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 Registration Private of Scottsdale, Arizona, United States of America (“First Respondent”), and Jesse Dziedzic of Toronto, Ontario, Canada (“Second Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 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 the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 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 September 30, 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 October 4, 2011.
On October 11, 2011, the Second Respondent sent an email communication to the Complainant, whereby he alleged that he had never used the Domain Name and that he was unsuccessfully trying to delete it or to transfer it. The Complainant replied to the Second Respondent’s email communication and copied the Center. On the same date, the Center acknowledged receipt of the Parties’ communication and informed the Complainant that if it intended to explore the possibility of a settlement it might wish to consider requesting a suspension of the proceedings. No request for suspension of proceedings has been filed by the Complainant.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 25, 2011.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 2, 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 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. Currently, it operates in over 50 countries and employs approximately 144,000 people. The Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide. It has traded as Barclays PLC since 1985. Prior to this, the Complainant has traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.
The Complainant has received several awards including in 2009 the “Lender of the Year” during the Bankhall Annual Conference in London; the “Best Leadership Team in Global Private Banking” accolade at the Global Private Banking Awards in Geneva; the “Best Credit Card Provider (Standard Rate)” at the Moneyfacts Awards 2009; the “Best Local Bank in the UK” at the Euromoney Private Banking Awards; and in 2008 the Complainant was awarded the “Business Superbrands status” in recognition of quality, reliability and distinction by the Business Superbrands Council and individual business professionals.
The Complainant is the owner of the following trademarks (the “BARCLAYS trademarks”):
- The word trademark BARCLAY/BARCLAYS with reg. No.1286579, registered with priority from October 1, 1986 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
- The word trademark BARCLAYS with reg. No.1314306, registered with priority from June 24, 1987 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
- The word trademark BARCLAY/BARCLAYS with reg. No.1380658, registered with priority from April 19, 1989 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 35;
- The word trademark BARCLAY/BARCLAYS with reg. No.1393351, registered with priority from July 27, 1989 for the territory of the United Kingdom of Great Britain and Northern Ireland, for goods in International Class 16;
- The word trademark BARCLAYS with reg. No. 2461096, registered on January 11, 2008 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
- The word trademark BARCLAYS with reg. No.000055236, registered on January 26, 1999 as a Community trademark for goods and services in International Classes 9, 16, 35, 36 and 42; and
- The word trademark BARCLAYS with reg. No.002315554, registered on February 13, 2003 as a Community trademark for goods and services in International Classes 9, 16, 35, 36, 38 and 42.
The Complainant is also the registrant of the domain name , registered prior to August 1996, and of the domain name , registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Domain Name was registered on October 26, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name contains the word “barclays” which is identical to the BARCLAYS trademarks in which the Complainant has rights.
According to the Complainant, the Respondents have no rights or legitimate Interests in respect of the Domain Name. They are not known by the Domain Name, and are not making a legitimate noncommercial or fair use of the latter. The Respondents have never asked for, and have never been given any permission by the Complainant to register or use any domain name incorporating the Complainant's BARCLAYS trademarks. The goodwill associated with the name “Barclays” is the property of the Complainant and cannot pass to any third party without a formal assignation. The Domain Name is being used as a holding page containing a number of finance-related sponsored links which relate to competitor products and services to those offered by the Complainant, in an attempt 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 Respondents.
The Complainant contends that the Domain Name was registered and is being used in bad faith. Given the widespread use, reputation and notoriety of the BARCLAYS trademarks, the Respondents must have been aware of it in registering the Domain Name, and have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant's BARCLAYS trademarks. When Internet users view the content displayed on the website at the Domain Name and click on one of the sponsored links therein, the Respondents generate revenue directly from the initial interest arising out of the use of the name “Barclays” in the Domain Name. In addition, it is reasonably anticipated that the Domain Name will divert potential customers from the Complainant's business due to the presence of links of its competitors on the website associated to the Domain Name.
