WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Barclays Real Estate
Case No. D2011-1375
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 Barclays Real Estate of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <barclaysuae.com> (the “Domain Name”) is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 16, 2011, Mr. A. Shaikh, acting for the Respondent sent the following message to the Complainant:
“We Grand Move Real Estate (previously known as Barclays Real Estate) would like to inform you that the attached notices addressed to our office were never received by us. This might have happened due to wrongly mentioned address and contact details.
This issue was brought to our notice when we received on 13th August 2011 an email from Mr. Jitesh who had obtained and hosted the domain ‘www.barclaysuae’ on behalf of our company. Kindly note we had been using this domain since year 2004 however after the dispute with Barclays Bank concerning the brand name logo we immediately changed are website to ‘www.grandmoveuae.com’”.
The domain name “www.barclaysuae.com” is dormant and is not in use ever since we changed our company name from Barclays Real Estate to Grand Move Real Estate, please note none of our advertisements, office stationery, business cards, letterheads bear the website address as “www.barclaysuae.com”.
We have no objection whatsoever to transfer or cancel the domain “www.barclaysuae.com” with immediate effect. We have already informed Mr. Jitesh and asked him to cancel the website “www.barclaysuae.com” and to do the needful so as to, that we Grand Move Real Estate have no connection with the disputed subject domain.
We sincerely hope this will resolve the subject issue amicably.”
Following the receipt of this message from the Respondent, on August 18, 2011, the Complainant requested the suspension of the proceedings for 30 days so that negotiations could take place between the Parties. The Center granted the request and suspended the proceedings until September 17, 2011.
On September 7, 2011, the Complainant sent a letter to the Respondent reminding it of the suspension of the proceedings by the Center. With this letter, the Complainant demanded that until midnight of September 15, 2011, the Respondent contacts the Registrar and transfers the Domain Name, and makes the payment of USD 500, equal to the fees payable by the Complainant to the Center in case the Complaint is withdrawn. The Complainant also undertook to withdraw the Complaint if these actions were carried out by the Respondent. A reminder was sent on September 13, 2011, whereby the Complainant informed the Respondent that “… Unless arrangements have been made to transfer the domain name registration to our client before midnight on 15 September 2011 then we will not request an extension of the suspension and will ask WIPO to reactivate the proceedings”.
On September 15, 2011, the Respondent sent to the Complainant a letter issued by the Respondent’s CEO, Mr. I. Al Harmoodi and dated August 17, 2011, which contained an undertaking to stop using the Domain Name and to transfer it to the Complainant, and to refrain from registering domain names containing or referring to the trademarks of the Complainant.
On September 16, 2011, the Complainant requested an additional 14-day suspension of the proceedings, to allow for the carrying out of the actual transfer of the Domain Name, as undertaken by the Respondent. The Center granted the request on September 20, 2011, and the proceedings were suspended until October 4, 2011.
On September 27, 2011, the Respondent again confirmed its consent to the transfer of the Domain Name to the Complainant.
On September 30, 2011, the Complainant requested the reinstatement of this administrative proceeding due to the unsuccessful outcome of the settlement negotiations between the parties, and on October 3, 2011, the Center reinstated the proceedings.
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 October 4, 2011.
In two separate communications of October 5, 2011, the Respondent reiterated its consent to the transfer of the Domain Name, and confirmed that the Domain Name had been dormant since the name of the Respondent was changed to Grand Move Real Estate. Referring to its readiness to cooperate for this transfer, the Respondent also disagreed to pay the amount of USD 500, requested by the Complainant, but again requested an amicable settlement.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. Apart from its communications listed above, the Respondent did not submit a formal response. Accordingly, on October 25, 2011, the Center notified the Parties that it will proceed with the appointment of a Panel.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 3, 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.
On November 8, 2011, the Respondent again requested the amicable settlement of the dispute in view of its readiness to transfer the Domain Name to the Complainant.
The Panel considered the procedural requests of the Parties, and the requirements of the Policy and of the Rules. In the Panel’s view, the communications exchanged between the Parties show that they have not reached an agreement to settle the dispute and to terminate the case. Indeed, the Respondent has expressed its agreement to transfer the Domain Name, but no actual transfer has been confirmed to have taken place, and the Complainant has not withdrawn the Complaint. In this situation, the proceeding has to continue with the issuance of a decision by the Panel, unless it has been confirmed that the Parties have reached a settlement. Therefore, on November 11, 2011, the Panel issued a procedural communication that the proceedings will be terminated on the grounds of paragraph 17(a) of the Rules, if prior to the expiration of the time limit under paragraph 15(b) of the Rules, both Parties confirm to the Center that they have reached a settlement, and that if no such notice is received by the Center until the expiration of the above time limit, the Panel will proceed with the issuance of his decision.
The time limit under paragraph 11 of the Rules expired on November 17, 2011. On November 18, 2011, the Center informed the Panel that no confirmation of a settlement was received from the Parties until the expiration of the time limit under Paragraph 11 of the Rules, and the Panel issued the present decision.
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 an extensive international presence in Europe, the Americas, Africa and Asia. Currently, it operates in over 50 countries and employs approximately 144,000 people. The Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide. It has traded as Barclays PLC since 1985. Prior to this, the Complainant has traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.
The Complainant has received several awards including in 2009 the Lender of the Year during the Bankhall Annual Conference in London; the Best Leadership Team in Global Private Banking accolade at the Global Private Banking Awards in Geneva; the Best Credit Card Provider (Standard Rate) at the Moneyfacts Awards 2009; Best Local Bank in the UK at the Euromoney Private Banking Awards; and in 2008 the Complainant was awarded the Business Superbrands status in recognition of quality, reliability and distinction by the Business Superbrands Council and individual business professionals.
