WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays PLC v. Tripsteps Founder
Case No. D2011-0123
1. The Parties
The Complainant is Barclays PLC of London, the United Kingdom of Great Britain and Northern Ireland (the “United Kindgom”) represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Tripsteps Founder of Oxfordshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <barclaysbanklocations.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2011. On January 24, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 24, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2011.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on March 15, 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 March 22, 2011, the Panel issued an order under paragraphs 10 and 12 of the Rules requesting the Complainant to provide two emails received by the Complainant from the Respondent and referred to in the Complaint. These documents were provided on March 24, 2011. The Respondent did not submit a reply to this Order.
4. Factual Background
The Complainant is a well-known financial institution offering retail and investment banking services among other things. The Complainant has traded under the name BARCLAYS for over 100 years and is the owner of a number of UK and Community trade mark registrations for, or including BARCLAYS, including UK trade mark number 1286579 for BARCLAYS for financial services filed on October 1, 1986.
The Complainant operates online through its websites at domain names <.barclays.com> and <barclays.co.uk>. Both these domain names were registered more than 14 years ago.
The Respondent registered the Disputed Domain Name on September 22, 2008.
On August 2, 2010 the Complainant (through its representatives) wrote to the Respondent alleging trade mark infringement and requesting the transfer of the Disputed Domain Name (among other things). The Respondent replied on August 3, 2010 explaining that the service offered at the Disputed Domain Name was intended to promote the Complainant’s business by making it easier for customers to find branches through Google and suggesting that the Complainant put forward an offer to buy the Disputed Domain Name and code behind the website.
By letter of October 11, 2010, the Complainant indicated that it had no intention of purchasing the Disputed Domain Name from the Respondent and that it would commence proceedings if the Disputed Domain Name was not transferred to it within the stated timeframe. No response was received from the Respondent and so a further letter was sent by the Complainant’s representatives on November 5, 2010 which requested a response to the letter of October 11, 2010. The Respondent replied by email on November 5, 2010 stating that it had received “no other correspondence”. It is unclear whether by this the Respondent intended to mean that it had not received the letter of October 11, 2010 or had not received both letters of October 11 and November 5, 2011.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name contains BARCLAYS and that the other components of the Disputed Domain Name are generic and do not reduce the risk of confusion: in fact, the use of the word “bank” in the Disputed Domain Name increases the risk of confusion because it describes the nature of the Complainant’s business.
The Complainant also argues that the main content of the website found at the Disputed Domain Name is a loan calculator and that the website also includes sponsored links to products and services which compete with those offered by the Complainant. The Disputed Domain Name is thus being used, says the Complainant, to attract visitors away from the Complainant and to tout to these visitors competing goods and services.
The Complainant contends that this is not a legitimate non-commercial or fair use of the Disputed Domain Name in view of the fact that the Respondent is generating click through revenues and that the Respondent is not authorized to make such use of BARCLAYS.
In the Complainant’s view, it is beyond doubt that the Respondent was aware of the Complainant’s rights in BARCLAYS at the time of registering the Disputed Domain Name. This is so because BARCLAYS is very famous and the Respondent has effectively admitted that it was aware that it was using the Complainant’s trade marks in pre-action correspondence.
The Complainant also contends that the Respondent’s registration of the Disputed Domain Name has prevented the Complainant from registering a domain name which corresponds with the Complainant’s trade mark; and, that 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 mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In reaching its decision in these proceedings, the Panel has undertaken some limited investigations including visiting the website hosted at Disputed Domain Name (the “Website”). The Panel notes the following material points relating to the Website which are not referred to in the Complaint:
Near the top of the main page, quite prominently, appears a disclaimer which reads “Banklocationsmaps.com is an independent enterprise and has no connection or affiliation with Barclays Bank or its associated companies.” (The Respondent is known by <banklocationsmaps.com>.)
Below the disclaimer there is a browsing function to enable visitors to locate branches of the Complainant (and only of the Complainant). Branches are sorted by town. Clicking on the town of interest displays a list of all the branches in that town and gives the address, opening times and telephone number for each branch. The location of each branch is also shown on a Google map thumbnail which can be expanded by clicking on it.
