The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Choko Choko of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On November 16, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.
The Center appointed Masato Dogauchi as the sole panelist in this matter on December 28, 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 one of the large global financial services providers. It is engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services in Europe, the Americas, Africa and Asia. The Complainant was founded by John Freame and his partner Thomas Gould in London in 1690. The name “Barclay” became associated with the bank in 1736 when James Barclay, who had married John Freame's daughter, became a partner. In any event, Barclays Bank Limited and Barclay and Company had provided financial services since 1896, and the development of their global business began in 1920’s. The Complainant itself has traded as Barclays PLC since 1985.
The Complainant has many registered trademarks. Among them, in the United Kingdom (“UK”), BARCLAYBANK (No. 1336098) was registered in 1988, BARCLAYS (No. 1314306) in 1987, BARCLAYS CAPITAL (and design) (No. 2148576) in 1997 and BARCLAYS CAPITAL DEALVAULT (No. 2951150) in 2004. The Complainant is the registrant of a portfolio of domains including , which was registered prior to August 1996, and , which was registered on November 23, 1993. The Complainant uses these domain names to promote its business.
The Domain Name was registered on November 17, 2010.
The Complainant tried to contact the Respondent at the address in the Registrar's database several times. The Respondent did not reply to the Complainant's messages. 5. Parties’ Contentions A. Complainant
With regard to the first requirement (paragraph 4(a)(i) of the Policy), the Complainant alleges that the Domain Name contains a word which is identical or confusingly similar to the trademark BARCLAYS. The Complainant has many registered trade marks in UK and some domain names including the name Barclay. In addition, through its use of the name Barclays over the last 114 years, the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. As such, the name Barclays has become a distinctive identifier associated with the Complainant and the services it provides. The goodwill associated with the name Barclays is the property of the Complainant and cannot pass to any third party without a formal assignation.
With regard to the second requirement (paragraph 4(a)(ii) of the Policy), the Complainant asserts that the 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 a third-party. Respondent in not known by the Domain Name. The Complainant asserts that the Respondent has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark.
With regard to the third requirement (paragraph 4(a)(iii) of the Policy), the Complainant asserts that the Domain Name was registered and used in bad faith, given the widespread use, reputation and notoriety of the famous BARCLAYS mark, and the Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the registration agreement of the disputed domain name incorporates the Policy, this proceeding is to be administered in accordance with the Policy, the Rules and Supplemental Rules.
This Panel was properly constituted in accordance with the Policy and has jurisdiction to decide the dispute over the Domain Name. And, as the Domain Name registration agreement is in English, the language of this proceeding is English in accordance with paragraph 11 of the Rules.
The Panel has found that the procedural steps taken by the Center are in compliance with the provisions of the Rules. Notwithstanding the fact that the Respondent did not submit any Response within the time periods under the Rules, the Panel will proceed to a decision on the Complaint in accordance with paragraph 14 of the Rules.
With regard to the merits of the case, according to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
- the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Identical or Confusingly Similar);
- the Respondent has no rights or legitimate interests in respect of the Domain Name (Rights or Legitimate Interests);
- the Domain Name was registered and used in bad faith (Registered and Used in Bad Faith).
The Panel will verify these elements on account of the evidence submitted by the Complainant only, since the Respondent did not respond or submit anything at all. A. Identical or Confusingly Similar
The Complainant has proven its rights in the registered trademarks in UK, including BARCLAYBANK (No. 1336098) was registered in 1988, BARCLAYS (No. 1314306) in 1987, BARCLAYS CAPITAL (and design) (No. 2148576) in 1997 and BARCLAYS CAPITAL DEALVAULT (No. 2951150) in 2004. The core part of these trademarks is apparently the BARCLAYS name and trademark.
The Domain Name can be divided into three parts as follows: “brclays”, “capital” and “bk”. The word “brclays” lacks “a” between “b” and “r”of the word “barclays”. The word “capital” is just a common noun. With regard to the third word “bk”, there are many possibilities. According to Wikipedia (“”), the first possibility for “bk” is the abbreviation for the Burger King chain of fast food restaurants. Second, is the chemical symbol for Berkelium. Eleven other candidates appear on the same page, including Brooklyn. On the other hand, according to the Japanese version of Wikipedia (“ BK”), the abbreviation of “bank” is “bk”. This usage is observed in Japan. English-Japanese dictionaries published in Japan contain this usage of “bk”. See, for instance, the following English-Japanese dictionary published in Japan: New Collegiate English-Japanese Dictionary (Kenkyusha, 1989); New Random House English-Japanese Dictionary (Shogakukan, 1994); Grand Concise English-Japanese Dictionary (Sanseido, 2001). However, it seems natural to the Panel to consider that almost all people cannot understand the meaning of “bk”.
Among the above three words, the Panel finds that the core part of the Domain Name is “brclays”. According to prior UDRP cases, it has been held that a domain name which contains an obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (for instance, Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971, ; and E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043, ). Accordingly, the Panel concludes that Domain Name incorporating the word “brclays” is confusingly similar to the word “barclays”, which is commonly included as the core part in the trademarks owned by the Complainant. Mere addition of common or generic terms and a non-distinctive word “bk” is, in general, insufficient to make a Domain Name distinctive such that it is not confusingly similar to the complainant's registered trademark.
The Panel concludes that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
There is no evidence which shows that the Complainant has authorized the Respondent to register or use any domain name incorporating the words confusingly similar to the Complainant’s trademark, BARCLAYS.
The Panel is satisfied on the current record that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name, which the Respondent has not rebutted.
The Respondent has not demonstrated any of the circumstances set forth in paragraph 4(c) of the Policy.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, both bad faith registration and bad faith use must be established.
With regard to bad faith registration of the Domain Name, the fact that the Complainant has used the word “barclays” as the core part of the registered trade marks in UK for many years has been proven by the documents submitted by the Complainant. However, the registered address of the Respondent is in the United States and the language used in the website of the Respondent is Japanese. Therefore, it is necessary for the Complainant to prove that the trade mark BARCLAYS was known or likely known to the Respondent (for example by the reputation of the trade mark in the United States and Japan). On this point, the Panel considers it reasonable to rely on common knowledge to consider whether the BARCLAYS trademark is well known in both countries. According to the Panel’s sense, the BARCLAYS trade mark has been shown to be famous enough to assume that the Respondent had prior knowledge of the trade mark BARCLAYS used by the Complainant as its identity. This is further supported by the content of the website at the Domain Name, which displays the Complainant’s logo. Therefore, the Panel finds that registration in bad faith in this case can be inferred from these circumstances, also noting that the Respondent has not submitted any rebuttal against the Complainant's assertions. The Panel concludes that the Respondent registered the disputed domain name in bad faith.
With regard to the use in bad faith, on the other hand, it is pointed out by the Complainant, and the Respondent submits no rebuttal thereto, that the Domain Name is being used to redirect Internet traffic intended for the Complainant away from the Complainant to competitor products and services (which may, generate income for a third party). The Panel therefore finds that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel concludes that the Domain Name was 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 Domain Name, be transferred to the Complainant.
Masato Dogauchi
Sole Panelist
Dated: January 8, 2012
Full & Egal Universal Law Academy