The Complainant is Barclays Bank PLC of London, United Kingdom, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is PrivacyP of Queensland, Australia and Sylvia Paras of Manila, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On November 16, 2011 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 November 17, 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 November 23, 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2011.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on January 5, 2012. 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 financial services provider. It was incorporated in the United Kingdom in 1896 and traded as Barclays Bank PLC. It has traded as Barclays PLC since 1985.
The Complainant owns a variety of trademarks, registered throughout the world. It is in particular the proprietor of the following trademarks: BARCLAYS CAPITAL, registration number 2148576, registered in the United Kingdom on October 21, 1997; BARCLAYS CAPITAL, registration number 736298, registered as a Community trademark on February 25, 1999; BARCLAYS CAPITAL, registration number 200013005, registered in Hong Kong on January 14, 1998.
The Respondent registered the disputed domain name on June 7, 2011. The disputed domain name resolves to a website which appears to offer financial services under the name “Barclays Premier Capital”. On this website, Barclays Premier Capital is presented as “Hong Kong’s Most Exclusive investment house”. The website contains a page listing the services provided by “Barclays Premier Capital”. For each such service, the user is invited to click on a “Learn more…” link. The Panel notes that all these links are dead. Similarly, a page describing the financial management resources available on the website contain “Read more…” links, which are all dead.
On July 26, 2011 the Complainant sent a cease and desist letter to the Respondent and requested, in particular, the transfer of the disputed domain name. The Respondent did not respond to this letter. The Complainant wrote again to the Respondent on August 23 and September 9, 2011. The Respondent did not respond to these letters. 5. Parties’ Contentions A. Complainant
Concerning the first test under the Policy, the Complainant contends that the disputed domain name contains a word which is identical, and therefore confusingly similar to the name “Barclays”, in which the Complainant has common law rights and for which it has registered trademarks. The Complainant also submits that given the worldwide fame reputation and notoriety of the name “Barclays”, no trader would choose the disputed domain name 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.
Concerning the second test under the Policy, the Complainant states that the disputed domain name resolves to a website which displays information on a Hong Kong based investment company, Barclays Premier Capital Inc. It submits that the inclusion of the name “Barclays” in the company name, logo and the URL means that Internet users will be confused into believing that this website is in some way associated with the Complainant. According to the Complainant, the disputed domain name is being used to redirect Internet traffic away from the Complainant’s own website. Furthermore, the Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The services mentioned on the website are financial and investment services. According to the Complainant, it is difficult to imagine that the Respondent could have registered the disputed domain name without being aware of the existence of the Complainant, in particular due to the existence of registered trademarks and to the strong business presence of the Complainant in Hong Kong. Finally, the Complainant points out that the Respondent has never asked for and has never been given permission by the Complainant to register or use any domain name incorporating the Complainant’s trademark.
Concerning the third test under the Policy, the Complainant mentions that the Respondent did not reply to any of the letters that were sent to it. According to the Complainant, given the widespread use, reputation and notoriety of the famous BARCLAYS trademark, including in Hong Kong, the Respondent must have been aware that in registering the disputed domain name, it was misappropriating the Complainant’s intellectual property and it intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The Complainant also submits that the Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to its trademark. Finally, the Complainant contends that the Respondent will never be capable of using the disputed domain name for a legitimate purpose, as the notoriety of the Complainant’s trademark is such that members of the pubic will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the Complainant’s trademark.
For these reasons, the Complainant requests that the disputed domain name be transferred. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and
(iii) the disputed domain name has been registered and is being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant. A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several BARCLAYS and BARCLAYS CAPITAL trademarks.
Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the entirety of the Complainant’s BARCLAYS CAPITAL trademark, with two additions: the word “premier” and the word “inc”. As already ruled by numerous UDRP panels, the mere addition of generic or descriptive words is insufficient in itself to avoid a finding of confusing similarity (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 and cases cited therein).
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the Respondent is 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.”
In the present case, the Respondent did not file a response to the Complaint. However, based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
First, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. In this respect, the Panel notes that the disputed domain name resolves to a website featuring a general description of financial services. However, the Panel finds, based on the evidence on record, that this website does not correspond to a bona fide offering of products or services. In particular, all links set out on this website to allow the user to access information as to the services offered are non-functioning. Similarly, access to the client area is non-functioning. Furthermore, all attempts made by the Complainant or by the Center to contact the Respondent, either through the contact details provided in the disputed domain name registration or through the contact form accessible on the website have been unsuccessful. Finally, the Panel notes that the Respondent appears to be an individual located in the Philippines and unrelated to Hong Kong.
Second, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Third, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. On the contrary, the evidence on record shows that the Respondent’s use of the disputed domain name, if any, is a commercial use.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 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 a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
“(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
The Respondent has registered and used a domain name which incorporates the Complainant’s well-known trademark, with the mere addition of two generic words. The disputed domain name is used to resolve to a website where financial services are offered, without the Respondent having rights or legitimate interests in the disputed domain name. These services, if actually provided, would compete with the services offered by the Complainant.
The Panel finds that use of the disputed domain name will divert potential customers from the Complainant's business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated to the Complainant, and which may further mistakenly believe that the services offered on this website are offered by the Complainant, or by an entity affiliated to the Complainant.
In addition, the Panel notes that the Complainant’s BARCLAYS trademark, which is incorporated in its entirety in the disputed domain name, does not correspond to a descriptive or generic word. In the present case, this Panel finds it is unconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademark and intention of benefiting from confusion with such trademark.
In the view of the Panel, this fulfills the conditions of paragraph 4(b)(iv) 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 domain name be transferred to the Complainant.
Fabrizio La Spada
Sole Panelist
Dated: January 27, 2012
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