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 Respondents are Domains By Proxy LLC, of Arizona, United States of America, and Stakeinc, of Taman Seri Puteri, Skudai Johor, Malaysia. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 20, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that the second-named Respondent is the registrant, and providing the contact details for the Domain Name.
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 Respondents of the Complaint, and the proceedings commenced on August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 18, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on October 2, 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.
The Panel is satisfied that the Complaint has been properly notified to the Respondents, in accordance with paragraph 2 of the Rules. 4. Factual Background The Complainant
The Complainant is a major provider of banking and other financial services. It is based in the United Kingdom, and operates in a total of 50 countries.
It is the proprietor of a number of United Kingdom and European Community registrations of the mark BARCLAYS, in a range of classes relating to financial services. It is also the proprietor of the domain name , at which it has operated a website promoting its banking and other financial services since the mid-1990s.
The Complainant says that it has used the name BARCLAYS for the last 114 years, and that it has a significant reputation and goodwill in that mark in the commercial areas in which the Complainant specializes. It says that the BARCLAYS mark has acquired worldwide fame. The Respondents and the Domain Name
The Domain Name was created on October 7, 2011.
According to the Complainant, the Domain Name has resolved to a holding page displaying sponsored links to third party websites offering products which compete with the Complainant’s products.
In accordance with normal practice, the Panel has visited the website at the Domain Name. That occurred on October 11, 2012. The Domain Name then resolved to a parking page containing sponsored links to a number of third party websites, at least some of which appeared to offer financial services and to have no connection with the Complainant.
The Complainant says that the Respondents are not known by the Domain Name, and that it has never given the Respondents permission to register or use any domain name incorporating the Complainant’s mark. Pre-commencement Correspondence
The Complainant’s solicitors wrote to the first-named Respondent (which was then named as the registrant of the Domain Name) on February 15, 2012, advising of the Complainant’s rights in its BARCLAYS mark, and asking for the Domain Name to be transferred to the Complainant. The first-named Respondent replied on March 9, 2012, providing the contact details for the second-named respondent as registrant of the Domain Name.
The Complainant’s solicitors sent a cease and desist letter to the second-named Respondent on April 11, 2012. No response was received to that letter, or to follow-up letters sent to the second-named Respondent on May 8 and June 13, 2012.
Notwithstanding the disclosure of the second-named Respondent as the registrant of the Domain Name, the Whois particulars for the Domain Name continued to show the first-named Respondent as registrant. The Complainant accordingly named both parties as Respondents in this proceeding. 5. Parties’ Contentions A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s BARCLAYS mark. The inclusion of the generic expressions “bank”, “UK”, and “online” in the Domain Name does not avoid the confusion caused by the inclusion of the Complainant’s well-known mark in the Domain Name.
2. The Respondents have no rights or legitimate interests in respect of the Domain Name, which is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondents.
3. The Domain Name was registered and is being used in bad faith. Given the widespread use and reputation of the famous BARCLAYS mark, the Respondents must have been aware that in registering the Domain Name, they were misappropriating the valuable intellectual property of the owner of the BARCLAYS mark. The Respondents’ registration of the Domain Name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s mark (contrary to paragraph 4(b)(ii) of the Policy), and the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the website at the Domain Name, by creating a likelihood of confusion with the Complainant’s BARCLAYS mark (in breach of paragraph 4(b)(iv) of the Policy). The Respondents will never be able to use the Domain Name for a legitimate purpose, as the notoriety of BARCLAYS is such that the public will always assume that there is an association between the Respondents and the Complainant, and/or between the Respondents and the Complainant’s BARCLAYS trademark. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of a domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has sufficiently proved this part of the Complaint.
