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 Respondent is Privacy P / Private New of Nobby Beach, Queensland, Australia and Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland respectively. 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 February 14, 2012. On the same date, 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 February 15, 2012, 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 February 17, 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 20, 2012. On the same date, the Center requested the Complainant to confirm the mutual jurisdiction requirement, and the Complainant did so on February 22, 2012.
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 February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2012.
The Center appointed David Levin Q.C. as the sole panelist in this matter on April 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 company well-known worldwide, having traded as Barclay & Company Ltd since 1896, then under the name of Barclays Bank Ltd, and finally as Barclays Bank PLC (since 1985). It operates in over 50 countries and employs over 140,000 people. Barclays Bank PLC is the registered proprietor of a number of United Kingdom and European Community registered trademarks consisting of or incorporating the word BARCLAYS in a range of classes including financial services. It has produced evidence of many such registrations. The Complainant maintains that it has also acquired goodwill and a significant reputation in the area of financial services and products over the period of more than a century during which it has traded. The Complainant also has a presence on the Internet, having registered the domain name in November 1993 and prior to August 1996.
The Respondent registered the disputed domain name on June 22, 2011. 5. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is identical or confusingly similar to its name “Barclays” in which it has common law rights and registered trademarks in many forms. It submits that the addition of the word “offshore” as a suffix to its world famous trademark does nothing to remove confusion. Indeed, given that the Complainant maintains a presence around the globe and is a company which offers services of a financial nature on the Internet, the addition of the said word merely adds to the confusion and suggests that the disputed domain name is associated with or registered to the Complainant.
The Complainant submits that the disputed domain name resolves to a number of finance related sponsored links, competitor products and services to those offered by the Complainant. Given the reputation of the Complainant, it is not likely that the Respondent registered the disputed domain name in ignorance of that reputation and the association of the name BARCLAYS with financial goods and services. The inference which the Panel is invited to draw is that users of the Internet who are seeking the Complainant’s goods or services are being diverted for financial gain to the Respondent to competitor sites.
The Complainant maintains that the Respondent is not and never has been known by the name “Barclays”. It has no legitimate entitlement to the use of the name or trademark. It has never sought permission to use them.
The Complainant’s solicitors wrote to the Respondent in October 2011 at its registered address advising it that the use of the name BARCLAYS in its disputed domain name was not permitted and seeking the transfer of the disputed domain name to the Complainant. In the absence of any response two follow up letters were sent over the next two months, to like effect.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief:
(i) the disputed domain name is identical or confusingly similar to trademarks in which the complainant has rights;
(ii) the respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the respondent registered and uses the disputed domain name in bad faith.
The Complainant maintains that on the evidence produced it has established each of the three elements required. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent has not disputed any of the allegations made against it by the Complainant. Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. There are no exceptional circumstances here disclosed. A. Identical or Confusingly Similar
The dominant part of the disputed domain name comprises the word “barclays”, which is identical to the registered trademark BARCLAYS, a trademark registered by the Complainant in and as part of numerous trademark registrations and domain names throughout the world. The use of the Complainant’s world renowned trademark BARCLAYS as the initial element of the disputed domain name makes the disputed domain name confusingly similar to the Complainant’s trade and common law marks.
Moreover, given its reputation, the Panel is satisfied that the impression conveyed by the Respondent’s use of the Complainant’s trademark is that the website resolving from the disputed domain name is in some manner authorised by or connected with the Complainant. In the Panel’s view, this is a completely false conclusion.
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Respondent has not sought to establish that it was using the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent has no rights or legitimate interests to use the trademark BARCLAYS in or in connection with its business or domain name. The Panel concludes that in circumstances where the Complainant’s trademark is so well-known throughout the world, it is very likely that any use of it by the Respondent cannot be a bona fide use.
The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the policy offers guidance as to when bad faith can be found.
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The use of the Complainant’s trademark in the disputed domain name, creating the impression that the Complainant is associated with, a sponsor of or endorses the Respondent’s website, is evidence of bad faith registration and use in violation of paragraph 4(b)(iv).
The Panel accepts the evidence that on entering the website using the disputed domain name there were sponsored links displayed of products and services marketed in competiton to those offered by the Complainant. The inference which the Panel draws, in the absence of any response from the Respondent, is that the Respondent derives or has established the website with the intention to derive income to itself once a visitor clicks on activated links. This is an example of bad faith registration and use. Given the reputation of the BARCLAYS trademark and the unlikelihood of the Respondent selecting the disputed domain name for registration by chance, the Panel infers that the registration of the disputed domain name intended to draw income from the improper use of the connection to the Complainant was registration in bad faith.
The Complainant has established that it attempted to make contact with the Respondent over three months to encourage it to voluntarily give up the registration of the disputed domain name in consideration of the Complainant not commencing legal proceedings against it. No response was ever received.
In the circumstances the Panel is reinforced in its conclusion that the registration of the disputed domain name was undertaken in bad faith and the continued use of the disputed domain name is also 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 disputed domain name be transferred to the Complainant.
David Levin Q.C.
Sole Panelist
Dated: April 9, 2012
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