WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Andrew Barnes
Case No. D2011-0874
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Andrew Barnes of Jackson, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barclayslimited.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2011. On May 23, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Name. On the same day, Network Solutions, LLC 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 May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 1, 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.
Further, the Panel is satisfied that the Center has correctly forwarded a complete copy of the Complaint (including any annexes) to the Respondent by email to the registrar-confirmed email address of record and that Written Notice (as defined under paragraph 1 of the Rules) of the Complaint has been sent to any available postal addresses and facsimile addresses.
4. Factual Background
The Complainant, Barclays Bank PLC, is a United Kingdom registered public limited company that has traded under variations of that name since 1896.
The Complainant holds separate registrations for the BARCLAYS mark, and variations of that mark, in numerous countries for financial related services. These include a United Kingdom registration numbered 1286579 from October 1, 1986, for the series of word marks BARCLAY and BARCLAYS in class 36 and Community Trademark Registration number 55236 from January 26, 1999, for the word mark BARCLAYS in classes 9, 16, 35, 36 and 42.
The Complainant conducts business on the Internet using numerous domain names containing the word “Barclays” including <barclays.com> and <barclays.co.uk> with a financial services business website resolving from these domains. The Complainant also sells its financial services through numerous branches.
On August 6, 2010, the Respondent registered the Disputed Domain Name <barclayslimited.com>.
The Respondent does not appear to use the Disputed Domain Name as of the date of this Decision.
5. Parties’ Contentions
The Complainant cites its registrations of the trademark BARCLAYS including in the United Kingdom and European Union and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.
The Complainant submits that its trademark is distinctive and well-known and that its rights in this mark predates the Respondent’s registration of the Disputed Domain Name <barclayslimited.com>. It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark BARCLAYS and that the similarity is not removed by the addition of the descriptive word “Limited”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks. The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant submits as follows: “The Respondent is not known by the domain name and has a complete lack of intellectual property rights in the domain name. The domain name is so obviously connected to a particular product or service and the Respondent has no connection to that product or service.” The Complainant contends that the fact that the Respondent has registered the Disputed Domain Name establishes “opportunistic bad faith” use and registration (citing: Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163). The Complainant also argues that the mark is so well known that the Respondent “must have been aware” of its mark when registering the Disputed Domain Name (presumably alluding to the decision: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). On the issue of use, the Complainant contends that the Respondent is the registrant of 554 other domain name registrations and is therefore in the business of opportunistically registering domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the joined Respondent by reasonable means.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BARCLAYS in the United Kingdom and European Union. The Panel finds that the Complainant has rights in the mark BARCLAYS that date back, based on United Kingdom Registration Number 1286579 from October 1, 1986, and strong common law rights that predate that registration.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark BARCLAYS (b) followed by the word “limited” (c) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “BARCLAYSlimited”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words such as, in this case, “limited”. (See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark)). Panels have also found that combining a well-known trademark with a generic suffix tends to aggravate, not dispel, likelihood of confusion (see: Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).
There is no evidence of “demonstrable preparation to use” the Disputed Domain Name by the Respondent but this in itself does not advance this issue. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademarks. The Complainant further contends that the Respondent “will never be capable of using the (Disputed) Domain Name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between the Respondent and the BARCLAYS trademark.” The Complainant contends that no demonstrable preparation for use of the Disputed Domain Name had been made by the Respondent. The evidence provided assists little in an assessment of whether the Respondent is a fan, a critic, a miscreant or into which category he falls.
In the absence of a Response by the Respondent, this Panel finds that the Respondent is plainly making an illegitimate commercial use of the Disputed Domain Name and finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [relevantly]:
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark BARCLAYS is so well-known internationally for financial services that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the BARCLAYS mark without knowing of it. The Respondent either know or should have known of the Complainant’s trademark or has exercised the kind of willful blindness that numerous panels have held support a finding of bad faith (See WIPO Overview 2.0, paragraph 3.4).
As stated above under Section 4, the Panel notes that the Respondent does not appear to use the Disputed Domain Name as of the date of this Decision. It is also well settled that inaction in the form of passive holding of a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (e.g.: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671). This Panel finds that on the facts of this case the passive holding of the Disputed Domain Name by the Respondent constitutes a domain name being used in bad faith under paragraph 4(b) of the Policy.
This Panel finds that the Respondent has taken the Complainant’s well-known trademark BARCLAYS and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, and is holding it passively in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Name <barclayslimited.com> be transferred to the Complainant.
Dated: July 15, 2011