Ads by Google are also prominent on the main page: they are most prominent in a box on the right hand side but are also present in a menu bar across the top of the page. These list links to, or display advertisements for, several websites offering products and services some of which appear to compete with those offered by the Complainant.
The contents of the main page also include an instant loan calculator function which allows the visitor to obtain an illustration of the financing cost for a particular loan. The visitor is free to select the amount, the period and the interest rate. Using this function then directs one to a link which offers tips and advice on how to reduce the cost of a loan. Around these tips and advice are more Ads by Google.
It is also worth saying a bit more about Ads by Google and how they work. Ads by Google appear on websites that use Google's AdSense program to show advertisements. The advertisements displayed are either based on the content of the page one is viewing or intended to reflect the interests of the visitor based on their recent browsing history. The content of the links listed in the Ads by Google section of the Website are therefore not controlled by the Respondent.
To make an order for the transfer of the Disputed Domain Name, the Panel must be satisfied under paragraph 4(a) of the Policy that each of the following three elements is present in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in 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
As set out in section 4 (Factual Background) of this Decision, the Complainant is the owner of trade mark rights in the name BARCLAYS.
The Disputed Domain Name consists of three words “Barclays”, “Bank” and “Locations”. Of these, the first is identical to the Complainant’s trade mark. It is also the most distinctive element of the Disputed Domain Name, not being a word used in every day parlance. By contrast, the latter two words are relatively generic in that sense.
In line with previous decisions, the Panel considers these more generic words to have little effect in decreasing the impact of the more distinctive element (i.e., “Barclays”) of the Disputed Domain Name (see TPI Holdings, Inc. v. Carmen Armengol WIPO Case No. D2009-0361 and cases cited therein). Moreover, the Panel finds that, in this case, given the nature of the Complainant’s business, the word “Bank” immediately after “Barclays” in the Disputed Domain Name serves to increase the risk of confusion.
Accordingly, the Panel has little hesitation in finding that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and that the requirement under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
One of the purposes of the Website is to enable visitors to locate the Complainant’s (and only the Complainant’s) branches and ATMs. This service appears to be functional and, although the Complainant says little about it in the Complaint, there is no suggestion that it was established only after the Respondent was given notice of the dispute. Moreover, there is no charge for using this service and the use of “Barclays” may be said to be necessary to describe the service offered by the Respondent on the Website. Furthermore, there is a prominent disclaimer explaining that the Respondent has no connection with the Complainant.
Based on these factors, the Respondent might be able to demonstrate a legitimate interest in the Disputed Domain Name on the basis of either offering a bona fide service (paragraph 4(c)(i) of the Policy) or noncommercial or fair use (paragraph 4(c)(iii) of the Policy).
Another aspect of the Website, however, is that the Respondent generates revenue from pay per click links, in particular those of Ads by Google. This appears to be a relevant consideration in determining whether the Respondent has a legitimate interest in the Disputed Domain Name.
Under paragraph 4(c)(i) of the Policy, the offering of a service is considered to be bona fide if the service offered relates exclusively to the goods or services of the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent WIPO Case No. D2004-0481). However, where the services offered relate to the goods or services of competitors of the Complainant, the offering of those services will not be considered bona fide (see Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774).
Therefore, if the branch and ATM locator service in the present case was the only aspect of the Website, because it allows visitors to find only the Complainant’s branches and ATMs, the Panel would find this service to be bona fide. However, the Ads by Google aspect of the Website exposes visitors to goods and services offered by competitors of the Complainant. In the Panel’s view, if this aspect of the Website is more than merely incidental to the branch and ATM location service, then it suggests that the Respondent’s service is not bona fide.
Under paragraph 4(c)(iii) of the Policy, fair use has been found in circumstances where the use of a trade mark in the domain name in dispute is not misleading because the trade mark owner is identified as the source of the goods or services and any relationship between the operator of the domain name in dispute and the trade mark owner is disclaimed (see NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903). However, it is not fair use for the Respondent to use the Complainant’s trade mark to direct visitors to the Disputed Domain Name to goods or services offered by competitors of the Complainant (HBP, Inc. v. Front and Center Tickets, Inc. WIPO Case No. D2002-0802).
