WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v Mr Mohammed Hassan

Case No. D2001-0253

 

1. The Parties

The Complainant is Barclays Bank PLC of 54 Lombard Street, EC3P 3AH, United Kingdom.

The Respondent is Mr. Mohammed Hassan, 46 Shelley Avenue, London, E12 6SW United Kingdom.

 

2. The Domain Names and Registrar

The Domain Names in question are <barclaycardonline.com>, <barclaycardonline.net>, <barclaycard-online.com>, and <barclaycard-online.net>.

The Registrar is Register.com, Inc.

 

3. Procedural History

The Complaint was filed on February 16, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No formal Response was filed by the Respondent who is in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was April 22, 2001.

 

4. Factual Background

The Complainant is the owner of UK and European Community registered trade marks for the mark BARCLAYCARD.

 

5. Partiesí Contentions

A. Complainant

The Complainant states that:

Barclays Bank PLC (the "Complainant") and its services enjoy a world-wide reputation. The Complainant is the owner of the UK registered trade marks "Barclaycard" in classes 09, 16 and 36, "Barclay" in classes 16 and 36 and "Barclays" in classes 16, 35 and 36. The Complainant is also the owner in the European Community (CTM) of "Barclaycard" in classes 09, 16, 36 and 42 and "Barclays" in classes 09, 16, 35, 36 and 42.

These trade marks have been used for many years in various aspects of the Complainantís businesses. In addition, the Complainant and/or the Complainantís associated companies and/or trading divisions own the following relevant domain names:

<barclaycard.com> registered in the name of the Complainant;

<barclaysonline.com> registered in the name of the Complainant,

<barclaycard.co.uk> registered in the name of ĎBarclaycardí, a trading division of the Complainantís business; and

<barclaysonline.co.uk> registered in the name of the Complainant.

The Complainant uses the web sites attached to these domain names to promote its services and to provide information about itself to its clients and to the general public.

On July 31, 2000 and again on December 18, 2000 the Complainantís solicitors undertook domain name searches. The search results indicate that the Respondent has registered numerous domain names incorporating the names and/or brands of Barclaycard. These include BARCLAYCARDONLINE.COM, Barclaycardonline.net, Barclaycard-online.com and Barclaycard-online.net. The domain names in dispute, <Barclaycardonline.com>, <Barclaycardonline.net>, <Barclaycard-online.com> and <Barclaycard-online.net> (the "Domain Names") were registered on 04 April 2000 by Mr Hassan (the Respondent in this matter).

On August 2, 2000 the Complainant's lawyers (Lovells) sent a letter to the Respondent requesting that the Domain Names immediately be transferred to the Complainant. The Complainant stated in this letter that further action would be taken if steps to this effect were not taken by the Respondent within the specified time limit.

The Respondent did not comply with this request and it subsequently came to the attention of the Complainantís lawyers (Lovells) that the Domain Names were being offered for sale on a site hosted by Greatdomains.com. A reminder in respect of Lovellsí letter of August 2, 2000 was sent on September 18, 2000 to the Respondent (Mr Hassan) requesting him to inform the Complainantís lawyers whether he would provide the Complainant with the undertakings required and informing him of the intention of the Complainantís solicitors to issue an appropriate injunction in the Court to prevent the transfer of the Domain Name. No response was received.

Telephone contact was made between the Complainantís solicitors (Lovells) and the Respondent (Mr Hassan) on November 24, 2000 which established that the Respondent was willing to sell the Domain Names. The Complainant (Barclays Bank PLC) offered the amount it cost the Respondent to register the Domain Names, which was $99 per Domain Name. The Respondent stated that he wanted to make money from the sale of the Domain Names since he claimed to have registered them as an investment. The Respondent stated he would wait for an independent valuation before accepting or rejecting the Complainantís offer. In a further telephone conversation on November 27, 2000, the Respondent valued each Domain Name at between $2000 - $4000 and as a consequence the Respondent subsequently rejected the Complainantís offer of $99; claiming £2000 - £4000, at least (and not the "independent valuation sum") for each Domain Name.

The Complainant then commenced these dispute resolution proceedings pursuant to the Policy.

The Respondent infringes the Complainantís rights in the trade marks (as set out above). The Domain Names consist of the Complainantís trade mark "Barclaycard". The Domain Names are, therefore, confusingly similar to the "Barclaycard" trade mark (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, ICANN Case No. D2000-0102).

The Respondent does not have any legitimate interest or right in the names "Barclaycard". The Respondent is not commonly known by these words nor the Domain Names. Further, the Respondent is not associated, connected with or authorized by the Complainant in any way and never has been.

The Domain Names were registered and are being used in bad faith. This is evidenced by the fact that the Respondent is also the registered owner of various domain names incorporating the name "Barclaycard" and claimed to have registered approximately 200 domain names for the purpose of making a profit. Further, on many occasions during telephone conversations the Respondent has admitted that the Domain Names were only registered as an investment; this is further supported by the Respondentís attempts to use the "valuation certificate" to obtain significant sums of money from the Complainant. This shows that the Respondent was conducting a series of actions aimed at intentionally registering the Domain Names purely for financial gain. Previous panel decisions have found that the ownership of numerous domain names which are the names or marks of well known business entities suggests an intent to profit from the activities of others (see Stella Díoro Biscuit Co. Inc., v. The Patron Group Inc., ICANN Case No. D2000-0012, Parfums Christian Dior v. 1 Netpower, Inc., ICANN Case No. D2000-0022, Nabisco Brands Co. v. The Patron Group Inc., ICANN Case No. D2000-0032 and J.P. Morgan v. Resource Marketing, ICANN Case No. D2000-0035).

The Respondent is infringing the Complainantís registered trade marks, he has no legitimate interest or rights in respect of the Domain Names he registered and is using the Domain Names in bad faith.

B. Respondent

The Respondent has not filed a formal Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

A. Identical or Confusing Similarity

It is prima facie obvious that the Domain Names are confusingly similar to the Complainantís trade marks. The addition of the non distinctive word "on line" does nothing to prevent the confusing similarity of the Domain Names with the Complainantís trade marks.

B. Rights or Legitimate Interest of the Respondent

The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Names.

C. Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name".

In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainantís trade marks as domain names with an intent to use them to demand unwarranted profit in bad faith.

 

7. Decision

In the light of the foregoing, the panelist decides that the Domain Names are confusingly similar to the Complainantís trade marks and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the domain names <barclaycardonline.com>, <barclaycardonline.net>, <barclaycard-online.com>, and <barclaycard-online.net> be transferred to the Complainant.

 


 

Dawn Osborne
Sole Panelist

Dated: April 19, 2001