The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Privacy P of Shanghai, China and Sergei Sergeiev of Minsk, Belarus. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 19, 2012, the Center transmitted by email to Gransy, s.r.o. d/b/a a request for registrar verification in connection with the disputed domain name. On January 24, 26, and 27, 2012 the Center transmitted by email reminders to Gransy, s.r.o. d/b/a for registrar verification in connection with the disputed domain name. On January 27, 2012, Gransy, s.r.o. d/b/a transmitted by email to the Center its verification response disclosing that the language of the Registration Agreement is Czech, and additionally 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 January 31, 2012, informing the Complainant that pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise. Additionally, the Center instructed the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Czech; or submit a request for English to be the language of the administrative proceedings. On February 1, 2012 the Complainant submitted a request for English to be the language of the administrative proceedings.
The Center sent an email communication to the Complainant on February 8, 2012 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 February 8, 2012.
The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed Ladislav Jakl as the sole panelist in this matter on March 13, 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.
On the question of the language of the administrative proceedings, the concerned Registrar confirmed that the language of registration agreement is Czech. The Complainant requests the Panel to decide that the language of the administrative proceedings in this case be English. The Respondent did not submit any comments regarding this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836); Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191; Pandora Jewelry, LLC v. Wang Feng,WIPO Case No. D2009-1533), decides that the language of the administrative proceedings will be English in accordance with paragraph 11(a) of the Rules. 4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts which the Panel finds established:
The Complainant is a major global financial services provider engaged in retail banking, credit cards, corporate banking, wealth management and investment management services with an extensive international presence in Europe, the Americas, Africa and Asia. The Complainant has traded as Barclays PLC since 1985. Prior to this the Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. The Complainant currently operates in over 50 countries and employs approximately 144,000 people. The Complainant moves, lends, invests and protects money for more than million customers and clients worldwide.
The Complainant owns many registered trademarks comprising the words “Barclay”, “Barclays” and “Wealth” in multiple countries, explicitly United Kingdom trademark BARCLAYS WEALTH (reg. No. 2436569, Class 36, filing date October 24, 2006, and European Union Community trademark BARCLAYS WEALTH (reg. No. 914300, Class 36, filing date November 15, 2006.
Moreover, the Complainant is the registrant of a portfolio of domain names, including , which was registered prior to August 1996, registered on November 23, 1993, and , which were both registered on January 13, 2006.
The disputed domain name was registered on September 25, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks BARCLAYS and BARCLAYS WEALTH, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant introduces evidence that the disputed domain name contains a word which is identical and therefore confusingly similar to the trademarks BARCLAY and BARCLAYS WEALTH in which the Complainant has common law rights and for which the Complainant has registered trademarks. Moreover the Complainant contends that given the worldwide fame reputation and notoriety of the trademarks BARCLAY and/or BARCLAYS WEALTH, 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.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the disputed 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. The Respondent registered the disputed domain name knowing that is likely to attract interest from Internet users who are searching for the Complainant. Moreover the Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, that the content found at the disputed domain name is pay per click sponsored links which relate to financial services and that such activity does not qualify as noncommercial or fair use. The Respondent has never asked for, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trademark.
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant sent to the Respondent letters on August 18, 2011, September 9, 2011 and October 11, 2011, asking for the disputed domain name to be transferred to the Complainant. No response was received to either of these letters. And 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 trademarks contrary to paragraph 4(b)(ii) of the Policy. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks in breach of paragraph 4(b)(iv) of the Policy. Moreover the Complainant argues that the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of BARCLAYS and/or BARCLAYS WEALTH 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 and/or BARCLAYS WEALTH trademarks. And therefore it is reasonably anticipated that the disputed domain name will divert potential customers from the Complainant’s business due to the presence of links to competitor websites in the content of the disputed domain name.
In accordance with paragraph 4(b)(i) of the UDRP the Complainant requests the Panel, appointed in this administrative proceeding, to issue a decision that the disputed domain name be transferred to the Complainant. 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, 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; and
(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 states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name incorporates the Complainant’s registered trademark BARCLAYS WEALTH. Mere omission of the letter “s” does not adequately distinguish the disputed domain name from the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F. Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED,WIPO Case No. D2008-1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. As well as the addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark BARCLAYS WEALTH and the disputed domain name.
For all the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments submitted by the Complainant, unchallenged by the Respondent, that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of these trademarks or any variations thereof. Therefore in the Panel’s view, the Respondent could not legitimately choose this combination or any variation thereof, unless it was seeking to create an association with the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant’s trademark.
Moreover the Panel finds that the disputed domain name is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is a consensus view that such behaviour cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc.,WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.
The disputed domain name was registered on September 25, 2009. The Complainant owns many trademarks comprising the words “Barclay”, “Barclays” and “Wealth” in multiple countries, explicitly United Kingdom trademark BARCLAYS WEALTH (reg. No. 2436569, Class 36, filing date October 24, 2006, and Community trademark BARCLAYS WEALTH (reg. No. 914300, Class 36, filing date November 15, 2006. The Panel finds that the Respondent has registered the disputed domain name in order to prevent the Complainant, the owner of the trademarks BARCLAYS WEALTH, from reflecting the trademark in a corresponding domain name, the Complainant’s trademark was well-known at the time the disputed domain name was registered.
There is no doubt to this Panel that the Respondent has also registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. This Panel finds that the Respondent is interrupting the Complainant’s business by directing potential customers to its competitors and by falsely making Internet users believe that there is an association between the Respondent and the Complainant. The disputed domain name used by the Respondent may cause Internet users to believe that the disputed domain name is affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant’s trademark to divert Internet users to an unrelated site the Respondent is attempting, for commercial gain, to attract Internet users and thus to disrupt the Complainant’s business. The Respondent’s registration and use of the disputed domain name are in bad faith because the Respondent intentionally attempts to attract Internet users who have an interest in purchasing or obtaining additional information about the Complainant’s goods and services, and then forwards them to other websites, which may result in financial benefit to the Respondent. Such conduct has been found to be indicative of bad faith in previous UDRP decisions such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above-cited reasons the Panel finds that the disputed domain was registered and used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Dated: March 26, 2012
Full & Egal Universal Law Academy