1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom (“UK”).
The First Respondent is Domains By Proxy, LLC of Arizona, United States of America and the Second Respondent is Stake Inc of Perak, Malaysia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Go France Domains, LLC.1 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to Go France Domains, LLC a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2012, Go France Domains, LLC transmitted by email to the Center its verification response confirming that the Second Respondent was listed as the registrant of the Disputed Domain Name and providing the contact details. The First Respondent had already previously advised the Complainant’s lawyers that the Second Respondent was the underlying registrant of the Disputed Domain Name and its name was then added to the Complaint. Although neither the Complainant nor the Center has addressed the privacy issue, in the Panel’s view the Second Respondent is now the sole proper Respondent in these proceedings, it being the sole registrant of the Disputed Domain Name. Nevertheless, against the possibility that the First Respondent has retained control of the handle for the Disputed Domain Name, and that its removal of the proxy shield has not been notified to the Second Respondent nor resulted in a complete transfer of control to the Second Respondent, the Panel has decided to permit the case to proceed in the names of both Respondents. For convenience, however, the Panel will henceforth use “Respondent” alone to refer to both Respondents jointly.
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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Philip N. Argy as the sole panelist in this matter on March 21, 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.
All other administrative requirements appear to have been satisfied. 4. Factual Background
The following salient facts, taken from the Complaint, remain uncontested:
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. It has been in business continually under the BARCLAYS brand since 1896 and now operates in over 50 countries.
The Complainant is the registered proprietor of numerous trademarks comprising the word BARCLAYS both alone and together with devices and other words. These numerous variants of the BARCLAYS mark are registered in many countries.
The Complainant is also the registrant of a portfolio of domain names including which was registered “before August 1996” and which was registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services throughout the world.
The Disputed Domain Name was created on February 6, 2011. 5. Parties’ Contentions A. Complainant
The Complainant seeks to prove that all three limbs of the Policy are satisfied, namely, that:
(1) The Disputed Domain Name is identical or confusingly similar to the BARCLAYS trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name was registered, and is being used, in bad faith. B. Respondent
Whilst there were some communications between the Complainant’s lawyers and the First Respondent, these were essentially directed to establishing the identity and contact details for the Second Respondent. Neither of the Respondents replied to the Complainant’s substantive contentions nor placed any other material before the Panel. 6. Discussion and Findings
The Complainant bears the onus of proving that each limb of the Policy is satisfied. Accordingly, despite there being no Response, the Panel is obliged to consider the Complainant’s evidence and arguments. A. Identical or Confusingly Similar
The Disputed Domain Name comprises the word BARCLAYS followed by the generic word “bank” followed by the country designator “UK” with the further addition of the “.com” generic Top Level Domain. As the Complainant is a bank based in the UK, the matter added to the BARCLAYS mark in the Disputed Domain Name self-evidently compounds the confusion rather than doing anything to distinguish it from the Complainant’s brand name. Curious though the Panel is as to why the Complainant provided no evidence of trademark registrations in Malaysia, the Panel is satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s UK and European Community BARCLAYS trademarks, and that finding is sufficient to make good the first limb of the Policy. B. No Rights or Legitimate Interests
The Panel cannot discern any basis on which the Respondent might hold rights or legitimate interests in a name that has been in use by the Complainant and its corporate predecessors for nearly 115 years. BARCLAYS is a household word in most countries in which it does business, including Malaysia where the Respondent is located. The Complainant has not granted any rights to the Respondent to use the Disputed Domain Name and the Respondent claims none. Nor does the Respondent contend that it has any legitimate interests in the Disputed Domain Name. The Complainant notes that “initially” the Disputed Domain Name resolved to a parking page at which click-through traffic was generated through the use of financial services links generated by GoDaddy. In the Panel’s view, that use does not amount to a legitimate interest in respect of the Disputed Domain Name. Subsequent to the issue of correspondence from the Complainant’s lawyers to the Respondent, the Disputed Domain Name was re-directed to the Complainant’s website where it remains re-directed. Absent any explanation from the Respondent as to why it might do that, the Panel agrees with the Complainant that in the circumstances the conduct is suspicious and certainly not capable of conferring a right or legitimate interest on the Respondent. It can hardly be said that the Complainant’s website is a site from which the Respondent is engaging in any legitimate trading activity. Accordingly, the Complainant has made good the second limb of the Policy. C. Registered and Used in Bad Faith
The Complainant’s lawyers wrote to the First Respondent on no less than four occasions and to the Second Respondent on no less than six occasions demanding cessation of use of the Disputed Domain Name, but all to no avail. In the Panel’s view, once a complainant has made out a prima facie case, as the Complainant has done in this matter, it behoves a respondent to file something by way of a credible response if it is to have much chance of displacing the bad faith interpretations that might otherwise be placed on its conduct. The use of a proxy service compounds the inference unless there are objectively good reasons for the use of a proxy service. In the Panel’s view the circumstances in which use of a proxy service does not support an inference of bad faith are confined to those where a substantive and plausible Response has been filed by the underlying registrant which, inter alia, explains its need for the use of a proxy service.
The registration by the Respondent of a domain name that contains the Complainant’s BARCLAYS trademark, together with words that describe the Complainant’s activity and location, makes it easy for the Panel to accept the Complainant’s contentions that the Respondent must have been aware of the Complainant and its reputation at the time it registered the Disputed Domain Name. Even more obvious is the fact that the Disputed Domain Name has since the first letter sent by the Complainant’s lawyers been pointed to the Complainant’s main website.
In what appears to be somewhat of a standard form Complaint, the Complainant specifically relies on paragraph 4(b)(iv) of the Policy and recites that ground by reference to an assertion that the Respondent is using the Complainant’s mark to attract Internet users to the Respondent’s site for commercial gain. Of course whilst that ground had legs initially, for so long as the Disputed Domain Name remains pointed to the Complainant’s site and the re-direction is virtually instantaneous, it is quite inapposite.
Nevertheless, in all the circumstances there was plainly no rationale for the Respondent’s registration of the Disputed Domain Name and the Panel can and does infer that it was registered and thereafter used in bad faith. The subsequent (and continuing) redirection raises a somewhat more intriguing question: can pointing the Disputed Domain Name at the Complainant’s own website be a bad faith use? It is undoubtedly suspicious and the Panel cannot conceive of what altruistic motives overcame the Respondent after its receipt of numerous letters from the Complainant’s lawyers. Absent any undertaking from the Respondent that the re-direction will remain in place permanently, and an assurance that personal information entered by a user is not being intercepted by the Respondent (being a scenario about which the Complainant claimed it had legitimate concerns), the Panel infers that it is a ploy to circumvent the Policy and that the Respondent is most likely to revert to its diversionary parking page after the Panel has ruled. The Panel is not prepared to see the objectives of the Policy thwarted by this implausible ruse, and is satisfied that the Respondent’s strategy is more likely a bad faith subterfuge.
Accordingly, the Panel agrees with the Complainant’s contention that the Disputed Domain Name was registered and is being used in bad faith, thus satisfying the third limb 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 Disputed Domain Name be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Dated: April 4, 2012
1 The Disputed Domain Name was registered with Go France Domains, LLC through its agent, GreatDomainR. In its verification response Go France, LLC confirmed that the Disputed Domain Name is registered with Wild West Domains, LLC. These two entities appear to be related. According to Internic’s WhoIs Search Results the registrar of record for the Disputed Domain Name is Go France Domains, LLC.
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