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 “Mindy Heath” of Sycamore, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24 and 25, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Mindy Heath” 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 September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. On October 3, 2012, the Center received an informal email communication from a person named Mindy Heath indicating that she had been “victim of an identity theft from January 2012 to April 2012 from a prepaid credit card”. Not having received any further communication from the Respondent, on October 16, 2012 the Center informed the Respondent that the deadline to file a Response having lapsed, a Panel would be appointed.
The Center appointed J. Nelson Landry as the sole Panel in this matter on November 7, 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 facts herein have been stated in the Complaint to which there has been no formal response, except for an informal email communication to the Center from a person named Mindy Heath, and therefore those facts are considered truthful and accurate by the Panel.
The Complainant is a global financial services provider active in the field of banking, credit cards, corporate and investment banking, wealth and investment management services in Europe, North America, South America, Africa and Asia. It started its trading activities in 1896 under different corporate names including Barclays, predominantly, or Barclay, and since 1985 has continued under the current name. Its business operations are offered and carried in over 50 countries with about 144,000 employees serving more than 48 millions customers and clients in the world.
The Complainant is the registered owner of numerous BARCLAYS trademarks registered in association with different classes, in particular financial services with which it provides its services. The evidence shows that there are different trademarks, more than 90 in all:
- first, many consisting of the word BARCLAYS alone, some where the word BARCLAYS is in a particular script and design to form a logo (herein represented as “the BARCLAYS Trademarks”);
- second, many where the word BARLCAYS is associated with one or two descriptive terms such a CAPITAL, CENTER, COMMERCIAL, CORPORATE, INTERNATIONAL, INVESTORS, MERCANTILE, WEALTH, GLOBAL BANKING, GLOBAL INVESTORS, GLOBAL WEALTH, PREMIER LEAGUE, MERCHANT SERVICES and MONEY SKILLS;
- third, others where the word BARCLAY is part of a combined term namely BARCLAYBANK, BARCLAYSKILLS BANK, BARCLAYCARD, BARCLAYCARD SMARTPAY and BARCLAYCARD EASYPÂY; and
- finally, others where the word BARCLAYS has been modified, namely BARCAP and BARACARD
These groups, first to final, are collectively referred to herein as “the Family of BARCLAYS Trademarks” or the Trademarks.
These respective Trademarks within the Family of BARCLAYS Trademarks are registered in association with a few classes of goods and financial services in some instances while some are registered with up to 21 classes of goods and financial services, in the United Kingdom and as Community trademarks.
The disputed domain name was registered on March 1, 2012.
A website is used by the Respondent in association with the disputed domain name in which website there is a holding page where there are 18 sponsored links which relate to competitors’ services that are also offered by the Complainant, namely seven to Credit or Kredit institutions, presumably in Switzerland considering the “ch” suffix in the email addresses, and 10 bank references such as “bank loans”, “bank guarantee” and one specifically mentioning “Barclays Bank”.
The Respondent is not known by the disputed domain name, has never asked for nor been given any permission by the Complainant to register or use any domain name in which is incorporated a trademark or a word confusingly similar to one of the BARCLAYS Trademarks of the Complainant.
On April 23, 2012, the Complainant, through its agent, wrote to the Respondent advising her of its registered BARCLAYS Trademarks and asked that the disputed domain name be transferred to it. The Complainant, not having received any response to this letter, sent further letters on May 15 and July 3, 2012, asking for a response to its letter of April 23, 2012 and never received any response to either of these letters and the content of the website at the address of the disputed domain name remains unchanged.
On September 25, 2012, the Center notified the Complaint to the Respondent using the various email and civic addresses provided in the WhoIs Search and confirmed by the Registrar. The communications attempted by email to notify the Complaint to the Respondent where not all successful, although notification to the Respondent at the email address, “[…]@” provided in the WhoIs Search Report appeared to be successful. The letter and copy of the Complaint sent by DHL Services was successfully delivered on October 3, 2012, to the named Respondent at the address provided by the Registrar.
On October 3, 2012, Ms. Mindy Heath, named as Respondent in these proceedings, sent an email communication to the Center acknowledging receipt of the Complaint and explaining that she was the “victim of an identity theft from January 2012 to April 2012 from a prepaid credit card”.
First she informed the Center that the contact information mentioned about her in the letter of notification was inaccurate, namely the email address and the telephone number and specified that “the mailing address is the only correct thing”. She confirmed that she has never received any email from the Center since the email listed with her name is not her email address and never has been, as the Panel noted in observing the email address she used to communicate with the Center.