The Complainant's representatives, Pinsent Masons LLP, wrote to the First Respondent on January 27, 2011 in relation to the Domain Name advising that the registration and use of the Domain Name was infringing the Complainant's registered BARCLAYS trademarks and therefore asking the Respondent to transfer the Domain Name to the Complainant. An email communication was received from the Second Respondent on February 17, 2011, where he advised that he was not trying to misrepresent the Complainant in any way and that the Domain Name should be read as "bar clay SHO me insurance dot info". The Complainant's representatives, Pinsent Masons LLP replied to the Second Respondent’s email communication, on March 4, 2011 again highlighting the Complainant's registered BARCLAYS trademarks and requesting a transfer of the Domain Name. No response was received to this letter and to the further letters sent on May 6, 2011 and on July 11, 2011.
The Complainant requests the transfer of the Domain Name. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondents have registered and are using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their Response.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. …In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In the present case, the Respondents have chosen not to submit a formal Response. Their default leads the Panel to conclude that the Respondents have no arguments or evidence to rebut the assertions of the Complainant. The Panel has decided this case on the basis of the statements and documents provided by the parties and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the word trademark BARCLAYS, registered for the territories of the European Union and of the United Kingdom of Great Britain and Northern Ireland.
It is a common practice under the Policy to disregard the gTLDs such as the “.info” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is “barclayshomeinsurance”. The distinctive element “barclays” is identical to the Complainant’s trademark, and the “homeinsurance” element is a generic descriptive term. Internet users would regard it as an additional element, indicating the type of insurance services to which the Domain Name refers, and it is likely that their attention would be mainly attracted by the “barclays” element of the Domain Name. The Second Respondent’s allegation in its message of February 17, 2011 to the Complainant that the Domain Name should be read as “bar clay SHO me insurance dot info” and is therefore not similar to the Complainant’s trademarks, does not convince the Panel.
For these reasons, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant claims that the Respondents have no rights or legitimate interests in the Domain Name, and has provided arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondents have chosen not to put forward to the Panel any allegations or documents in the form of a formal Response despite the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondents had any justification for registering or using the Domain Name, they could have provided it. In particular, the Respondents have failed to provide convincing circumstances and evidence that could demonstrate, pursuant to paragraph 4(c) of the Policy, that they have rights or legitimate interests in the Domain Name.
Furthermore, the Second Respondent has stated in his message to the Complainant of October 11, 2011 that he has never used the Domain Name, and has tried to delete or transfer it after the receipt of the Complaint. Thus, the Second Respondent has admitted that he has no rights or legitimate interests in respect of the Domain Name and has provided no explanation whatsoever for its registration and use.
As discussed above, the Domain Name is confusingly similar to the distinctive BARCLAYS trademarks of the Complainant, and is currently linked to a website containing links to products and services of the Complainant’s competitors. It is possible that Internet users seeking information about the Complainant’s products may reach the Respondents’ website expecting that it is somehow affiliated to the Complainant, and then be exposed to the content of the website and possibly switch to any of the links to competitors’ products and services.
In the Panel’s view, such a conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondents in the Domain Name. Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), 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:
(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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s BARCLAYS trademarks, and the Respondents do not allege to have any rights or legitimate interests in it. As contended by the Complainant, the website associated to the Domain Name contains links to products and services of the Complainant’s competitors. This is sufficient for the Panel to decide that at the time of the registration of the Domain Name, the Respondents must have been aware of the Complainant and of the goodwill of its BARCLAYS trademarks. As contended by the Complainant, when Internet customers have access to the website associated to the Domain Name and click on one of the sponsored links therein, the Respondents may generate revenue directly from the initial interest arising out of the use of BARCLAYS trademarks in the Domain Name, and it may be expected that the Domain Name will divert potential customers from the Complainant's business due to the presence of links of its competitors on the website associated to the Domain Name.
Therefore, and in the lack of any contrary evidence or even allegation of any actual or contemplated good faith use of the Domain Name, the Panel is prepared to accept that Respondents have registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website associated to the Domain Name by creating a likelihood of confusion with the Complainant’s BARCLAYS trademarks as to the source, sponsorship, affiliation, or endorsement of this website. 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.
Assen Alexiev
Sole Panelist
Dated: November 17, 2011
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