WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Domain Management
Case No. D2011-1016
1. The Parties
The Complainant is Barclays Bank PLC of United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Pinsent Masons LLP of UK.
The Respondent is Domain Management of United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <barclaycardkredit.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 16, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2011, Tucows 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 June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2011.
The Center appointed Thomas Hoeren as the sole panelist in this matter on July 28, 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. Factual Background
The Complainant is Barclays Bank PLC, a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an international presence in Europe, the Americas, Africa and Asia. The Complainant’s business comprises four wholly owned Business Units: UK Retail Banking, Barclaycard, Barclays Africa and Western Europe Retail Banking. Barclaycard is a multi-brand credit card and consumer lending business which also processes card payments for retailers and merchants, and issues credit and charge cards to corporate customers and the UK government.
The Complainant is the registered proprietor of a variety of UK registered and Community registered trademarks in the names, BARCLAYS and BARCLAYCARD in a range of classes including in relation to financial services. The Complainant is the registrant of a portfolio of domains including <barclaycard.co.uk> which was registered prior to August 1996, <barclaycard.com> which was registered on August 6, 1997, and <barclays.com> which was registered on November 23, 1993.
The Respondents registered the disputed domain name on June 19, 2010.
5. Parties’ Contentions
The Complainant contends that:
1. The disputed domain name is substantially similar to the Complainant’s trademark BARCLAYCARD.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. The disputed domain name is used as a holding page for finance related sponsored links which relate to competitor products and services to those offered by the Complainant. 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 Respondent. The Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. The content on the website under the disputed domain name is tailored to match the Complainant’s core goods and services. This means that when Internet users view the content displayed at the website under the disputed domain name and click one of the sponsored links on the website the Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAYCARD in the disputed domain name. Furthermore, the Respondent offered to transfer the disputed domain name for 740 Euros (email of August 27, 2010, see Annex 8) which amounts to a bad faith case due to the excessive price demand.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable.”
Paragraph 4(a) of the Policy states that, for the Complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <barclaycardkredit.com> is confusingly similar to the Complainant’s trademark,BARCLAYCARD since it fully incorporates Complainant’s trademark adding only the necessary generic top level domain of “.com” and the essentially descriptive (albeit with a “k”) term “kredit”, which does not add the required level of distinctiveness in regards to this element. (see Barclays Bank PLC v. Arthur Kulik / Whois Privacy Protection Service, Inc., WIPO Case No. D2010-1992, where the domain name in dispute was <barclayskbank.com>).
B. Rights or Legitimate Interests
The Respondent has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to providing a showing of prior rights or legitimate interests of the said domain name. As such, the Respondent has failed to rebut Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests, including, inter alia, that the Complainant does not appear to have authorized the Respondent to use its trademarks and in particular to register the disputed domain name composed of the Complainant’s trademarks.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith. It had to be taken into consideration that the Respondent incorporated the entire trade mark BARCLAYCARD in the disputed domain name. Obviously, the Respondent had, at the relevant time, used the webpage to provide sponsored links to other websites which include those of the Complainant’s competitors. These facts lead to a strong presumption that the Respondent had registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Furthermore, the Respondent offered to sell the disputed domain name for a price of around 740 Euros which is clearly and excessively overprized compared to the out-of-pocket costs.
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 <barclaycardkredit.com> be transferred to the Complainant.
Dated: July 30, 2011