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 Private Registration, WhoisGuardS of Nanjing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Vautron Rechenzentrum AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 19, 2012, the Center transmitted by email to Vautron Rechenzentrum AG a request for registrar verification in connection with the disputed domain name. On April 22, 2012, Vautron Rechenzentrum AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 30, 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 an international banking and finance company which has done business under its Barclay name since 1896 (variously as Barclay’s PLC, Barclay’s Bank Limited and Barclay & Company Limited). According to the uncontested information provided in the Complaint, the Complainant is active in over 50 countries worldwide, maintains a staff of roughly 144,000 employees, and manages the funds of over 48 million clients around the globe.
The Complainant is further the registered holder of numerous trademarks for its Barclay brand, including registrations for BARCLAY, BARCLAYS, and a variety of names and phrases containing the BARCLAY element. One of these additional marks is the Complainant’s BARCLAY BANK trademark (UK Registration No. 1336098), which was registered in February of 1988.
The disputed domain name was registered on October 4, 2011, and is being used in connection with a pay-per-click landing page. Links included on the Respondent’s website relate primarily to banking and finance topics, and include the products and services of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to its BARCLAY mark because the domain name contains the entirety of its registered mark in addition to the dictionary term “bank”.
The Complainant avers that the Respondent has no rights or legitimate interests in the domain name as it has not been licensed to use the Complainant’s marks in any way. The website is being monetized by the Respondent by capitalizing on misdirected Internet traffic intended for the Complainant’s website. The Respondent’s use of the disputed domain name is not a bona fide offering, nor a noncommercial or fair use. Further, the Complainant alleges that the Respondent is not known by a name corresponding to the disputed domain name.
Concerning the third requirement of the Policy, the Complainant notes its longstanding use of its BARCLAY marks and indicates that the Respondent must have been aware of the Complainant at the time it registered the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain pursuant to paragraph 4(b)(iv) of the Policy, and additionally to prevent the Complainant from registering the domain name pursuant to paragraph 4(b)(ii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said trademark.
By virtue of its numerous trademark registrations for BARCLAY and related marks, including the BARCLAY BANK mark, as well as its use in commerce of the Barclay name for over 100 years, the Complainant has clearly demonstrated its rights for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin,WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The textual string of the disputed domain name is thus “barclaybankplc”, which may either be viewed as an incorporation of the Complainant’s BARCLAY mark in conjunction with the dictionary word “bank” and the and the business identifier “PLC”, or alternatively as the inclusion of the Complainant’s BARCLAY BANK mark in connection with “PLC”. Either way, the Complainant’s registered marks are fully included within the string of the domain name, in connection with a generic word (or words) descriptive of the Complainant’s activities.
The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. Some prior UDRP panels have additionally held that the inclusion of dictionary terms descriptive of or related to the Complainant’s business endeavors may serve to heighten Internet user confusion. See Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCLAY and BARCLAY BANK marks, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its BARCLAY marks in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the domain name or a name corresponding to the domain name. Additionally, the website is used to host a pay-per-click landing page, from which the Respondent presumably generates revenue, that contains links to, inter alia, financial institutions and banking opportunities. Thus, the Respondent clearly is not making any noncommercial or fair use of the domain name. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Complainant has provided evidence that its BARCLAY marks are widely known in connection with its banking, financial, and investment services. The BARCLAY mark has been in use since 1896 and the Complainant holds numerous registrations for trademarks comprising or containing the Barclay name which pre-date the Respondent’s registration of the disputed domain name. The disputed domain name contains the entirety of the Complainant’s BARCLAY and BARCLAY BANK trademarks, and the Respondent has used its domain name in connection with pay-per-click links connected to the same industry in which the Complainant operates. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its marks when it selected the disputed domain name.
By registering the disputed domain name and using it to host a pay-per-click landing page to garner referral revenue, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987 and Luigi Lavazza S.p.A. v. Satoshi Shimoshita,WIPO Case No. D2011-1299.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Dated: June 13, 2012
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