WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. PrivacyProtect.org / Pantages Inc
Case No. D2011-1215
1. The Parties
Complainant is Barclays Bank PLC, of London, the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
Respondent is PrivacyProtect.org / Pantages Inc, of Nobby Beach, Australia, and Caracas, the Bolivarian Republic of Venezuela, respectively.
2. The Domain Name and Registrar
The disputed domain name <barclaycapital.com> (the “Domain Name”) is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 18, 2011, the Center transmitted by email to Power Brand Center Corp a request for registrar verification in connection with the disputed Domain Name. Although the Registrar did not reply to the several Registrant Verification Request and reminders, the Center found out that registrant’s contact details had been disclosed in the public WhoIs database. Consequently, the Center sent an email communication to Complainant on August 5, 2011 providing the registrant and contact information disclosed by the public WhoIs database, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 9, 2011.
On August 10, 2011, the Center informed the parties and the Registrar about the expiration of the Domain Name on October 11, 2011 and requested them to take the necessary actions to keep the Domain Name alive. To the extent necessary, the Complainant would be entitled to rely on ICANN’s Expired Domain Name Deletion Policy, paragraph 188.8.131.52, which provides for an option to renew or restore the Domain Name subject to the present UDRP dispute under the same commercial terms as the registrant (being the Respondent in these proceedings).
On August 11, 2011, the Center requested Complainant to provide it with a Word format of the Complaint and the amended Complaint for administrative use only, which were received by the Center on August 11, 2011.
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 Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2011.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 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.
The Domain Name in fact expired on October 11, 2011.
4. Factual Background
Complainant is Barclays Bank PLC, a company incorporated in England. 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 an extensive world-wide presence. Complainant owns dozens of United Kingdom (UK) Registered trademarks and Community Registered trademarks (CTM) for BARCLAY and BARCLAYS in a range of classes including in relation to financial services. (See Annex 4 to the Complaint.) Those trademarks include, among others:
Trademark Registration No. Registration Date
1. BARCLAYBANK 1336098 (UK) February 19, 1998
2. BARCLAYCARD 1286580 (UK) October 1, 1986
3. BARCLAYS 1314306 (UK) June 24, 1997
4. BARCLAYS CAPITAL 2148576 (UK) October 21, 1997
Complainant is also the registrant of the domain name <barclayscapital.com>.
Complainant has had a significant reputation in the financial service industry over the last 115 years. Complainant has traded as “Barclays PLC” since 1985. Prior to this, Complainant traded as “Barclays Bank PLC”, “Barclays Bank Limited” and “Barclay & Company Limited” since 1896. Complainant currently operates in over 50 countries and employs approximately 144,000 people. Complainant has more than 48 million customers and clients worldwide. Complainant has also received numerous awards and accolades in the United Kingdom and worldwide. Complainant used its BARCLAYS trademarks, including BARCLAYS CAPITAL, as an identifier of its services long before Respondent registered the Domain Name on October 11, 2004.
5. Parties’ Contentions
Complainant’s main arguments are as follows:
1. Identical or Confusingly Similar
Complainant contends that the Domain Name is confusingly similar to Complainant’s BARCLAYS trademark. In particular, Complainant argues that BARCLAY is the only trademark utilized in the Domain Name and “Capital” is a generic word that does not avoid confusion. In particular, Complainant argues that since the term “Capital” is synonymous with Complainant’s core services, it is more likely to increase confusion.
2. Rights or Legitimate Interest
Complainant contends that Registrant has no rights or legitimate interest in the Domain Name. In particular, Complainant contends that the Domain Name is being used to redirect internet traffic intended for Complainant away from Complainant and to competitor products and services, with the intention to generate income for Respondent. Complainant further contends that the Domain Name is used as a holding page containing a number of banking related search terms. Clicking on those search terms takes the internet user to a webpage consisting of finance related sponsored links which relate to competitor products and services to those offered by Complainant. Complainant further contends that the content on the website at the Domain Name is tailored to match Complainant’s core goods and services, resulting in initial interest confusion. Complainant additionally contends that it did not authorize Respondent to use any domain name incorporating Complainant’s trademark.
