WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Case No. D2011-1009
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 Quijada Jones of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <barclayscapitalonline.com> is registered with Launchpad.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 15, 2011, the Center transmitted by email to Launchpad.com Inc. and to its hosting company HostGator.com LLC a request for registrar verification in connection with the disputed domain name. On June 30, 2011 Launchpad.com Inc’s hosting company HostGator.com LLC transmitted by email to the Center its verification response confirming that the disputed domain name is registered with Launchpad.com Inc. and also that the Respondent is listed as the registrant with providing his contact details.
On July 1, 2011 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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2011.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 26, 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
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 extensive international presence in Europe, the Americas, Africa and Asia. The Complainant currently operates in over 50 countries, employs approximately 144,000 people, and moves, lends, invests and protects money for more than 48 million customers and clients worldwide. Barclays Capital is the investment banking division of the Complainant.
The Complainant owns numerous United Kingdom and Community Trademarks for wide range of goods and services including financial services, which consist and/or comprise of words Barclays and Barclays Capital, e.g.:
- United Kingdom Trademark Registration No. 1314306 BARCLAYS and design, registered on June 24, 1987
- United Kingdom Trademark Registration No. 2148576 BARCLAYS CAPITAL and design, registered on October 21, 1997,
- Community Trademark Registration No. 55236 BARCLAYS, registered on January 26, 1999,
- Community Trademark Registration No. 736298 BARCLAYS CAPITAL, registered on February 25, 1999.
The Complainant is – among others – the registrant of domain names <barclays.co.uk> and <barclays.com> since August 1996 and November 23, 1993 and uses these domain names to promote and offer its banking and financial related goods and services.
The disputed domain name was obtained on December 18, 2010 and is being used as a holding page containing a number of banking and finances related search terms matching the Complainant’s core goods and services.
The Complainant tried several times to solve this conflict in a peaceful manner, but the Respondent never replied.
5. Parties’ Contentions
The Complainant contends that the disputed domain name contains a word which is confusingly similar to the name BARCLAYS in which it has trademark and common law rights, and inclusion of the generic word Capital does not avoid confusion. In fact since the term “capital” is synonymous with the Complainant’s core services, addition of the word “capital” is more likely to increase confusion with the Complainant.
The Complainant further submits that trademarks and the goodwill associated with the name BARCLAYS are the property of the Complainant and cannot pass to any third party without a formal assignation. The Complainant contends that it has not assigned any such rights in favor of the Respondent, neither is he known by the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith, since it functions as a holding page containing a number of banking related search. By clicking on these search terms, Internet users are directed to a web pages consisting of finance related sponsored links which relate to competitor products and services to those offered by the Complainant. The disputed domain name has been and is being used to redirect internet traffic intended for the Complainant away from the Complainant and to competitor goods and services, with intention to generate income for the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a respondent’s default does not automatically result in a decision in favor of the complainant.
The complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or services mark in which the complainant has rights;
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name, and
(iiI) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, firstly that it has rights in a trade or service mark, and secondly that the disputed domain name is identical of confusingly similar to the trademark.
It has been a consensus among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant provided to the Complaint an exhaustive schedule of its various trademarks consisting of and/or comprising – among others – Barclays and Barclays Capital. For the purpose of this proceeding, the Panel established that the Complainant valid Community Trademark Registration No. 736298 BARCLAYS CAPITAL, registered on February 25, 1999 satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in BARCLAYS CAPITAL, the Panel next assessed whether the disputed domain name, <barclayscapitalonline.com> is identical of confusingly similar to the trademark. The disputed domain name fully incorporates the Complainant's BARCLAYS CAPITAL trademark.
According to paragraph 1.2 of “WIPO Overview 2.0” in order to satisfy the threshold test for confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name <barclayscapitalonline.com> differs from the Complainant’s trademark BARCLAYS CAPITAL in having the descriptive term “online” added to the trademark, and in the view of this Panel this amount to confusing similarity between the Complainant’s trademark and the disputed domain name. It is likely to believe that consumers will think that the domain name <barclayscapitalonline.com> is connected with the Complainant, and for these reasons this Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice to;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted uncontested evidence that it owns rights in the trademarks BARCLAYS and BARCLAYS CAPITAL and that the disputed domain name has been used to redirect consumers to websites that for the most part relate to either identical or similar products and services offered by the Complainant.
The Complainant never authorized the Respondent to use its BARCLAYS or BARCLAYS CAPITAL trademarks in a domain name, or to use these names in any other way. The Complainant’s prior rights in the trademark BARCLAYS, and for the purpose of this administrative proceeding in particular in the trademark BARCLAYS CAPITAL long preceded the date of registration of the disputed domain name.
It has been a consensus view in the WIPO Overview that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests the burden of production shifts to the respondent.
By defaulting and failing to respond, the Respondent has failed to offer this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, and circumstances brought forward by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(iiI you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Given the widespread recognition of the BARCLAYS mark, and incorporation of the Complainant’s BARCLAYS CAPITAL mark into the disputed domain name in its entirety is an indicative to the Panel that the Respondents have obviously been aware of these trademarks and have registered the disputed domain name to misappropriate the value of these trademarks of the Complainant, which is indicative of bad faith registration of the disputed domain name.
The disputed domain name is being used as a holding page containing a number of banking and finance related search terms and links which relate to products and services offered by the Complainant, a circumstance which is indicative of bad faith use of the disputed domain name by the Respondents.
The disputed domain name is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondents and the Panel find this as interference with the legitimate commercial business of the Complainant, and in addition to the above a further evidence of satisfying paragraph 4(a)(iii) of the Policy.
For 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 <barclayscapitalonline.com> be transferred to the Complainant.
Dated: August 9, 2011