ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Barclays Bank PLC v. BARCOSEC LIMITED, Barclays Investment Solutions Limited Case No. D2023-1521 1. The Parties Complainant is Barclays Bank PLC, United Kingdom ("UK"), represented by Bird & Bird LLP, United Kingdom. Respondent is BARCOSEC LIMITED, Barclays Investment Solutions Limited, United Kingdom. 2. The Domain Name and Registrar The disputed domain name ("Domain Name") is registered with Name.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2023. On April 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on April 13, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 18, 2023. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 12, 2023. page 2 The Center appointed Clive L. Elliott, K.C., as the sole panelist in this matter on May 19, 2023. 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 Complainant is a wholly owned subsidiary of Barclays PLC, a British multinational banking and financial services company with its headquarters in London, United Kingdom. Complainant is responsible for Barclays PLC's investment banking, corporate, private and overseas services operations, providing products and services for large corporate, wholesale and international banking clients. Complainant is the licensee of numerous registered trade marks in a range of classes throughout the world containing or incorporating BARCLAYS, including the following: Jurisdiction Trade Mark No. Date of Registration United Kingdom UK00001286579 March 3, 1989 United Kingdom UK00002461096 January 11, 2008 United Kingdom UK00002621974 September 21, 2012 European Union EU002315554 February 13, 2003 European Union EU010890366 October 11, 2012 European Union EU010890309 October 11, 2012 European Union EU010890473 October 12, 2012 (together, the "Complainant's Marks"). All of Complainant's Marks cover a variety of financial services, and all were registered before the Domain Name was registered. According to the publicly available WhoIs, the Domain Name was registered on April 2, 2022 and currently does not resolve to an active page. Complainant however points out that screenshots of the content of the Domain Name taken before it became unavailable on December 19, 2022, show that Respondent was passing itself off as Barclays Investment Solutions Limited, including by making available the Company's certificate of incorporation and other formal documents filed at Companies House. 5. Parties' Contentions A. Complainant Complainant states that Respondent registered the Domain Name using the organization name "Barclays Investment Solutions Limited" with the contact name of "Barcosec Limited". Both these entities fall within the Barclays corporate group, with the latter company Barcosec Ltd now dormant. Complainant contends that Respondent has used inaccurate contact details during the registration process in an attempt to fraudulently pass themselves off as being a part of the Barclays corporate group. Complainant states that it therefore maintains its complainant as a "Doe" complaint. Complainant goes on to assert that as the Domain Name contains Complainant's Mark in its entirety, this would cause confusion because Internet users would be visiting the site in the expectation that it is an official website of Complainant and likely be a potential customer looking for financial services. Complainant submits that Respondent has registered the Domain Name in bad faith by confusing customers page 3 into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with Complainant or the wider Barclays' corporate group, and further that Respondent has intentionally attempted to attract, for commercial gain, internet uses to the website by creating a likelihood of confusion. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings For the reasons set out below the Panel finds for Complainant. A. Identical or Confusingly Similar Complainant has established it is the owner of a number of long-standing trade mark registrations in the European Union and the United Kingdom, referred to as "Complainant's Marks". The Domain Name reproduces Complainant's Marks containing, as it does, the element BARCLAYS in its entirety. The Domain Name also includes the English word "mining". The inclusion or addition of this word does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Further, Complainant's Mark is clearly recognizable in the Domain Name notwithstanding the addition of the word "mining". See section 1.7 of WIPO Overview 3.0. The Domain Name is therefore confusingly similar to Complainant's Mark. The first ground under the Policy is made out. B. Rights or Legitimate Interests The issue that needs to be assessed is whether Respondent has some basis to claim rights or legitimate interests in the Domain Name. It is difficult to identify any such right or interest in the absence of a response. That is particularly so, given Complainant asserts that Respondent registered the Domain Name using the organization name "Barclays Investment Solutions Limited" with a view to masquerading as part of the Barclays corporate group. Further, Complainant argues that the Domain Name is likely to cause confusion, because Internet users would be visiting the site in the expectation that it is an official website of Complainant and be providing financial services connected with Complainant. Given the prominent use of the BARCLAYS mark in the Domain Name, the Panel sees the merit in this argument. It follows that Respondent's conduct is likely to mislead members of the public and such conduct is therefore not legitimate and Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has therefore established the second ground under the Policy. C. Registered and Used in Bad Faith In essence, Complainant submits that Respondent has registered the Domain Name in bad faith by confusing customers into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with Complainant or the wider Barclays' corporate group. page 4 The factual allegations underpinning this submission are not challenged by Respondent. Accordingly, the Panel is satisfied that the Domain Name was registered improperly and with the requisite knowledge on Respondent's part and has since been used in a manner likely to mislead members of the public. Finally, Respondent's attempt to portray itself as part of the Barclays corporate group supports this conclusion. Accordingly, looked at as a whole, the Panel finds that the Domain Name was registered and used in bad faith. Complainant has therefore established the third ground under the Policy. 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 Complainant. /Clive L. Elliott, K.C./ Clive L. Elliott, K.C. Sole Panelist Date: June 8, 2023
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