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 Stanislaw Krzenszczynski of Warsaw, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2012. On May 18, 2012, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On May 18, 2012, PSI-USA, Inc. dba Domain Robot 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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on June 29, 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 major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management with an extensive international presence in Europe, America, Africa and Asia.
The Complainant has traded as Barclays PLC since 1985 after having respectively traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.
The Complainant is the right holder of numerous United Kingdom (“U.K.”) registered and Community registered trademarks, be it verbal or graphic, consisting in whole or in part of the names BARCLAYS or BARCLAYCARD in a range of classes including related to financial services.
It in particular owns the following UK registered verbal trademarks:
- BARCLAYCARD (No. 1286580), registered on October 1, 1986 under class 36 of the Nice Classification;
- BARCLAYCARD (No. 2004486), registered on December 8, 1994 under class 16 of the Nice Classification;
- BARCLAYCARD (No. 2010505), registered on February 9, 1995 under class 9 of the Nice Classification.
It also owns the following Community registered verbal trademarks:
- BARCLAYCARD (No. 55277), registered on January 26, 1999 under classes 9, 16, 36 and 42 of the Nice Classification;
- BARCLAYCARD (No. 6151781), registered on September 17, 2008 under classes 14, 21, 24, 25, 28, 34, 41 and 43.
The Complainant also owns a portfolio of domain names including which was registered prior to August 1996 and . The Complainant is also the registrant of the domain names and which were registered on August 6, 1996 and prior to August 1996 respectively.
The Respondent registered the disputed domain name on December 2, 2011.
On January 26, 2012, the Complainant sent to the Respondent a cease and desist letter, drawing the Respondent’s attention upon its trademarks and requesting the transfer of the disputed domain name in its favor. Absent any response, a reminder was sent to the Respondent on February 16, 2012. The Complainant further transmitted via email only, using the email address provided on WhoIs on March 15, 2012, a final reminder to the Respondent. The Respondent did never respond. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the name BARCLAYS and identical to the name BARCLAYCARD in which it has common law rights as well as registered trademarks.
The Complainant then argues that the Respondent has no rights or legitimate interests in the disputed domain name. Given the worldwide fame reputation and notoriety of the name BARCLAYS and/or BARCLAYCARD, the Complainant alleges that no one would choose the disputed domain name but with the intent 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. According to the Complainant, this is confirmed by the fact that the disputed domain name is being used as a holding page containing a number of links including financing related sponsored links which relate to competitor products and services to those offered by the Complainant, so as to generate revenues directly from the initial interest arising from the use of the name BARCLAY and BARCLAYCARD in the domain name. Such a use cannot be considered a legitimate noncommercial or fair use of the disputed domain name. In addition to these circumstances, the Complainant adds that the Respondent is not known by the disputed domain name and has never asked for, nor been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trademarks.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Considering the reputation of the Complainant’s trademarks, the Respondent must have been aware that in registering the disputed domain name , it was infringing upon the Complainant’s rights and that, by doing so, it was also preventing the Complainant from registering a domain name corresponding to its trademarks, respectively was intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with its trademarks. The Complainant is of the opinion that the Respondent will never be capable of using the disputed domain name for a legitimate purpose considering the notoriety of its trademarks, as users will always assume that there is an association between the Respondent and the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several registered verbal trademarks consisting of the words BARCLAYS and/or BARCLAYCARD.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for the purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
Such is the case here. While one may argue that the disputed domain name is not identical to the Complainant’s verbal trademark BARCLAYCARD, it goes without saying that the mere absence of the letter “s” is irrelevant and will hardly be noticed by users, so that the disputed domain name is undoubtedly confusingly similar to the Complainant’s trademarks.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case the Complainant is the owner of numerous BARCLAYS, respectively BARCLAYCARD trademarks. The Complainant has no business or other relationships with the Respondent.
Panels agree that use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder (paragraph 2.6 of the WIPO Overview 2.0). Such is the case here.
Considering the worldwide reputation enjoyed by the Complainant’s trademarks, the Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Complainant is the owner of numerous BARCLAYS, respectively BARCLAYCARD trademarks, which enjoy a worldwide reputation and amount to well-known trademarks.
Considering the worldwide reputation of the Complainant’s trademarks, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name in good faith, without having been aware of the Complainant’s trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks, and that the disputed domain name has been registered, and is being used to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondent’s website is linked to the Complainant within the meaning of paragraph 4(b)(iv).
As agreed upon by several panels (see for instance, Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753), by creating a PPC parking website that features PPC links to the Complainants’ competitors, the Respondent uses the domain name in bad faith. The purpose of this PPC parking website clearly is to attract Internet users to the site, for profit, based on confusing the Respondent’s domain name and/or website with the Complainants and/or their website. Once on the Respondent’s page, some users likely click on advertisers’ links, which presumably and as alleged by the Complainant would confer a commercial benefit to the Respondent. The fact that the Respondent was willing to pay money to register or acquire this disputed domain name, to continue to maintain it, and to host the website, all are evidence that the Respondent expected to profit from the disputed domain name in this way. The Panel therefore infers that the Respondent profits from the goodwill associated with the BARCLAYS, respectively BARCLAYCARD trademarks by collecting click-through revenues and that accordingly the Respondent uses the disputed domain name in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name was registered and is being used in bad faith under the paragraph 4(a)(iii) 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.
Philippe Gilliéron
Sole Panelist
Dated: July 2, 2012
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