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 UFXBank of Limassol, United Kingdom / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, LLC. 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 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 2(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 13, 2012.
The Center appointed James McNeish Innes 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 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 services with an extensive international presence in Europe, the Americas, Africa and Asia. It has traded as Barclays PLC since 1985. Prior to this it traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. It currently operates in over 50 countries and employs approximately 144,000 people. It moves, lends, invests and protects money for more than 48 million customers and clients worldwide. It is the registered proprietor of a variety of United Kingdom registered and Community registered trade marks in the name BARCLAYS in a range of classes including in relation to financial services. The Complainant's registered trade marks are confirmed by the record. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following
(a) 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 specialises. As such, the name “Barclays” has become a distinctive identifier associated with the Complainant and the services it provides.
(b) 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 favour of the Respondent has taken place.
(c) The Complainant is the registrant of a portfolio of domain names 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 banking and financial services.
(d) The Domain Name contains a word which is identical and therefore confusingly similar to the name “Barclays” in which the Complainant has common law rights and for which the Complainant has registered trade marks.
(e) 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.
(f) The word "Signal" is descriptive and generic. The inclusion of this word does not nullify concerns that the Domain Name is identical or confusingly similar to the Complainant's registered trade mark BARCLAYS. The trade mark BARCLAYS in the Domain Name is the dominant or principal component of the Domain Name and as such the word "Signal" is irrelevant.
(g) The Domain Name resolves to the website of a company called Barclays Signals which appears to provide an advisory service for online trading. Barclays Signals essentially sells information to individuals who wish to engage in financial market trading. The Complainant considers it is highly likely that individuals will sign up and pay for the service operated by Barclays Signals in the mistaken belief that Barclays Signals is in some way associated with or authorised by the Complainant. Indeed in the feedback provided by existing customers "Barclays Signals" appears to be shortened to "Barclays". The use of Barclays in this context amounts to a clear case of trade mark infringement and passing off. It is clear that such conduct is in bad faith. It offers users the option to receive tailored alerts on market trading. A similar blue colour is used on the website to that of the Complainant's own website and registered trade marks. The word “Barclays” appears in a similar font to the font used by the Complainant. It is clear given the use of the Domain Name that the Respondent is aware of the Complainant's rights in the BARCLAYS trade mark. The Respondent registered the Domain Name knowing that it is likely to attract interest from Internet users who are searching for the Complainant.
(h) The Respondents have 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.
(i) The Complainant's agent wrote to the First Respondent on November 24, 2011 in relation to the Domain Name and advising the First Respondent of the Complainant's registered trade marks in BARCLAYS and to ask for the Domain Name to be transferred to the Complainant. An email response was received from the Second Respondent on November 30, 2011 advising that they are in touch with their lawyers and indicating that they invested a lot of money into building their website and that a transfer of the Domain Name would only be made for payment. On February 16, 2012, the Complainant's agent wrote to the Second Respondent clarifying that the Complainant would not be paying for the Domain Name to be transferred to it. No response was received so a further letter was sent on March 14, 2012. Despite this correspondence, the content on the Domain Name remains unchanged.
(j) 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.
(k) 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.
(l) 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 trade marks in breach of paragraph 4(b)(iv) of the Policy.
(m) The Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYS trade mark.
(n) It is reasonably anticipated that Internet users will be confused between the Complainant's business and this website due to the visual similarity of the Barclays Signals company name, look and feel of its website and the offering of services relating to the core services provided by the Complainant.
(o) Given the Respondent's demands for payment for the transfer of the Domain Name, it is clear that the Respondent acquired the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant who is the owner of registered trade marks BARCLAY and BARCLAYS, for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name registration, contrary to paragraph 4b(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The Domain Name was registered on December 8, 2010. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint 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 a 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 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. A. Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to its mark for the following reasons:
(a) The Domain Name is confusingly similar to the dominant portion of the Complainant’s mark BARCLAYS.
(b) The only difference between the Complainant’s mark and the Domain Name is the addition of the suffix “signals”.
(c) The Domain Name adds a non-distinctive suffix and is confusingly similar to the Complainant’s trademark.
The Panel accepts the Complainant’s contentions. The Domain Name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), 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 trademark 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 trademark 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 web site or other online 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 web site or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert users to his website for commercial gain by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
James McNeish Innes
Sole Panelist
Date: August 3, 2012
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