclays in a range of classes including in relation to financial services. Furthermore, the Complainant has through its use of the name “Barclays” over the last 114 years acquired goodwill and a significant reputation in the areas it specializes. Thus, the Complainant asserts that the name Barclays has become a distinctive identifier associated with the Complainant and the services it provides.
2. Furthermore, the Complainant is the registrant of a portfolio of domain names including which was registered prior to August 1996 and which was registered on November 23, 1993. These domain names are used by the Complainant to promote and offer its banking and financial related goods and services.
3. The Complainant contends that the disputed domain name contains a word which is confusingly similar to the name Barclays in which the Complainant has common law rights and for which the Complainant has registered trade marks.
4. The Complainant further contends that given its worldwide fame, reputation and notoriety of the name Barclays, no trader would choose a domain name which is confusingly similar to the Complainant’s mark unless 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.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name on the following grounds:
1. The disputed domain name is being used to display a “GoDaddy” parked page with investment related sponsored listings and the links essentially takes the Internet user to a webpage consisting of finance related sponsored links which related to competitor products and services similar to those offered by the Complainant. Thus, the Complainant asserts that the disputed 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 Respondent.
2. The disputed domain name is registered in the name of New City Resources Inc. which is the pioneer innovator of new panel materials. Thus, the Complainant asserts that the Respondent is part of the New City Resources Inc. group based in Canada. When the Complainant was subsequently informed that the company “Barclay Investment Co” is a registered company in Hong Kong, China, the Complainant reviewed the Hong Kong company register and found two results for companies called “Barclay Investment Ltd” but both were dissolved. Thus, the Complainant contends that Barclays Investment Co Ltd is not a registered company.
3. The Respondent is not known by the disputed domain name.
4. The Complainant asserts that the Respondent is not making a legitimate non-commercial use or fair use of the disputed domain name. The content found at the disputed domain name is pay per click sponsored links which related to financial and investment services. Such activity does not qualify as legitimate noncommercial or fair use.
5. The Respondent has never asked, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Complainant contends that despite numerous correspondences, the content of the disputed domain name remained unchanged.
2. Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, the Respondent must have been aware that in registering the dispute domain name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks.
3. The Complainant contends that the Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks.
4. The Complainant asserts that the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYS trade mark.
5. The disputed domain name is expected to divert potential custom form the Complainant’s business due to the presence of links to competitor websites on the domain name. B. Respondent
The Respondent asserts that Barclay Investment Co., Ltd is a private company with limited liability what was legally incorporated in Hong Kong, China on April 1, 2010. The Complainant’s contact is Mr. Tsang Wai Hung.
The Respondent explains that its business activities are mainly in the Greater China region, thus the Chinese name is of first importance. The Chinese name is “百家利投资有限公司”, meaning “investment is good for all or beneficial to all”. The common English name ”Barclay” was adopted because of its similar sounds: “百家利” is pronounced “bak-kar-lay”. The Respondent contends that this is different from the Complainant’s name ’巴克莱”. Thus, ”百家利” corresponds to “Barclay”; “Investment” corresponds to ”投资” and “Co., Ltd” corresponds to “有限公司”. The Respondent further contends that the name Barclay in the Complainant’s mark is a common surname in the United Kingdom and thus, it is unfair and unreasonable for the Complainant to have a monopoly over the use of a common name – “barclay”.
The Respondent contends that it has rights and legitimate interests in the disputed domain name for the following reasons:
1. That the Respondent “Barclay Investment Co., Ltd” is already in existence and in operation before the Complainant’s authorized representative Pinsent Masons LLP sent a letter to the Respondent on June 7, 2010, requesting the Respondent to transfer the disputed domain name to the Complainant. The Respondent contends that the Complainant has no legal right to invoke the UK Trade Marks Act 1994 to request the Respondent, a Hong Kong registered company, to change its company name and to transfer the domain name to it.
2. The Respondent is a legitimate and bona fide company in Hong Kong, China that trades by the name ”Barclay Investment Co., Ltd” and intends to use the disputed domain name for fair use without the intent for commercial gain or misleadingly divert the public or Internet users from the Complainant to the Respondent or to tarnish the trade mark of the Complainant.
3. The Respondent is known by the disputed domain name. This will be more apparent when the website of the Respondent is in operation.
4. The Respondent had acted legally in the registration of its company with the Companies Registry in Hong Kong, China and procured the disputed domain name legally.
The Respondent contends that the disputed domain name was not registered and being used in bad faith on the following grounds:
1. The Respondent asserts that it is a major investor in property and land development in the Greater China region. It has registered the domain name for corporate image and to provide information to the public. It would never sell, rent or transfer the disputed domain name to anyone.
2. The Respondent and the Complainant are in different line of business and are not competitors. Thus, there is no evidence that the Respondent had registered the disputed domain name to disrupt the Complainant’s business.
3. The Respondent asserts that it has a reputation second to none and is prepared to make it clear that on its website that “Barclay Investment Co., Ltd” including its trade mark has nothing to do with the Complainant and its domain names , .
