The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain & Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Miami Investment Brokers Inc of Miami, Florida, United States of America. 2. The Domain Name & Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (“the Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Name. On June 15, 2012, GoD, LLC 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 1(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2012, by email.
Enquiries by the Panel, made of the Center, also established that the Respondent has not communicated with the Center at all, despite being invited to do so. The Respondent also refused to accept delivery of the Written Notice, which delivery was tendered by courier.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on July 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The following facts and circumstances are to be found in the Complaint and its Annexes and, in the absence of challenge, can be accepted as 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 services with an extensive international presence in Europe, the Americas, Africa and Asia.
The Complainant has traded as Barclays PLC since 1985. Prior to this the Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. The Complainant currently operates in over 50 countries and employs approximately 144,000 people. The Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide.
The Complainant has received several awards including in 2009 the Lender of the Year during the Bankhall Annual Conference in London, the Best Leadership Team in Global Private Banking accolade at the Global Private Banking Awards in Geneva, the Best Credit Card Provider (Standard Rate) at the Moneyfacts Awards 2009, Best Local Bank in the UK at the Euromoney Private Banking Awards, and in 2008 the Complainant was awarded the Business Superbrands status in recognition of quality, reliability and distinction by the Business Superbrands Council and individual business professionals.
The Complainant is the registered proprietor of a variety of United Kingdom (UK) registered and Community registered trade marks in the name “Barclays” in a range of classes which include financial services.
In addition to its registered trade marks, through its use of the name “Barclays” over the last 114 years the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. As such, the name “Barclays” has become a distinctive identifier associated with the Complainant and the services it provides.
The goodwill associated with the name “Barclays” is the property of the Complainant and cannot pass to any third party without a formal assignation. No such assignation in favor of the Respondent has taken place.
The Complainant is the registrant of a portfolio of domains including which was registered prior to 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.
The Respondent registered the Domain Name on November 1, 2011. 5. Parties' Contentions A. Complainant
The Complainant’s Complaint is as follows:
Given the worldwide fame, reputation and notoriety of the name “Barclays”, no trader would choose 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 inclusion of the words “service center” in the Domain Name fails to diminish the significance of the use of the mark BARCLAYS in the Domain Name. The words “service” and “center” are generic. “Barclays” is the key identifying term in this Domain Name and therefore the dominant or principal component of the Domain Name.
The Domain Name is being used for a holding page displaying a number of finance related sponsored links which relate to competitor products and services other than those offered by the Complainant and is being used to redirect Internet traffic intended for the Complainant away from the Complainant to competitor products and services. Given the use of the Domain Name, the Respondent is aware of the Complainant’s rights in the BARCLAYS mark and therefore the Respondent must have registered the Domain Name knowing that it would attract interest from Internet users who are searching for the Complainant.
The Respondent has never asked for, and has never been given, any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark.
Despite letters by the Complainant’s representative, to the Respondent on February 14, March 15 and April 10, 2012 in relation to the Domain Name and advising the Respondent of the Complainant’s registered trade marks for BARCLAYS and seeking transfer of the Domain Name to the Complainant, no response was received to any of these letters.
Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, the Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade mark.
The Respondent’s registration of the Domain Name has also prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks, contrary to paragraph 4(b)(ii) of the Policy. B. Respondent
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules, and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint. 6. Discussion & Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii). B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA,WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote on several occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure entirely to respond to any such correspondence.
From this the Panel considers that it follows that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000, Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994; Standard Innovation Corporation, supra; VKR Holdings A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, supra; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holding A/S, supra; Groupe Auchan v. Anirban Mitra,WIPO Case No. D2012-0412). C. Domain Name is Identical or Confusingly Similar
Not only has the Complainant put up an extensive list of its marks registered in the United Kingdom, which is to be found in the schedule, Annex 5 to the Complaint, but it is also clearly apparently therefrom that, with the exception of one mark registered in 2012, all other marks were registered prior to the registration of the Domain Name by the Respondent. In addition, as appears from the factual background, the Complainant has set out details of the extent to which it carries on business in over 50 countries, employs approximately 144,000 people, and has more than 48 million customers and clients worldwide, who deal with it as a bank. It is, as described above, a major global financial services provider of the many and extensive services referred to.
On that basis and even though it does not expressly so contend, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement on Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trade mark to seek protection not only in respect of products which might be marketed under an offending trade mark in the same class, but outside that class as well (V&S Vin & Sprit v. Young Nah, WIPO Case No. D2004-0961; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412). In the present matter the Complainant’s trade marks are in fact, in many instances, registered for several different classes.
The fact that the word mark has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
Moreover the addition of the words “service center” to the word “barclays” in the Domain Name does not distinguish it from the Complainant’s BARCLAYS trade marks (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans),WIPO Case No. D2002-0367). If anything, the dominant portion of the Domain Name is “barclays”, being the first past of the Domain Name, and of course being the entire word mark of many of the registered and pending trade marks of the Complainant. This also reinforces the similarity and the fact of confusion (Intuit Inc. v. Nett Corp., WIPO Case No. D2005-1206; Bid Industrial Holdings v. Craig Smith, WIPO Case No. D2009-1627).
Furthermore, two of the marks referred to in the schedule of trade marks not only have the name “Barclays” as part of the trade mark, but also have the word “services”. As pointed out by the Complainant, its two domain names, both registered well before the Domain Name, are used to promote its financial services.
The Panel is satisfied that the Complainant has proved the first element. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trade mark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; University City Studios, Inc., supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the mark in question and that the Respondent has no assignment (being the manner adopted by the Complainant to permit lawful use). Nor, as is said by the Complainant, has the Respondent been given any permission to register or use any domain name incorporating the trade mark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Name and that any unauthorized use for commercial purposes would violate the exclusive trade mark rights enjoyed by the Complainant. (Caesar's World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems,WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc., supra). Moreover, the Respondent, by tailoring its website to match the Complainant’s core goods and services, is thereby seeking to suggest that there is a connection or association between the Respondent and the Complainant where there is not (Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
Whilst bad faith can exist where a domain name contains in its entirety a complainant’s trade mark, the Panel does not see that this principle cannot also apply where a domain name contains the dominant feature of the trade mark of the complainant and where the whole trade mark has been so incorporated.
Moreover, with particular regard to paragraph 4(b)(iv) of the Policy quoted above, the Respondent has tailored its website at the Domain Name to suggest that it either has a relationship with the Complainant or does so with the approval or endorsement of it. (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049).
The implication arising from the website, in the mind of a would-be customer, is therefore clearly that the website is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media24 Limited v. Llewellyn Du Randt,WIPO Case No. D2009-0699; San Lameer, supra).
Moreover, by use of the Complainant’s trade mark as incorporated in the Domain Name, the Respondent is trading on the value established by the Complainant in its marks, to attract Internet users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others, if these would-be customers are routed elsewhere. Such a practice would also constitute bad faith. (Yahoo! Inc. and GeoCities v. DataArt Corp., Data Art Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is confusingly similar to the Complainant’s trade mark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Dated: August 6, 2012
Full & Egal Universal Law Academy