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 PrivacyP / Ma Ying Jo of Nobby Beach, Queensland, Australia, and Shanghai, China, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. (referred to below as “domain name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to RegisterM Corp. a request for registrar verification in connection with the domain name. On June 21, 2012, RegisterM Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 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 June 25, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on June 27, 2012.
The Center verified that the Complaint together with the amendments to 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 June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2012.
The Center appointed Christian Schalk as the sole panelist in this matter on July 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 a global financial service provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services. It operates under the name “Barclay” since 1896, employs approximately 144.000 people and has an international presence in more than 50 countries in Europe, Asia, Africa and in the Americas where the Complainant moves, lends, invests and protects money for more than 48 million customers and clients.
In addition, the Complainant sponsors the Barclays Premier League football in the UK. In this context, the Complainant explains that its BARCLAYS trademark is synonymous with football.
The Complainant owns among others the following trademark registrations:
- UK Trademark registration No. 1314306 for the word mark BARCLAYS, covering goods and services in Int. Class 36, registration date: June 24, 1987;
- UK Trademark registration No. 1286579 for the word mark BARCLAY / BARCLAYS, covering goods and services in Int. Class 35, registration date: October 1,1987;
- UK Trademark registration No. 1336098 for the word mark BARCLAYSBANK, covering goods and services in Int. Class 36, registration date: February 19, 1988;
- UK Trademark registration No. 1286580 for the word mark BARCLAYCARD, covering goods and services in Int. Class 36, registration date: October 1, 1986;
- UK Trademark registration No. 2374742 for the word and device mark BARCLAYS PREMIER LEAGUE, covering goods and services in seven Int. Classes, registration date: August 10, 2007;
- UK Trademark registration No. 2446264 for the word and device mark BARCLAYS PREMIER LEAGUE, covering goods and services in 21 Int. Classes, registration date: February 27, 2009;
- UK Trademark registration No. 2446268 for the word and device mark BARCLAYS PREMIER LEAGUE, covering goods and services in 21 Classes, registration date: March 6, 2009;
- European Community Trademark No. 03805793 for the word and device mark BARCLAYS PREMIER LEAGUE, covering goods and services in 13 Int. Classes, registration date: September 1, 2005.
The Complainant owns among others also the following domain names:
- , registration date: November 23, 1993;
- , registration date prior to August 1996;
- , registration date: February 14, 2011;
- , registration date: February 14, 2011;
- , registration date: September 27, 2006;
- , registration date: May 13, 1997.
The Respondent registered the domain name on November 29, 2011.
The domain name resolves to a website where it is mentioned in the headline of this website. Under the domain name it is written: “what you need when you need it”. In its central section, this website provides a list of links, among others to:
“regulatory software
capital market compliance and market abuse solution”
and
“Real Spread Betting
Let us show you how to become a spread better. Apply now!”.
On the right side of this website, there are links to banking related services as well as to the “Barclays Premier League” and “English Premier League”.
On January 26, 2012, the Complainant sent a cease and desist letter to the Respondent. Since the Respondent did not reply to this letter, the Complainant sent reminders on February 16, 2012 and on February 5, 2012. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant argues that it is the registered proprietor of a variety of UK registered- and European Community registered trademarks in the name of BARCLAYS, BARCLAYS PREMIER LEAGUE and BRACLAYS PREMIER and that through its use of the name BARCLAY over the last 114 years, the Complainant has acquired goodwill and a significant reputation in the area in which it is specialized. The Complainant draws therefore, the conclusion that the name BARCLAY and trademark derivatives of the name such as BARCLAYS PREMIER and BARCLAYS PREMIER LEAGUE have become distinctive identifiers associated with the Complainant and its services. For all this, the Complainant believes that the domain name contains a word, which is identical and confusingly similar to the name BARCLAYS and BARCLAYS PREMIER LEAGUE in which the Complainant has common law rights and for which the Complainant has registered trademarks. In this context, the Complainant explains that no trader would choose a domain like the 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.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the domain name.
In this context, the Complainant contends that the Respondent has never received any permission by the Complainant to register or use any of the domain name incorporating the Complainant’s trademark and that the Respondent is also not known by the domain name. The Complainant argues further that the 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 in addition to a number of football related sponsored links. Therefore, the Complainant believes that the domain name is being used to redirect Internet traffic intended for the Complainant away from it to competitor products and services with the intention to create income for the Respondent. Thus, the Respondent was aware of the fact that such a domain name is likely to attract interest from Internet users who are searching for the Complainant. In this context, the Complainant explains that the content on the Respondent’s website to which the domain name is directed to, is tailored to match the Complainant’s core and goods and services. When Internet users view the content displayed on the Respondent’s website and click on one of the sponsored links, the Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAYS, BARCLAYS and BARCLAYS PREMIER LEAGUE in the domain name.
