ADMINISTRATIVE PANEL DECISION Barclays Bank UK PLC v. 0440 Offshore Services, Ian Steven Case No. D2023-4601 1. The Parties 1.1 The Complainant is Barclays Bank UK PLC, United Kingdom, represented by Bird & Bird LLP, United Kingdom (the “Complainant”). 1.2 The Respondent is 0440 Offshore Services, Ian Steven, United Kingdom (the “Respondent”). 2. The Domain Name and Registrar 2.1 The disputed domain name (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2023. On November 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (REDACTED FOR PRIVACY See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 17, 2023. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2023. ARBITRATION AND MEDIATION CENTER
page 2 The Center appointed Ike Ehiribe as the sole panelist in this matter on January 9, 2024. 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 4.1 The Complainant Barclays Bank UK PLC, is a subsidiary of Barclays PLC, registered in the UK and well-known as a British multinational banking and financial services company with headquarters in London. It has been described as one of the largest financial services providers with operations in retail, wholesale and investment banking as well as wealth management, mortgage lending and credit cards. The Complainant it is said provides financial products and services to 24 million individual and business customers in the UK, thereby confirming the Complainant’s substantial reputation in the banking and financial services business. 4.2 The Complainant is the licensee of numerous registered trademarks, in a range of classes throughout the world incorporating the mark BARCLAYS, notably all registered before the Respondent created the Disputed Domain Name on June 22, 2018. Those registered trademarks include: a) UK Trade Mark for BARCLAYS granted on January 11, 2008 (no. UK00002461096) covering a variety of financial services in Class 36; b) EU Trade Mark for BARCLAYS granted on January 26, 1999 (no. EU0000552236) covering a variety of financial services in Class 36; and c) UK Trade mark for BARCLAYS WEALTH granted on May 25, 2007 (no. UK00002436569) covering a variety of financial services including management of wealth services in Class 36. 4.3 The Respondent in these proceedings is Ian Steven of 0440 Offshore Services 71609. According to the WhoIs record the Disputed Domain Name was registered on June 22, 2018. The Disputed Domain Name currently resolves to a page that contains no substantive content. 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. 5.2 Notably, the Complainant contends that the Respondent uses the Complainant’s trademark “Barclays” to create a domain name similar to the Complainant’s official domain name at thereby leading Internet users to believe that the Disputed Domain Name is owned by the Complainant. It is further contended that the addition of “wealth services” does nothing to differentiate the Disputed Domain Name from the Complainant’s trademarks, instead considering the Complainant’s reputation in wealth and financial management services, the inference is likely to be drawn that the Complainant owns the Disputed Domain Name. Therefore, it is asserted that the Disputed Domain Name is confusingly similar to the Complainant’s Trade Marks. 5.3 The Complainant states further that the Respondent appears to be using the Disputed Domain Name for phishing purposes which is likely to cause serious financial loss for the Complainant’s customers and by extension significant damage to the Complainant’s business and reputation. In this regard the Complainant refers to a letter attached at annex 6, requesting for fraudulent fees which was sent to one of the Complainant’s customers. It is said that the letter is connected to the Disputed Domain Name since the contact details of the individual signing the letter includes an email address associated with the Disputed Domain Name. 5.4 It is further asserted that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name considering that the Respondent does not hold any trademarks or other intellectual property rights in any of the Complainant’s trademarks. In this regard, it is further stated that the website to
page 3 which the Disputed Domain Name resolves does not appear to be accessible, and that the Disputed Domain Name has at the very least caused initial interest confusion because Internet users could visit the website of the Disputed Domain Name in the erroneous belief that it is the official website of the Complainant. Finally, in this regard the Complainant submits that since the Disputed Domain Name incorporates the Complainant’s trademark in full without any distinctive element, any contemplated third-party use would inevitably mislead internet users into believing that the Disputed Domain Name is registered to or authorised by, or otherwise connected with the Complainant. 5.5 On the question of bad faith registration and use, the Complainant submits that the Respondent is already using the Disputed Domain Name in bad faith because: (i) any use by the Respondent of the Disputed Domain Name would at the very least attract initial interest confusion which has been held in previous UDRP decisions, such as Mahamayavi Bhagavan “Doc” Antle v. Domains by Proxy, LLC/ Carole Baskin, Big Cat Rescue, WIPO Case No. D2014-1793 to be evidence of bad faith registration and use; (ii) the specific use made by the Respondent of the Disputed Domain Name to send poisoning emails must have been done with the intention of defrauding the Complainant’s customers by creating confusion with the Complainant’s Trademark and or website; (iii) the Respondent’s registration of the Disputed Domain Name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s Trademark contrary to paragraph 4(b)(ii) of the Policy; and (iv) 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. B. Respondent 5.6 The Respondent did not reply to the Complainant’s contentions; and therefore, the Panel shall draw such adverse inferences from the failure of the Respondent to reply as it deems appropriate. 6. Discussion and Findings A. Identical or Confusingly Similar 6.1 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown long standing intellectual property rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical and or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms to the Disputed Domain Name such as the term “Wealth Services” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not in the present circumstances prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests 6.2 Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, considering also that the website to which the Disputed Domain Name resolves to appears to be inaccessible. Furthermore, the Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity such as phishing or passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 6.3 The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity such as phishing and or impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. In this regard the Complainant has referred to a letter connected to the Disputed Domain Name which the Respondent has sent to a customer of the Complainant as part of a nefarious attempt to impersonate staff of the Complainant’s wealth management service fraudulently seeking fees. The said letter reflects an email address associated with the Disputed Domain Name and uses former or real employees of the Complainant to suggest that the letter originates from the Complainant. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel finds therefore, that the Complainant has established the third element of 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 Disputed Domain Name be transferred to the Complainant. /Ike Ehiribe/ Ike Ehiribe Sole Panelist Date: February 12, 2024
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