She briefly mentioned a first unrelated incident and that, some two months later, there were credit card activities involving “different companies providing the services for domain names. Again, I contacted my credit card company and had this issue dealt with”. She concluded in stating that she does not want to be involved any further “since as far as I am concerned, the matter does not pertain to me, except someone stole my name for their own gain and I have no access to or control over ”. 5. Parties’ Contentions A. Complainant
The Complainant represents that, pursuant to a continuous and extensive use of its BARCLAYS Trademarks in association with global financial services at the international level, it has become a major trader and has received several awards namely in 2009, Lender of the Year, during the Bank Hall Annual Conference in London (United Kingdom of Great Britain and Northern Ireland), the Best Leadership Team in Global Private Banking accolade at the Global Private Banking Awards in Geneva (Switzerland) and the best credit cards provider at the Money Facts Awards and best local bank in the United Kingdom at the Euro Money Private Banking Awards and, in 2008, it was awarded the Business Superbrands status to acknowledge the quality, reliability and distinction of its services.
The Complainant further represents that, by reason of its extensive international activities, a substantial goodwill and a significant reputation are now associated with its Family of BARCLAYS Trademarks and consequently BARCLAYS has become a distinctive identifier associated with it and its services.
The Complainant claims that the goodwill associated with its BARCLAYS Trademarks is property belonging to it and such goodwill cannot become that of another party without a formal assignment.
The Complainant therefore claims to have substantial rights in the Family of BARCLAYS Trademarks.
The Complainant submits that the disputed domain name which incorporates its BARCLAYS Trademarks from which the letters A and R have been deleted while the terms “bank” and “group” as well as the gTLD suffix “.com” have been added is confusingly similar with its famous BARCLAYS Trademarks. The Complainant further represents that the addition of the term “bank” will increase the confusion because of the nature of the services provided by the Complainant and in this respect relies on a UDRP decision (see Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138). The Complainant further submits that the disputed domain name reveals an intention to seek confusing similarity to the Complainant’s BARCLAYS Trademarks and contends that this reflects the Respondent’s intention to attract and divert Internet visitors to Respondent’s own website for capital gain.
Consequently, the Complainant concludes that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that it attempted to communicate with the Respondent but despite an initial letter and two follow up letters, it did not receive any response and that the content of the website at the disputed domain name address was not altered.
Relying on its reputation and the notoriety of its famous BARCLAYS Trademarks, the Complainant alleges that the Respondent was likely aware that in registering the disputed domain name, there was misappropriation of the intellectual property of the Complainant who owned the BARCLAYS Trademarks and that, therefore, the disputed domain name was registered in bad faith.
According to the Complainant, by such registration of the disputed domain name, the Respondent prevents the Complainant from registering a domain name which would have been similar to its BARCLAYS Trademarks.
The Complainant further claims that the Respondent is using the disputed domain name in bad faith in that the use thereof is an intentional attempt to attract for commercial gains Internet visitors to its website by creating a likelihood of confusion with its BARCLAYS Trademarks and evenmore, since the notoriety of said BARCLAYS Trademarks will always cause many members of the public to see in the disputed domain name an association between the Respondent and the Complainant and that such potential customers will be diverted from the Complainant’s business by reason of the similarity of the disputed domain name and the website of the Respondent with that of the Complainant. The Complainant concluded its representations about bad faith in claiming that the omission of the two letters A and R within the disputed domain name constitutes a case of typosquatting. B. Respondent
The named Respondent did not file any formal response with the Center. However, the named Respondent sent an informal email to the Center informing it that she was not the person that had registered the disputed domain name and stating that she had been the subject of theft of identity and surmises that it was an unknown third party that would have registered the disputed domain name. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. The Respondent’s identity
As it appears from the facts represented herein, the Center was not able to notify the Complaint to the Respondent in using the email address “postmaster@” as mentioned in the WhoIs research report. This is no surprise when this Panel takes notice of the contents and information provided by Mindy Heath in her email to the Center wherein she mentions the illegal and unauthorized appropriation of her identity and in particular payments made to domain name service companies. She further confirmed that the telephone number provided is incorrect.
The Panel further notes that she states being a stranger to the registration of the disputed domain name as she clearly states at the end of her email communication and in particular that she has no access to or control over the disputed domain name. The Panel understands under these circumstances that this person could not consent to/or authorize the transfer of the disputed domain name to the Complainant.
On the basis of these facts, the Panel is of the view that another unidentified and unauthorized person is the party involved in the registration of the disputed domain name, the setup and use of the website at the address of the disputed domain name. This being said, the Panel will still direct its decision against “Mindy Heath”, the Registrar-confirmed registrant of record for the disputed domain name, in order to ensure the correct implementation of its decision under the Policy. B. Identical or Confusingly Similar
In this Panel’s opinion, the evidence is clear and substantial to demonstrate convincingly that the Complainant is a major financial institution with more than a century of activities presently at the international level and has always operated under the Family of BARCLAYS Trademarks which are registered in several jurisdictions, including in the United Kingdom and the European Union.
