WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Bar
Case No. D2011-1240
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 Bar of Glasgow, Scotland, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is <barclaysremittancefpuonline.com> and it is registered with MyDomain, Inc. d/b/a NamesDirect (“NamesDirect”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 21, 2011, the Center transmitted by email to NamesDirect a request for registrar verification in connection with the disputed domain name. On the same day NamesDirect 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 July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2011.
The Center appointed David H. Tatham as the sole panelist in this matter on August 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. Factual Background
The Complainant is the owner of numerous United Kingdom and Community trademark registrations for the word “Barclays” either by itself or in combination with other wording or logos. These include the following United Kingdom trademarks:
BARCLAYS (Series), Reg. No. 1286579, registered on October 1, 1986 in class 36;
BARCLAYS, Reg. No. 1314306, registered on June 24 1987 in class 36;
BARCLAYS (Series), Reg. No. 1380658, registered on April 19, 1989, in class 35;
BARCLAYS (Series), Reg. No. 1393351, registered on July 27, 1989 in class 16
BARCLAYS, Reg. No. 2461096, registered on January 11, 2008 in class 36;
BARCLAYS (Logo), Reg. No. 2486135, registered on October 10, 2008 in classes 9 and 36.
The Complainant also owns a portfolio of domain names, including <barclays.co.uk> which was registered in 1993.
The disputed domain name was registered with NamesDirect on July 28, 2010.
5. Parties’ Contentions
The Complainant states that it is a major global financial services provider and has interests in retail banking, credit cards, corporate banking, investment banking, wealth management, and investment management services, with an extensive international presence in Europe, the Americas, Africa and Asia. It currently operates in over 50 different countries and employs some 144,000 people. It moves, lends, invests, and protects money for more than 46 million customers and clients worldwide. Furthermore, the word “Barclays” has been included in the Complainant’s name since 1896 and, as a result, the Complainant claims to have acquired goodwill and a significant reputation such that the name BARCLAYS has become highly distinctive. As noted above, the Complainant owns numerous registrations of trademarks that consist of or contain this name.
The Complainant contends that because the disputed domain name contains the word “Barclays”, which is identical to the name in which the Complainant has goodwill by virtue of its long-standing and widespread use as well as its multiple trademark rights, it is confusingly similar. According to the Complainant no one would choose such a name if it was not with the intention either of creating a false impression of association with itself, or in order to attract business, or to misleadingly divert the public.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name because:
“The Respondent is not known by the disputed domain name.
The disputed domain name resolves to website which contains finance related sponsored links, some relating to products or services offered by the Complainant’s competitors. This site is being used to divert traffic intended for the Complainant away from them and towards its competitors, and it is being done with the intention of attracting income for the Respondent.
The Respondent registered the disputed domain name and is using it knowing that it is likely to divert traffic that is rightly intended for the Complainant. The content of the site at the disputed domain name is tailored to match the Complainant’s core goods and services.
The content found at the disputed domain name is a series of pay-per-click sponsored links from which the Respondent benefits and this is not a legitimate non-commercial or fair use.
The Respondent has never asked for, or been given, permission by the Complainant to use its trade mark BARCLAYS in this or any other domain name”.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith because:
“Given the widespread use, reputation and notoriety of the Complainants name and trademark BARCLAYS, the Respondent must have been aware that when he registered the disputed domain name he was misappropriating the Complainant’s valuable intellectual property.
The Respondent has intentionally attempted to attract internet users to the website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s name and trademark.
The public will always assume that there must be some connection between the Complainant and the disputed domain name, so it could never be used for any legitimate purpose”.
In addition, the Complainant’s legal representatives wrote to the Respondent to inform him of the Complainant’s rights in the name BARCLAYS in October 2010. This letter was returned as being undeliverable. The representatives then contacted the Registrar for the disputed domain name who confirmed that there were no additional contact details for the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the respondent (domain name holder) to retain registration and use of the disputed domain name”.
In this case, the Center has forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has been given an opportunity to present his case, but he has failed to do so.
Paragraph (14)(b) of the Rules specifies that, in the event of a default, “…the panel shall draw such inferences therefrom as it considers appropriate”. It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443, that:
“Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence”.
In this present proceeding, since the Respondent has chosen not to submit a Response, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, always in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence of a number of registrations of the trademark BARCLAYS, and it has traded extensively all over the world for over 100 years under differing titles all of which have included the name “Barclays”.
The Panel concludes that, as a result of this long and extensive use, the Complainant’s trademark BARCLAYS is very well known and satisfies the second requirement of paragraph 4(a)(i) of the Policy namely that a complainant should have rights in a trademark or service mark.