3. Registered and Used in Bad Faith
Complainant contends that Respondent registered and used the Domain Name in bad faith. In particular, Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with Complainant’s trademarks. Complainant contends that it is reasonably anticipated that this Domain Name will divert potential customers from Complainant’s business due to the presence of links to competitor websites. Finally, Complainant contends that Respondent will never be capable of using the 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 Respondent and Complainant and/or between Respondent and the BARCLAYS trademark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Analysis of the Complaint
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
A. Identical or Confusingly Similar
Complainant has established its rights in the trademark BARCLAYS by virtue of the evidence of its dozens of UK Registered trademarks and CTM for BARCLAY and BARCLAYS in a range of classes including in relation to financial services, and its registered domain names <barclays.com> and <barclayscapital.com>. The Panel is therefore satisfied that BARCLAY and BARCLAYS are registered trademarks owned by Complainant.
The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer to this question is yes. Respondent's Domain Name incorporates in its entirety the BARCLAY trademark. The additional word “capital” is descriptive for financial and banking services. The addition of this descriptive word does not distinguish the Domain Name from Complainant’s BARCLAY and BARCLAYS trademarks. The fact that a domain name wholly incorporates a complainant's registered trademark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000) (“parts” added to mark EAUTO in <eautoparts.com>).
The Domain Name is also nearly identical or confusingly similar to the domain name <barclayscapital.com> that is registered to Complainant (i.e., barclay versus barclays).
For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s BARCLAY and BARCLAYS trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the Domain Name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., Shi Young, WIPO Case No. D2000-0867).
Complainant should nevertheless make out a prima facie case that Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Complainant owns dozens of UK Registered trademarks and CTM for BARCLAY and BARCLAYS and has used each of these trademarks as an identifier of its services long before Respondent registered the Domain Name on October 11, 2004. (See Annex 4 to the Complaint.) Complainant is also the registrant of the domain name <barclayscapital.com> where it conducts sales and marketing of its services under the BARCLAYS trademark. On the other hand, Respondent does not appear to own a registered trademark in the term “barclay” and does not otherwise appear to trade under the name “barclay.” Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the terms “barclay” or “barclay capital” by Respondent or any person operating the website to which the Domain Name redirects internet users. Finally, it does not appear that Respondent is known by the Domain Name.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name.
Furthermore, as pointed out by Complainant, the Domain Name redirects website users to a webpage consisting of finance related sponsored links which relate to competitor products and services to those offered by Complainant. This is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
For the above reasons, the Panel finds that Respondent does not have rights or legitimate interest with respect to the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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
(ii) 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 website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As already mentioned, Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the Domain Name. Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Limited v. Mr. University, University, Oxford, WIPO Case No. D2000-0944).
The evidence in these proceedings, which is not rebutted by Respondent, is on balance sufficient to show that this Respondent had attempted to attract for commercial gain Internet users to the Domain Name website by creating a likelihood of confusion with Complainant’s BARCLAY and BARCLAYS trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the use of the Domain Name is to take advantage of the similarity between the Domain Name and Complainant’s trademarks to draw Internet users to that site for commercial advantage. No convincing evidence has been presented showing Respondent has any connection to the name “barclay.”
Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under Paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered to Respondent (on October 11, 2004), Complainant’s BARCLAYS trademark had a significant reputation within the financial service industry for more than 100 years.
Moreover, Complainant had been the owner of UK Registered trademarks and CTM for the BARCLAY and BARCLAYS trademarks in various jurisdictions throughout the world since at least as early as 1986. (See Annex 4 to the Complaint). Accordingly, the evidence provided by Complainant with respect to Respondent’s use of the Domain Name indicates that Respondent has used the Domain Name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this Panel is satisfied that Respondent has used the Domain Name in bad faith.
For the above reasons, the Panel finds that Complainant has shown that the Domain Name has been registered and is being used in bad faith by Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <barclaycapital.com>, be transferred to Complainant.
Andrew J. Park
Dated: October 12, 2012