The Panel finds that the Complainant has rights in the said Family of BARCLAYS Trademarks.
The term “Barclay” is a family name, which is not common and the Panel sees in this Barclay family name or the term “Barclays” some uniqueness as there would be in a coined word. The choice of this famous BARCLAYS Trademark from which the letters A and R have been deleted in a first step and then the addition of two descriptive terms “bank” and “group” frequently used by corporations in the field of financial services, is not a coincidence but, on the contrary, a deliberate, well informed and planned choice in the opinion of this Panel. Considering the fame associated with the BARCLAYS Trademarks and the UDRP jurisprudence, the deletion of the said letters and the addition of the terms “bank” and “group” in the present situation, are a deliberate attempt to “create a false impression of association with the Complainant in order to attract business from the Complainant or to misleadingly divert the public from the Complainant to the Respondent” as submitted by the Complainant, with which the Panel concurs.
The disputed domain name differs from the BARCLAYS Trademark in two respects. When one considers the numerous variations in the different trademarks within the Family of BARCLAYS Trademarks, one can appreciate that the variations introduced in the disputed domain name may be understood as further extension of the Family of BARCLAYS Trademarks. There are numerous descriptive terms analogous to “bank” and “group” already associated with the term “barclays”, and there are also variations introduced in the term “barclays” itself, namely “barcap”.
Considering numerous UDRP decisions which state that the addition of descriptive terms related to the activities in association with which a trademark is used, does generally not diminish the confusion arising in these circumstances on the one hand and the modifications already made by the Complainant to the term “barclays”, the Panel, upon considering the fame associated with the BARCLAYS Trademarks on which the Complainant has rights, finds the disputed domain name is confusingly similar to the BARCLAYS Trademarks.
The Panel finds that the disputed domain name is confusingly similar with the BARCLAYS Trademarks.
The first criterion of the Policy has been met. C. Rights or Legitimate Interests
The Respondent has not filed any formal response in this proceeding. The informal email received from the person named as Mindy Heath does not deny the representations made by the Complainant. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given an assignment of its trademark rights or goodwill associated therewith, a license nor in any way authorized the Respondent to make use of the Complainant’s BARCLAYS Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark. While there is no evidence that the Respondent action constitutes an attempt to extort money from the Complainant, it is certainly fair to conclude that the holding of the disputed domain name denies the Complainant access to the use of the domain name corresponding to its BARCLAYS Trademarks.
The Respondent has not rebutted the prima facie case made by the Complainant.
The evidence submitted by the Complainant, again in this Panel’s view, clearly shows that this deliberate choice of the disputed domain name with confusing similarities is used to mislead Internet users and cause them to reach the website at the address of the disputed domain name where the said visitors may click on many sponsored links and thereby generate revenues for the Respondent. Such use is illegitimate and definitely for commercial activities and in the present circumstances does not constitute any legitimate interest of the domain name in which, as established by the prima facie evidence, the Respondent has no rights.
The Panel finds that the Respondent has no rights nor legitimate interests in the disputed domain name.
The second criterion of the Policy has been met. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 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.”
It should be noted that the circumstances of bad faith are not limited to the above.
Considering the fame associated with the BARCLAYS Trademarks, on the one hand, the modification to the term “Barclays” and the addition of two descriptive terms related to the field of activities of the Complainant, on the other hand, the Panel finds that this is a deliberate and unauthorized modification and use of the BARCLAYS Trademarks to determine and register the disputed domain name. Furthermore, the appropriation of the identity and civic address of the person named as Respondent and said person’s evidence of the ignorance and denial of having registered this disputed domain name, evidence that the Panel believes, upon considering the incorrect telephone number and the different email address that the person used to communicate with the Center, that the disputed domain name was registered in bad faith by a person who took steps to avoid being identified. This bad faith is further confirmed by the absence of response to the initial letter from the Complainant and to the two follow up letters.
The evidence also clearly shows that the Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BARCLAYS Trademarks. Furthermore, the presence of numerous mentions and references to credit and banking services substantiate this capitalization on the fame of the BARCLAYS Trademarks and the financial activities associated therewith and such use of the disputed domain name in this Panel’s view is used in bad faith.
This use in bad faith is further confirmed by the fact that the registration of the disputed domain name prevents the Complainant from registering a domain name similar to one or more of its Trademarks within the Family of BARCLAYS Trademarks and finally, that the construction of the disputed domain name, in particular the omission of the letters A and R is a case of typosquatting.
The Panel finds that the disputed domain name was registered in bad faith and is used in bad faith.
The third criterion of the Policy has been met. 7. Decision
The Panel concludes that:
(a) the disputed domain name is confusingly similar to the Complainant’s Trademark; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: November 16, 2012
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