Previous UDRP panels have suggested that the incidental inclusion of click through advertising may not be sufficient to displace the non-commercial use defence where the non-commercial content of the site is substantial (Affinion Publishing LLC v. Link Domain/ Daniel Concepcion WIPO Case No. D2008-0316). However, where the non-commercial content of a site is used as a sham to create artificially an alternative purpose for the site (i.e., merely as a front to legitimise the use of the trade mark), previous UDRP panels have been less sympathetic (Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto, WIPO Case No. D2007-1841).
Again, the Panel is of the view that if the branch and ATM locator service was the only content on the Website, the Respondent would have a legitimate interest in the Disputed Domain Name on grounds of non-commercial or fair use. The Ads by Google aspect of the Website, however, calls that legitimate interest into question.
The question for the Panel to determine is, therefore, whether the Ads by Google content of the Website is sufficient to move the Respondent outside the safe harbours of paragraph 4(c)(i) and (iii) of the Policy. This is a fact sensitive question and the following factors appear relevant to the Panel.
The Website is clearly not a ”web farm” (i.e., a collection of hyperlinks to other websites): it has real and useful content besides the A by Google. Furthermore, the Respondent appears to have invested time and effort in collating the information on the Complainant’s branch and ATM locations and organizing this into its browsing function. How much work this has involved, the Panel does not know, although the Panel notes that the basic information which is made available to the public on the Respondent’s website (the address, phone number and opening times of each branch) is also available, albeit through a differently organized browsing function with different features, on the Complainant’s website. It is unclear to the Panel whether the information on the Complainant’s branch and ATM locations is current and kept up to date, although it seems unlikely that the location, opening times or telephone numbers of these would change frequently.
The Respondent has other websites which offer a similar service for other banks (i.e. competitors of the Complainant) and indeed the main operating site of the Respondent, “www.banklocationmaps.com” is descriptive of this service. This demonstrates that the Respondent is in the habit of collecting this type of information and organizing it in a particular way to allow visitors to its sites to find the location of a particular bank branch or ATM. This is the main service that the Respondent’s websites offer, sometimes tailored to a particular bank (e.g., the Complainant in the case of the website hosted at the Disputed Domain Name), sometimes not (e.g. in the case of “www.bankslocationmaps.com”). Only where the service is tailored to a particular bank, does the Respondent appear to be in the habit of using the trade mark of that bank in its domain names.
All of the Respondent’s websites feature Ads by Google. It is clear from this that the Respondent seeks to use traffic on its websites to generate revenue from click through advertising. That is a legitimate and indeed popular business model for many Internet sites.
One school of thought might say that the fact that the Website displays advertisements (through Ads by Google) for products and services which compete with those of the Complainant, is no different from the Website directly offering those competing goods or services for sale itself. This being so in the sense that a visitor to the Disputed Domain Name is exposed to competing products or services, and by virtue of such exposure the Respondent hopes to profit.
An alternative school of thought, however, would suggest that competing products or services advertised on, but not offered directly by the Website are to be treated differently on the grounds that to be able to acquire those competing goods or services the visitor must access a different website (which is assumed to be operated by third party and not to use the Complainant’s trade mark in an objectionable way). Put another way, the competing products or services are not offered directly under the Disputed Domain Name and therefore not directly under the Complainant’s trade mark. Moreover, this school of thought would say that Internet users are accustomed to seeing advertising on websites, they know what it looks like and are therefore able to discriminate between a website’s real content and advertising displayed on the website.
Looking at the issue from the latter point of view, the situation appears not to be that far removed from the display of sponsored links to competitors’ websites on the results page of a search engine when a particular trade mark is used as the search term.
A further feature to be borne in mind is that the way in which Ads by Google works means that the Respondent does not control which advertisements appear on the Website, although because of the nature of the Website, the Respondent will know that the advertisements are likely to relate to products or services that compete with those offered by the Complainant.
The Ads by Google are prominent on the Website. In particular, those in the box on the right hand side of the main page, which in this case, are more colorful than the rest of the content of the page and sometimes contain moving images, which naturally draw the eye.
In light of the above considerations, the Panel finds, after lengthy consideration, that the Ads by Google, as they appear on the Website, are sufficient to deprive the Respondent of a legitimate interest in the Disputed Domain Name. In reaching this conclusion, the Panel has been particularly influenced by the: (i) nature of the information content of the Website (more than a static sheet of information, but not something that requires continual investment of time and effort to keep it up to date); and, (ii) the strong visual impact of the Ads by Google in comparison with the information content of the Website, which arises from the way in which they are displayed (size, color, animation, position). The overall impression which an ordinary Internet user is likely to get from looking at the Website is that there is a significant, and more than incidental, exposure to products or services that compete with those of the Complainant.
