WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Domains by Proxy Inc. / Barclays Bank
Case No. D2010-2154
1. The Parties
The Complainant is Barclays Bank PLC, London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Domains by Proxy Inc. (the “First Respondent”) of Scottsdale, Arizona, United States of America and Barclays Bank, (the “Second Respondent”) of Poway, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barclaysghana.net> is registered with GoDaddy.com, 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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 15, 2011, GoDaddy.com, Inc. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2010 providing the registrant and contact information disclosed by GoDaddy.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 23, 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 Respondents of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 18, 2011.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 25, 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.
On January 26, 2011, The Center received an email communication sent from the Respondent’s address requesting more information about the proceedings. On January 31, 2011, the Center acknowledged receipt for the January 26, 2011 email communication and provided a detailed explanation of the course of the course of the proceedings. The Center also informed the Respondent that if a late Response to the Complaint was received, it would bring the Response to the Panel’s attention, which would have the sole discretion to consider it. No further communications or Response was received by the Center
4. Factual Background
The Complainant is a provider of banking and other financial services that has operated since 1896 under trademarks including, BARCLAYS. BARCLAYS constitutes a well-known mark. The Complainant operates in over 50 countries and has more than 48 million customers and clients throughout the world. It has a significant presence in Europe, the Americas, Africa and Asia. The disputed domain name was registered on March 19, 2010. The disputed domain name is being used for a site that contains links to suppliers of financial services who operate in competition with the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, containing as it does the famous mark BARCLAYS followed by the geographical term “Ghana”, is identical, or confusingly similar, to its mark; that the Respondents have no rights or legitimate interest in the disputed domain name and haves only ever used it to generate revenue from the confusion caused by the disputed domain name; and that such use is evidence of bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has no doubt that the disputed domain name is identical, confusingly similar, to the Complainant’s trade mark. Given the Complainant’s world-wide reputation in the field of financial services (a reputation extending to Africa), the addition of the geographical suffix “Ghana” to the BARCLAYS mark, in which the Complainant has rights, does nothing to distinguish the disputed domain name from the Complainant's marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least a prima facie case, that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110). Given, that in this case, the Complainant has put forth credible evidence that the likelihood of confusion is strong, and the only use of the disputed domain name for a “pay-per-click” website that promotes services competing with those of the Complainant, it is implausible to the Panel that the Respondents have any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that Respondents must have been aware of the Complainant’s well-known marks at the time of the registration of the disputed domain name and of the strong likelihood of confusion with the Complainant's marks. That the disputed domain name was nevertheless registered with an apparent intention to generate revenue, is clear evidence that it was registered and is being used in bad faith, in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <barclaysghana.net> be transferred to the Complainant.
Michael J. Spence
Dated: February 8, 2011