WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Company Domain Management (Syed Hussain)/ Domain Privacy Group Inc.
Case No. D2010-2151
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Company Domain Management (Syed Hussain) of Closter, New Jersey, United States of America/ Domain Privacy Group Inc. of Markham, Canada.
2. The Domain Name and Registrar
The disputed domain name <barclaycardwembley.com> is registered with Netfirms, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, December 14, 2010, Netfirms, Inc. transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2010 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 December 17, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on February 9, 2011. 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 Complainant is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an extensive international presence in Europe, the Americas, Africa and Asia. It has traded as Barclays PLC since 1985. Prior to this the Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. The Complainant currently operates in over 50 countries and employs approximately 144,000 people.
The Complainant, as the parent company of Barclaycard, is the registered proprietor of a number of United Kingdom registered and Community registered trademarks in BARCLAYS and BARCLAYCARD in a range of classes including in relation to financial services. The Complainant's United Kingdom registered trademarks were first registered in October 1986.
On April 28, 2010 the Complainant became the official sponsor of London’s music venue Wembley Arena acquiring the naming and promotional rights to the arena. The venue is now known as “Wembley Arena, a Barclaycard Unwind Venue”.
The Respondent registered the disputed domain name on April 29, 2010.
The Complainant ‘s representative contacted the Respondent on June 25, 2010 requesting the Respondent to cease its use of the Complainants’ trademark and transfer the domain name to the Complainant.
5. Parties’ Contentions
The Complainant contends that in addition to its registered trademarks, it has acquired goodwill and a significant reputation in the areas in which it specialises through its use of the name “Barclaycard” over the last 40 years. As such, the name “Barclaycard” has become a distinctive identifier associated with the Complainant and the services it provides.
The Complainant submits that the disputed domain name contains a word which is identical and therefore confusingly similar to the name “Barclaycard” in which the Complainant has common law rights and for which the Complainant has registered trademarks.
The Complainant contends that given the worldwide fame reputation and notoriety of the name “Barclaycard”, no trader would choose the domain name unless with the intention to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent’s website.
The Respondent registered the disputed domain name on 29 April 2010, the day after it was announced in the press that the Complainant had become the official sponsor of London's Wembley Arena. The disputed domain name is being used as a holding page containing a number of finance related sponsored links which relate to competitor products and services to those offered by the Complainant and redirects Internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondent.
The Complainant contends that the Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. The content on the website at the disputed domain name is tailored to match the Complainant's core goods and services. This means that when Internet users view the content displayed at the disputed domain name and click one of the sponsored links on the website the Respondent generates revenue directly from the initial interest arising from the use of the BARCLAYCARD trademark in the disputed domain name.
The Complainant believes the Respondent is not known by the disputed domain name. The Respondent has never asked for, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant's trademark.
It is the Complainant’s view that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content found at the disputed domain name is pay per click sponsored links which relate to financial services. Such activity does not qualify as noncommercial or fair use.
The Complainant advised that no response was received to its representative’s letter of June 25, 2010 and a further letter was sent asking for a response. The registrant contacted the Complainant's representative on October 13, 2010 advising that it was willing to transfer the disputed domain name but that it required the Complainant to pay USD 750 for the disputed domain name to be transferred.
Given the timing of the registration of the disputed domain name and the demand for payment for the transfer of the disputed domain name the Complainant considers that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant who is the owner of registered trademarks in BARCLAYCARD, for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name registration, contrary to paragraph 4(b)(i) of the Policy.
According to the Complainant the Respondent had elected for its identity and contact details to be withheld as confidential. Given the widespread use, reputation and notoriety of the famous BARCLAYCARD mark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of the BARCLAYCARD trademarks. 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 trademarks in breach of paragraph 4(b)(iv) of the Policy.
Finally, the Complainant submits that the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of BARCLAYCARD is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYCARD trademark. It is reasonably anticipated that this disputed domain name will divert potential custom from the Complainant's business due to the presence of links to competitor websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has rights in the trademarks BARCLAYS and BARCLAYCARD.
The disputed domain name consists of the Complainant's BARCLAYCARD trademark in its entirety together with the geographical indicator “Wembley”. It has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The only difference between the Complainant’s BARCLAYCARD trademark and the disputed domain name is the addition of the geographical indicator which cannot be considered distinctive. As found in Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 the geographical indicator “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the Complainant] as utilised in [that location]”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademarks in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name infers a website related to the services of the Complainant. Instead, according to the Complainant’s unrefuted allegations, the website has displayed in the past finance related sponsored links to the Complainant’s competitors which would generate revenue for the Respondent. Clearly, no rights or legitimate interests derive from this type of use of another's trademark and the Respondent is trying to benefit from the reputation of the Complainant's widely known trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 the panel stated “that in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith is evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant has provided evidence that the Respondent must have known of the Complainant's trademark at the time of registration because the Respondent registered the domain name one day after the Complainant announced it was sponsoring the London’s Wembley Arena. As expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, the selection of domain names are so obviously connected to the complainant's trademark that their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
A search of the WIPO database indicates that the Respondent has been involved in many disputes resulting in the disputed domain name being transferred to the complainant(s). As noted in Allianz AG and Dresdner Bank AG v. MIC, WIPO Case No. D2001-1298, the panel expressed the view that “the Respondent is no stranger to proceedings such as this. Under a variety of pseudonyms, Respondent has registered innumerable domain names corresponding to well known trademarks and service marks of others”. In that case the respondent took advantage of the breaking news of merger talks between the two complainants to secure registration of domain names most likely to reflect the merged businesses’ names. Similarly, in Areve v. MIC/Hussain, Syed, WIPO Case No. 2010-1098 one day after the complainant issued a press release about its acquisition of Ausra, a large scale solar power generating company in the United States, and changed its name to Areva Solar the Respondent registered the domain name <arevasolar.com>. In that case the panel referred to the Respondent’s bad faith behaviour and his long history of engaging in abusive registrations.
This case again demonstrates that the Respondent is a serial bad faith registrant who continues to conduct opportunistic activity by deliberate disregard of others’ trademark rights.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the domain name was not merely coincidental but was a deliberate action to gain some sort of commercial advantage.
On the basis of the above, the Respondent’s request for a payment in excess of the Complainant’s out-of-pocket costs and the fact that the Respondent has no rights or legitimate interests in the disputed domain name and has a pattern of cyber squatting, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <barclaycardwembley.com> be transferred to the Complainant.
Dated: February 23, 2011