WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Barclaysmobile.com / Rampe Purda
Case No. D2011-0124
1. The Parties
The Complainant is Barclays Bank PLC of London, the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Barclaysmobile.com of Shanghai, the People’s Republic of China / Rampe Purda of Hailuoto, Finland.
2. The Domain Name and Registrar
The disputed domain name <barclaysmobile.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (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 the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2011, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2011 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 January 28, 2011. On January 25, 2011, the Center also transmitted an email to the parties in both Finnish and English language regarding the language of proceedings. On January 28, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on February 24, 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. Language of the Proceedings
The Complainant has been submitted in English.
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the registration agreement for the disputed domain name is Finnish. There is no indication that the registration agreement specifies that any other language should apply and there has been no agreement between the parties that the proceedings should be in English.
The Center duly sent its standard language communication to both parties, in both English and Finnish. Amongst other things, this notice stated that the Complainant could submit a request for English to be the language of the proceedings, to include arguments and supporting material as to why the proceedings should be conducted in English. The Center observed that such considerations may include for example the language used in pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties, and any other evidence of familiarity with the requested language.
The Complainant has indeed requested that English be the language of the proceeding. The reason given is that there have been several cases under the Policy, all of which the Respondent has requested to be conducted in Finnish, yet when the complainants requested that the proceedings be conducted in English, the Respondent made no response to the request. This submission is not entirely clear. The Complainant has not identified the cases or explained the circumstances referred to. What reasons, if any, did the Respondent give for requesting that Finnish be the language of those cases? Or does the Complainant mean to say, not that the Respondent requested Finnish, but rather that – as here – Finnish was the language of the relevant registration agreements, and that – also as here - the Respondent did not respond to the requests by complainants that English be the language of the proceedings? Having examined a number of other decisions under the Policy involving the same Respondent, it appears to the Panel that the latter is in fact the case.
A number of decisions under the Policy have considered the principles which panels should take into account when determining the language of the proceedings.
For example, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration in that it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; HAZET-WERK Hermann Zerver GmbH & Co. KG v. wilhelm jacobus izak, WIPO Case No. D2011-0040.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See, e.g., Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
In this case, the Panel notes the following:
The language communication from the Center (in English and Finnish), warned the Respondent that if the Respondent did not object by the due date to a language request by the Complainant, the Center would proceed on the basis that the Respondent did not object to the Complainant’s request that English be the language of the proceedings. Yet the Respondent did not object.
It appears that the Respondent has not responded to similar requests in other cases under the Policy.
The disputed domain name uses English language spelling.
While there was no printout of the website at the disputed domain name exhibited to the Complaint, the Panel has visited the website itself (as it is entitled to do – see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions) and ascertained that it was in the English language.
Taking all of these matters together, the Panel concludes that in the circumstances there is a reasonable likelihood that the Respondent is conversant in the English language, that the Respondent is unlikely to be prejudiced should English be adopted as the language of the proceedings and that to require translation of the Complaint would involve adding undue cost and delay to the proceedings.
Accordingly, in accordance with paragraph 11(a) of the Rules, the Panel determines that English should be the language of the proceeding.
5. 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. The Complainant operates in over 50 countries. It employs approximately 144,000 people and has millions of customers and clients worldwide.
The Complainant and its predecessors have used the name “Barclays” since 1896.
The Complainant owns a range of registered trade marks for BARCLAYS including UK trade mark number 1286579 filed on October 1, 1986, in class 36 (Registration date: March 3, 1989).
The disputed domain name was registered on August 6, 2010.
The disputed domain name has been used for a website with sponsored links to finance-related and other websites.
6. Parties’ Contentions
Identical or Confusingly Similar
In addition to its registered trade marks, through its use of the name “Barclays” over the last 114 years the Complainant has acquired goodwill and a significant reputation in the areas in which it specialises. As such, the name has become a distinctive identifier associated with the Complainant and the services it provides.
The disputed domain name contains the Complainant’s trade mark. The addition of the generic word “mobile” does not avoid confusion. In fact, given the trend for banks to offer software and applications for mobile banking, it is highly likely that the addition of the term “mobile” is more likely to increase confusion amongst Internet users.
Rights or Legitimate Interests
The Respondent is not known by the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content found at the disputed domain name consists of pay per click sponsored links. Such activity does not qualify as non-commercial or fair use.
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 trade mark.
Registered and Used in Bad Faith
The disputed domain name is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor’s products and services, with the intention of generating income for the Respondent.
The Respondent registered the disputed domain name knowing that it was likely to attract interest from Internet users 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.
The Respondent has not replied to correspondence from the Complainant’s solicitors.
The Respondent has been the subject of adverse findings in at least eight UDRP cases.
Given the widespread use, reputation and notoriety of the Complainant’s famous mark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the Complainant’s mark.
The disputed domain name has also prevented the Complainant from registering a domain name which corresponds to the Complainant's trade marks contrary to paragraph 4(b)(ii) of the Policy.
The Respondents have 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.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark BARCLAYS arising from its registered trade marks as well as common law rights derived from the extensive, worldwide use of that distinctive name for over 100 years.
The disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “mobile”. That term is insufficient to differentiate the disputed domain name from the trade mark; on the contrary it enhances the connection given the propensity for financial institutions to offer mobile-related services.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain names could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
It is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
The website at the disputed domain name has been used as a parking page with sponsored links to finance-related and other websites.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
Further, the Respondent has been found to have registered and used domain names in bad faith in at least eight other cases under the Policy. See, e.g., L'Oréal v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0870.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element 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 <barclaysmobile.com> be transferred to the Complainant.
Dated: March 10, 2011