The Complainant is the owner of the following trademarks (the “BARCLAYS trademarks”):
The word trademark BARCLAY/BARCLAYS with Reg. No. 1286579, registered with priority from October 1, 1986, for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International class 36;
The word trademark BARCLAYS with Reg. No. 1314306, registered with priority from June 24, 1987, for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International class 36;
The word trademark BARCLAY/BARCLAYS with Reg. No. 1380658, registered with priority from April 19, 1989, for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International class 35;
The word trademark BARCLAY/BARCLAYS with Reg. No. 1393351, registered with priority from July 27, 1989, for the territory of the United Kingdom of Great Britain and Northern Ireland, for goods in International class 16;
The word trademark BARCLAYS with Reg. No. 2461096, registered with priority from July 11, 2007, for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International class 36;
The word trademark BARCLAYS with Reg. No. 000055236, registered with priority from April 1, 1996, as a Community trademark for goods and services in International classes 9, 16, 35, 36 and 42; and
The word trademark BARCLAYS with Reg. No. 002315554, registered with priority from July 13, 2001, as a Community trademark for goods and services in International classes 9, 16, 35, 36, 38 and 42.
The Complainant is also the registrant of the domain name “www.barclays.co.uk”, registered prior to August 1996, and of the domain name “www.barclays.com”, registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Domain Name was registered on June 10, 2004.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name contains a word which is identical to the word “Barclays” in which the Complainant has common law rights and for which the Complainant has registered trademarks.
The website under the Domain Name is being used to display content relating to “Grand Move Real Estate'”, a real estate company based in Dubai, United Arab Emirates. The “About Us” page on the website under the Domain Name describes Grand Move Real Estate as a property investment company with a wide portfolio of property in Dubai, which offers its expertise to individual and corporate clients. It is unclear why the Domain Name has been selected as the Respondent and Grand Move Real Estate do not appear to have any relationship with the Complainant. It is reasonably foreseeable that customers of the Complainant may type the Domain Name into the browser when trying to locate the Complainant’s local webpage for Dubai.
The Complainant submits that the Respondent has no rights or legitimate Interests in respect of the Domain Name. It is not known by the Domain Name, and is not making a legitimate noncommercial or fair use of the latter. The Respondent has never asked for, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s BARCLAYS trademarks. The goodwill associated with the name BARCLAYS is the property of the Complainant and cannot pass to any third party without a formal assignation.
According to the Complainant, the Domain Name was registered and is being used in bad faith. Given the widespread use, reputation and notoriety of the BARCLAYS trademarks, the Respondent must have been aware of them when registering the Domain Name, and has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BARCLAYS trademarks.
The Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of the BARCLAYS trademark 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 trademark. In addition, it is reasonably anticipated that the Domain Name will divert potential customers from the Complainant's business due to the presence of links to competitor websites in the content found at the website under the Domain Name.
The Complainant’s authorized representative, Pinsent Masons LLP, wrote to the Respondent on January 26, 2011, in relation to the Domain Name advising the Respondent of the Complainant’s registered trademarks in the name BARCLAYS and to ask for the Domain Name to be transferred to the Complainant. No response was received to this letter, so further letters were sent on April 7, 2011, and April 26, 2011, asking for a response to the first letter. No response was received to either of these chaser letters. In the course of this correspondence, the content of the website at the Domain Name remained unchanged.
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions. Instead, it confirmed several times that it had changed its name to Grand Move Real Estate, that it had terminated the use of the Domain Name and of the trademarks of the Complainant and that it is willing to transfer the Domain Name, and requested an amicable settlement of the case.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(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 Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent 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 employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the word trademark BARCLAYS, registered for the territory of the European Community and of the United Kingdom of Great Britain and Northern Ireland.
It is a common practice under the Policy to disregard the generic TLD such as “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is the word string “barclaysuae”. The element “barclays” is identical to the Complainant’s trademark, and the “uae” element is a commonly used abbreviation, meaning “United Arab Emirates”. Internet users would regard it as an additional element, indicating the location of the business activities to which the Domain Name refers. Therefore, it is likely that the attention of an average Internet user would be mainly attracted by the distinctive and dominating “barclays” element of the Domain Name.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, and provides certain arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in its defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the Domain Name, it could have provided it. In particular, Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor.
To the contrary, the Respondent has repeated in all it communications to the Center that it has changed its name to Grand Move Real Estate, that it has terminated the use of the Domain Name and of the BARCLAYS trademarks in its business immediately after it received the Complaint, and is ready to transfer the Domain Name to the Complainant. Thus, the Respondent has admitted that it has no rights or legitimate interests in respect of the Domain Name and has provided no explanation whatsoever for its registration and use.
At the same time, the evidence contained in the case file suggests that the website to which the Domain Name resolves has remained active in the course of this proceeding. In the Panel’s view, such
contradictory conduct is questionable and further supports the prima facie case of the Complainant.
Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s BARCLAYS trademarks. The website to which the Domain Name resolves is used by the Respondent for its real estate agency business, without the Respondent having rights or legitimate interests in the Domain Name. Following the receipt by the Respondent of the Complaint, the Respondent has not rejected the contentions of the Complainant for bad faith registration and use of the Domain Name. Rather, the Respondent has stated that it has stopped using the Domain Name. However, the evidence in the case shows that the website at the Domain Name still exists. As contended by the Complainant, it may be expected that the Domain Name will divert potential customers from the Complainant's business to the website under the Domain Name by attracting Internet users who mistakenly believe that the Domain Name is affiliated to the Complainant.
Therefore, and in the lack of any contrary evidence or even allegations of any actual or contemplated good faith use of the Domain Name, the Panel is prepared to accept that the Respondent has registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website at the Domain Name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
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 <barclaysuae.com> be transferred to the Complainant.
Dated: November 18, 2011