In the Panel’s view, these facts, on balance, take the Respondent outside paragraphs 4(c)(i) and (iii) of the Policy.
For completeness, although not necessary in light of the finding made in the paragraph above, the Panel finds that the loan calculator function, which is not tied to, or present to promote any particular product or service, and which is free to use, does not assist the Complainant’s case on lack of legitimate interest.
The Panel’s view is that a prima facie case that the Respondent lacks rights or legitimate interests is made out and the burden shifts to the Respondent to rebut that case. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. In the absence of any Response by the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests (Betsson Malta Limited v. John Droker, WIPO Case No. D2010-0883) and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To establish bad faith under paragraph 4(b)(ii) of the Policy requires that it be shown that the Respondent is in the habit of registering domain names incorporating other people’s trade marks to prevent the owners of those trade marks from doing so. The Complainant has made no allegation that the Respondent has engaged in such conduct previously. However, the Panel’s investigations indicate that the Respondent has registered several domain names which incorporate the well-known trade marks of other banks. These other domain names all appear to contain the word “locations” and sometimes “bank” after the trade mark.
The Panel does not believe that the Complainant would have been interested in the Disputed Domain Name, but for the Respondent’s use of Ads by Google in connection with it. The Complainant already has websites at <barclays.com> and <barclays.co.uk> (among others most likely). These appear to be the most valuable domain names for the Complainant and there is no suggestion in the Complaint that the Disputed Domain Name would be a valuable addition to this complement (other than in the sense that it would put a stop to the objectionable conduct of the Respondent). Furthermore, the Panel cannot see any reason why the Complainant would ordinarily wish to register a domain name including its trade mark and the word “locations” to further its business. In light of the above, the Panel finds that the Complainant’s case under paragraph 4(b)(ii) of the Policy is not made out.
The only other ground of bad faith put forward by the Complainant is that 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 mark under paragraph 4(b)(iv) of the Policy. In this regard the Panel has no difficulty in finding that the Respondent has intentionally used the Complainant’s mark, knowing that it would give the Disputed Domain Name an air of authenticity when it appears for example in a list of search engine results and, as a result, attract Internet users to the Website. The Panel has in mind here that in correspondence with the Complainant, the Respondent has said that the purpose of the Website is to make it easy for the Complainant’s customers to find branches “quickly and easily through Google”. The Panel takes this to mean that most traffic to the Website comes via search engines rather than users typing the Disputed Domain Name directly into the address bar. Furthermore, it stands to reason that the Respondent is interested in maximizing the number of visitors to its website to maximize the money it makes from click through advertising (the only revenue stream which the Website appears to generate).
The only difficulty is to decide whether or not there is a likelihood of confusion when there is a prominently sized and placed disclaimer on the Website.
Previous UDRP panels have held that disclaimers cannot rectify a misrepresentation once action has been taken in reliance on it, i.e. once a user lands on the site and is able to read the disclaimer, it is too late; he has already arrived at the site as a result of confusion (Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224).
The Panel agrees with this reasoning, given that when selecting a result from a list generated by a search engine, the factors that are most likely to influence selection are the position in the list and the domain name; the more closely the domain matches where one expects to find what one is looking for, the more likely one is to click on it.
In this case, although the Panel accepts that, once a user lands on the Website, any confusion is likely to be dispelled and that it only requires a single click to back out of the Website, that does not alter the fact that visitors will be lured to the Website under the false impression that it is connected with the Complainant. Moreover, once visitors land on the Website, they will be exposed to advertisements for goods or services which compete with the Complainant’s. Furthermore, some visitors, as a result of curiosity, may stay on the Website even after the confusion has been dispelled and click on a particular advertisement which takes them to an offer of products or services that compete with those of the Complainant.
Thus the Panel finds that the Disputed Domain Name was registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the requirement under paragraph 4(a)(iii) of the Policy is satisfied.
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 <barclaysbanklocations.com> be transferred to the Complainant.
Dated: March 29, 2011