WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank Plc v. Anton Vragov
Case No. D2011-1241
1. The Parties
The Complainant is Barclays Bank Plc of London, the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP of Glasgow, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Anton Vragov of Staten Island, New York, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <barclaysgroup-plc.com> is registered with Active Registrar, Inc (“Registrar”).
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 Active Registrar, Inc. a request for registrar verification in connection with the disputed Domain Name. On July 22, 2011, Active Registrar, 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 July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2011.
The Center appointed Andrew Brown QC as the sole panelist in this matter on August 25, 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 Respondent registered the disputed Domain Name on October 29, 2010.
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 an extensive international presence in Europe, the Americas, Africa and Asia.
Evidence shows that the Complainant has traded as “Barclays PLC” since 1985. Prior to that the Complainant traded as “Barclays Bank PLC”, “Barclays Bank Limited and Barclay & Company Limited”.
The Complainant is the registered proprietor of a variety of United Kingdom and Community registered trade marks (“CTM”) in the name BARCLAYS in a range of classes including in relation to financial services all dating from prior to October 29, 2010, some date from as early as 1986.
The Complainant asserts that in addition to its registered trade marks, it has acquired goodwill and a significant reputation in the name “barclays” in the areas in which it specializes through over the 114 years of use. The Complainant further asserts that the goodwill associated with the name “barclays” is its property and cannot pass to any third party without formal assignation. No assignation in favour of the Respondent has taken place.
Finally, the Complainant is the registrant of a portfolio of domains including <www.barclays.co.uk> which was registered in 1996 and <www.barclays.com> which was registered in 1993. The Complainant actively uses these domain names to promote and offer its banking and finance related services.
The Complainant states that as at the date of the Complaint, the disputed Domain Name was being used as a holding page containing a number of finance related sponsored links which related to competitor products and services to those offered by the Complainant. The disputed Domain Name was being used to redirect internet traffic intended for the Complainant away from the Complainant and to competitor products and services. The content on the website at the disputed Domain Name was tailored to match the Complainant's core goods and services. This means that when internet users viewed the content displayed at the disputed Domain Name and clicked one of the sponsored links on the website, the Respondent generated revenue directly from the initial interest arising from the use of the name “barclays” in the disputed Domain Name.
The Complainant has not attached to the Complaint any screenshots of this material. As at the date of transmittal of the Complaint to the Panel, no content was accessible at the disputed Domain Name.
5. Parties’ Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and is entitled to have the disputed Domain Name transferred to it.
As to the third requirement, the Complainant submits that:
“Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, the Respondent must have been aware that in registering the Disputed Domain Name he was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks.
The Respondent's registration of the Domain Name has also prevented the Complainant from registering a domain name which corresponds to the Complainant's trade marks contrary to paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant's trade marks in breach of paragraph 4(b)(iv) of the Policy.
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 Complainant, and/or between the Respondent and the BARCLAYS trade mark.
It is reasonably anticipated that this Domain Name will divert potential custom from the Complainant's business due to the presence of links to competitor websites on the Domain Name.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(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.
A. Identical or Confusingly Similar
It is clear that Complainant has extensive registered and unregistered rights in the trade mark BARCLAYS.
The Complainant is the registered proprietor in the United Kingdom and CTM of numerous registered trade marks containing BARCLAYS. Further, the Complainant has established substantial unregistered common law rights in the name “Barclays” including by way of its trading as “Barclays PLC” since 1985, and by way of its portfolio of domain names containing the mark BARCLAYS (including <www.barclaysgroup.co.uk> and <www.barclays.com>).
The BARCLAYS trade mark is clearly recognizable within the disputed Domain Name <barclaysgroup-plc.com>.
The Panel therefore finds that the disputed Domain Name is confusingly similar to the trade marks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in the Complainant’s favour.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed Domain Name.
The Complainant states and the Panel accepts that it has never given the Respondent any form of permission to register or use any domain name which incorporates the Complainant’s trade mark BARCLAYS. The disputed Domain Name was at the time of the Complaint being used to host sponsored links which relate to competitors of the Complainant, and not to any entity which is related to the Respondent.
In the present circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that Policy para 4(a)(ii) is satisfied in favour of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is prepared to accept, there being no response from the Respondent, the Complainant’s assertions as to the content of the disputed Domain Name at the date of the Complaint.
The Panel is satisfied that the disputed Domain Name was registered and is being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark BARCLAYS. Internet users searching for the Complainant’s websites are likely to come across the Respondent’s holding pages and could then be diverted to links to websites of the Complainant’s competitors. Links on the holding pages operate as sponsored links so there is an intent to attract for commercial gain Internet users to the Disputed Domain Name.
The Panel is accordingly satisfied that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b) 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, <barclaysgroup-plc.com>, be transferred to the Complainant.
Andrew Brown QC
Dated: September 8, 2011