As for the first requirement, namely that the domain name should be identical or confusingly similar to that trademark, the Panel notes that in this case the Complainant’s trademark is only part of the disputed domain name.
It is by now well established that, when comparing a disputed domain name with a trademark, a generic Top Level Domain (gTLD) such as “.com” should be disregarded. See, for example, Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, in which it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark BARCLAYS and the word “barclaysremittancefpuonline”. This breaks down into four separate elements. The first of these – “barclays” – is identical to the Complainant’s name and trademark. The second – “remittance” – is a word which is commonly used within the financial world in which the Complainant operates. The third – “fpu” – has no obvious connection with finance, although it can refer to a “floating point unit” which is a part of many computer systems. The fourth – “online” – is a well-known Internet term.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), part of the test for identity or confusing similarity is that the trademark “Would generally need to be recognizable as such within the domain name”. That test is clearly satisfied in this case. The WIPO Overview 2.0 goes on to state that in addition to the trademark there could be “common, dictionary, descriptive, or negative terms”.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”. It was also held in Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943, that “The Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the word ALLEGRA”. This Panel also found similarly in two cases involving the trademark VALIUM – F. Hoffmann-La Roche AG v. Contactprivacy.com / Mike Kazaros, WIPO Case No. D2010-2212, where the comparison was with the word “valiumvalues”, and F. Hoffmann-La Roche AG v. Hristo Ibouchev, WIPO Case No. D2010-2259, where the comparison was with the words “buyvalium247”, “valiumpresc” and “valium4anxiety”.
In all of these cases, there were only one or two generic words in addition to the trademark, but in the present case there are three. Nevertheless similarity was found, for example, in Farouk Systems, Inc. v. Chen Guoqiang, WIPO Case No. D2010-0005, when comparing the trademark CHI with the domain name <chiflatironstore.com>, and again in F. Hoffmann-La Roche AG v. DRM, WIPO Case No. D2010-0047, when comparing the trademark TAMIFLU with the domain name <tamifluukflutreatment.com>.
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to a trademark in which the Complainant has registration or user rights, and that paragraph 4(a)(i) of the Policy is therefore proved in respect of it.
B. Rights or Legitimate Interests
In Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name. This has now been established in countless other UDRP decisions, and in this case, the Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, in respect of the disputed domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information, provided by the Registrar, NamesDirect. This contains no evidence that the Respondent has any rights or legitimate interests in the disputed domain name which, as found above, is confusingly similar to the Complainant’s distinctive and well-known trademark BARCLAYS. The Respondent makes no claim to having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use. As submitted by the Complainant, and not denied by the Respondent, the disputed domain name has been associated with a site which lists various financial services such as “money transfer”, “payday loans”, quite apart from a link to one of the Complainant’s competitors – Lloyds TSB.
Although the present case does not appear to involve a reseller as such, but rather an “offering” of pay-per-click links to other websites, for completeness the Panel notes that in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering goods and services;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent does not appear to be offering the goods and services himself, and the website associated with the disputed domain name contains no information about the Respondent or its relationship with the Complainant, so it is most unlikely that any such exists. By registering the disputed domain name, the Respondent has gone well beyond any potential legitimate use; he has made an attempt to deprive the Complainant of the possibility of reflecting its own trademark in a similar domain name. It is evident therefore that the Respondent’s conduct does not comply with the elements of the above-mentioned requirements. In any event, prior panels have long recognized that the mere offering of pay-per-click services does not on itself constitute a bona fide offering within the meaning of the second element of the Policy. See, e.g., Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name so that paragraph 4(a)(ii) of the Policy is also proved in respect of it.
C. Registered and Used in Bad Faith
In the present case, the disputed domain name is confusingly similar to the Complainant’s trademark BARCLAYS and clearly refers to the Complainant.
This is sufficient for the Panel to conclude that at the time of its registration, the Respondent was clearly aware of the Complainant and of its activities in the financial world. He was also using the disputed domain name without the consent of the Complainant. In addition, the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name.
It has been held under the Policy that the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in which it was said “VEUVECLICQUOT.ORG is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
Precisely the same argument applies in this case, since BARCLAYS is, possibly, even more famous than VEUVE CLICQUOT, at least in Scotland where the Respondent has his address.
Therefore, and in the absence of any contrary evidence, the Panel accepts that the Respondent has registered and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of these online locations.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also proved for the disputed domain name.
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 <barclaysremittancefpuonline.com> be transferred to the Complainant.
David H. Tatham
Dated: August 29, 2011