Furthermore, the Complainant alleges that the domain name was registered and is being used in bad faith. In this context, the Complainant contends that given the widespread use, reputation and notoriety of the famous BARCLAYS, BARCLAYS PREMIER and/or BARCLAYS PREMIER LEAGUE marks, the Respondent must have been aware that in registering the domain name it was misappropriating the valuable intellectual property of the Complainant as owner of these marks.
The Complaint asserts also that the Respondent did neither reply to its cease and desist letter of January 26, 2012 nor to the reminders sent on February 16, 2012 and April 5, 2012 and that the content of the website to which the domain name was directed to remained unchanged.
Furthermore, the Complainant argues that the Respondent’s registration of the domain name has also 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 Complainant believes also that 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 trademark in breach of paragraph 4(b)(iv) of the Policy and that it will never be capable of using the domain name for a legitimate purpose as the notoriety of the trademarks BARCLAYS, BARCLAYS PREMIER and/or BARCLAYS PREMIER LEAGUE is such, that members of the public will always assume that there is an association between the Respondents and the Complainant, and/or between the Respondent and the a.m. trademarks. The Complainant concludes for all this that it can be reasonably anticipated that the domain name will divert potential costumers from the Complainant’s business due to the presence of links to competitor websites on the domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the terms BARCLAYS and BARCLAYS PREMIER LEAGUE. Therefore, the domain name is not identical.
However, the Panel finds that the domain name is confusingly similar to the Complainant’s trademarks. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.)
In this case, the term “table” is obviously a generic term in English language and widely used to show the current ranking of the football teams forming part of the respective football league throughout the season. Given the fact that the Complainant and its products and services as well as its sponsoring activities in the field of football are well known even to the Panel, it is likely that the domain name could be understood by Internet users finding on search engines or elsewhere as providing a link to a website belonging to the Complainant or at least being sponsored by the Complainant and thereby increases the likelihood of confusion (see also Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956; Koninklijke Philips Electronics N.V. v. Anpol,WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,WIPO Case No. D2001-0231).
The “com” suffix in the domain name does not affect the determination that the domain name is confusingly similar with the terms BARCLAYS and BARCLAYS PREMIER LEAGUE in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds also that the Respondent does not have rights or legitimate interests in the domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is commonly known by the domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554) by directing the domain name to its own website where it provides a number of finance related sponsored links, which relate to competitor products and services to those offered by the Complainant in addition to a number of football related sponsored links. The Panel believes that the only reason why the Respondent registered and used the domain name was to redirect Internet traffic intended for the Complainant away from it to the Respondent’s website with the intention to create income for the Respondent. In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.
The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the domain name, and finds that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:
(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) the Respondent has registered the 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
(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the 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 the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the fact that the domain name is directed to a website which provides links to products and services of competitors of the Complainant and that the Barclays Premier League which is sponsored by the Complainant as well as the Complainant as such (“Barclays Bank”) is mentioned on this website, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the domain name (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the domain name in bad faith.
The Panel finds further that the Respondent is also using the domain name in bad faith.
The Respondent registered the domain name, which differs from the Complainant’s trademark BARCLAYS PREMIER LEAGUE only by adding the generic term “table”. Given the fact that this term is widely used in communication on football and on football leagues, i.e. a field where the Complainant is apparently an important sponsor, it is very likely that Internet users believe that they get directed to a website of the Complainant. In this context, it has to be mentioned that Internet users, who search for products and/or services of a specific company or for the Complainant’s sponsoring activities in the field of football, do often type freestyle addresses that combine trademarks and descriptive words (for instance, “Barclays Premier League” and “table”) hoping to narrow down their search results. Subject of the links provided on the website to which the domain name resolves, are services which are offered also by the Complainant as well as the Complainant’s sponsoring activities in the field of football. Furthermore, the likelihood for confusion is extremely high because the Complainant uses several of its BARCLAY trademarks including BARCLAYS PREMIER LEAGUE as a domain name under the gTLD “.com” (e.g. , and ). Especially the domain name is nearly identical to the domain name . All this could lead Internet users to believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant and that everything they do will be at the end to the benefit of the Complainant and not of the Respondent.
The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Furthermore, the Respondent’s behaviour may also enable others, especially competitors of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the infringement of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also a third party to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In the Panel’s opinion, another indication for bad faith use in the present circumstances is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letter but continued its behaviour even after the Complainant had filed its Complaint with the Center.
Moreover, the Respondent has provided inaccurate contact details when it registered the domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WHOIS information for the domain name and those provided by the Registrar when it tried to contact the Respondent. However, the e-mail was returned because it could not be delivered and also the courier service provider could not reach the Respondent. Therefore, the Panel notes that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.
Given all facts and circumstances of this case, the Panel finds therefore, that the domain name was registered and is being used 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 domain name be transferred to the Complainant.
Christian Schalk
Sole Panelist
Dated: August 8, 2012
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