The Respondent is of the view that the Complainant has abused the UDRP WIPO administrative proceedings to conduct reverse domain name hijacking as defined by the Rules under paragraph 15(e). 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the name Barclays in relation to in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services in Europe, the Americas, Africa and Asia. The Panel finds that the Complainant has rights and continues to have such rights in the relevant BARCLAYS marks.
The disputed domain names consist of Complainant’s mark BARCLAYS in its entirety without the letter “s”, the word “invest” and the suffix “.com”. In assessing the degree of similarity between the Complainant’s BARCLAYS marks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s BARCLAYS marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.
The Panel finds that the name “Barclays” in the Complainant’s BARCLAYS marks is the distinctive portion of the Complainant’s marks and it has been reproduced substantially in the disputed domain name. The Panel accepts the evidence adduced by the Complainant to support the contention that the Complainant and its BARCLAYS marks have through substantial use over a period of more than 114 years acquired goodwill and a significant reputation in the areas that it specializes. Thus, the name “Barclays” in the Complainant’s marks has become a distinctive identifier associated with the Complainant and the services it provides. In this regard, the Panel rejects the Respondent’s argument that “Barclay” is a mere common English surname and could be used as an identifier by any person without consent.
The Panel finds the “barclay” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. It is an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor. Furthermore, the addition of the word ”invest in the respective disputed domain name does not provide additional specification or sufficient distinction from the Complainant or its BARCLAYS marks. The Panel accepts the Complainant’s contention that the addition does not eliminate the identity or at least the similarity between the Complainant’s registered and well-known trade mark and the disputed domain name. On the contrary, it strengthens the confusion, because of the direct relation for customers between the words “barclay” and “invest” and the business of the Complainant. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
Thus, the Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
The burden of proof on this element lies with the complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made out a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. The burden of production shifts to the Respondent to rebut the Complainant’s contentions. The Panel notes that the Respondent has in its Response argued that it has rights or legitimate interests in the disputed domain name. However, the Panel finds that the Respondent has not met the shifted burden of production. All the Respondent has adduced is a certificate of registration of the “Barclay Investment Co., Ltd”; the business registration receipt of the company; and a statement of the Respondent’s intention to use the disputed domain name for a legitimate purpose. The Respondent did not provide any evidence detailing the kind of business Barclay Investment Co., Ltd is in. In the Panel’s opinion, the mere registration of a company does not per se demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. Furthermore, Respondent has not provided documentary or other demonstrable evidence of his or Barclay Investment Co., Ltd’s plans to create a legitimate website using the disputed domain name. The Policy plainly requires such demonstrable evidence, in paragraph 4(c)(i), and therefore mere assertions of intent are insufficient to meet the burden. As Respondent has failed to provide sufficient demonstrable evidence to rebut Complainant’s prima facie showing of no rights or legitimate interests.
The Panel finds that the Complainant has met its burden of proof with regard to the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the worldwide reputation of the Complainant and its BARCLAYS marks, as well as the market presence of the Complainant in Europe, the Americas, Africa and Asia, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name.
The Respondent however has argued that the disputed domain name was chosen based on the pronunciation of the Chinese name of “Barclay Investment Co., Ltd” - ”百家利投资有限公司” in the Cantonese dialect “Bak-Kar-Lay” which corresponds to “barclay” in the disputed domain name. To further buttress its argument, the Respondent asserts that the business of “Barclay Investment Co., Ltd” is in the Greater China region and does not entertain any outside business at all. The Panel rejects the Respondent’s argument. If what the Respondent asserts is true, one would conclude that Barclay Investment Co., Ltd’s target customers are mainly Chinese nationals and if this is the case, the Respondent should choose to register a Chinese language domain name instead of using an English surname in the composition of the domain name.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trade mark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. In this regard, the Panel finds that the Respondent has not discharged this burden with his explanation.
The Panel also notes the unusual circumstances surrounding the registration of the disputed domain name. On record, the disputed domain name was registered by New City Resources Inc., a company based in Canada which is in the business of new panel materials. The Respondent explained that New City Resources Inc. was asked to register the disputed domain name on its behalf for expediency. The Panel is not persuaded by this argument.
The Complainant has argued that the disputed domain name is expected to divert potential custom from the Complainant’s business due to the presence of links to competitor websites on the domain name. This is evidence of the disputed domain name being used in bad faith. The Respondent has counter-argued that the links were the result of the act of the domain name registrar GoDaddy. However, the Complainant has shown that despite the numerous letters sent to the Respondent, the contents of the webpage upon which the disputed domain name is directed did not change. If the Respondent has in good faith wanted to use the disputed domain name for bona fide offering of goods or services, the Respondent would not in all reasonableness have allowed the continued presence of the links on the website. This is in the opinion of the Panel evidence of use of the disputed domain name in bad faith. Although the links have now been removed and that the Respondent has said in the Response that the disputed domain name will be used for bona fide offering of goods or services, this statement however has not been substantiated with evidence of actual use by the Respondent. A mere assertion on the part of the Respondent is not sufficient to rebut the presumption that as a result of the worldwide fame, reputation and notoriety of the Complainant’s BARCLAYS mark, the disputed domain name, which is confusingly similar to the Complainant’s mark, was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.
Thus, the Panel finds for the Complainant on the third part of the test. 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 the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: November 25, 2011
Full & Egal Universal Law Academy