The Center’s document “WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition” (“WIPO Overview, 2.0”), describes at paragraph 1.2 the consensus view of WIPO panels on the approach to paragraph 4(a)(i) of the Policy, in the following terms:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
In this case, the Complainant is the registered proprietor of the United Kingdom-registered mark BARCLAYS, and that mark is included in its entirety (and is recognizable as the Complainant’s mark) within the Domain Name. The addition of the generic expressions “bank”, “uk”, and “online” in the Domain Name do nothing to dispel the likelihood of confusion arising out of the use of the Complainant’s BARCLAYS mark within the Domain Name – indeed, the addition of those expressions exacerbates the likelihood of confusion, because the word “bank” describes one of the Complainant’s principal commercial activities conducted under its BARCLAYS mark, and the Complainant is a UK-based corporation with a well-established online presence.
The Panel accordingly concludes that the Domain Name is confusingly similar to the BARCLAYS mark in which the Complainant has rights. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview, 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s BARCLAYS mark, and the Complainant has not authorized the Respondents to use that mark, whether in a domain name or otherwise. The first-named Respondent is merely the provider of a domain name privacy service, and there is nothing in the evidence which suggests that the second-named Respondent, or any business or organization operated by it, is commonly known by the Domain Name. There is therefore no basis for thinking that either of the Respondents might have a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. Similarly, the commercial nature of the second-named Respondent’s use of the Domain Name effectively rules out any possibility of a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondents to come forward with appropriate allegations or evidence demonstrating that it has some right or legitimate interest in respect of the Domain Name. The Respondents having failed to submit any Response, that burden has not been discharged, and the Complainant’s prima facie proof prevails. The Panel therefore finds that the Respondents have no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(i)circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or …
(iv)by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that this part of the Complaint has also been proved. The Domain Name is confusingly similar to the Complainant’s BARCLAYS mark, and the second-named Respondent has made no use of the Domain Name, other than to allow it to be pointed to a parking page displaying sponsored links to third party websites. At least some of those third party websites appear to have offered financial products which compete with the Complainant’s financial products. Furthermore, it is obvious that the second-named Respondent was aware of the Complainant when the Domain Name was registered - the Domain Name itself shows that the registrant had in mind a UK bank called “Barclays” when it registered the Domain Name, and of course such a bank, operated by the Complainant, already then existed. In those circumstances any suggestion that the second-named Respondent thought of the Domain Name without reference to the Complainant, would stretch the bounds of coincidence beyond breaking point.
A respondent’s provision of sponsored links to third party websites offering products which compete with the complainant’s products, has frequently been regarded by UDRP panels as indicative of bad faith on the part of the respondent. In the absence of any Response, the Panel sees no reason to take any different view in this case. Furthermore, the Panel accepts the Complainant’s submission that the second-named Respondent is never likely to be able to use the Domain Name for any legitimate purpose – the Domain Name is so obviously suggestive of the Complainant that it is inevitable that many Internet users will assume that any website at the Domain Name will be operated or endorsed by the Complainant.
The failure of the second-named Respondent to reply to the Complainant’s cease and desist letters reinforces the impression of bad faith, as does its failure to file any Response in this proceeding.
Whether the circumstances fall within paragraph 4(b)(iv) of the Policy is not entirely clear – the evidence certainly shows that the second-named Respondent intended to create a likelihood of confusion with the Complainant’s BARCLAYS mark as to the source, sponsorship, affiliation or endorsement of the website at the Domain Name, but it is not so clear that the second-named Respondent did so for immediate commercial gain in the form of pay-per-click or other revenues from the sponsored links – those revenues may have been earned by the web hosting company which has provided the “free parking”. But in the end such distinctions do not matter in this case. The second-named Respondent has chosen a domain name which was clearly intended to cause confusion with the Complainant’s mark – either it did that for commercial gain, in circumstances caught by paragraph 4(b)(iv), or it did so with a view to selling the Domain Name to the Complainant at a profit (which would be evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy). In the absence of a Response, no other explanations for the registration of the Domain Name seem plausible. And whichever of those two possible explanations for the registration of the Domain Name is correct, the result is the same – the Domain Name was registered and has been 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.
Warwick Smith
Sole Panelist
Dated: October 12, 2012
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