WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Domains by Proxy Inc. and Stake Inc.
Case No. D2011-1583
1. The Parties
Complainant is Barclays Bank PLC of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Pinsent Masons LLP, United Kingdom.
Respondents (also sometimes referred to as the “Registrants”) are Domains by Proxy Inc. of Arizona, United States of America (Respondent #1) and Stake Inc. of Perak, Malaysia (Respondent #2).
2. The Domain Name and Registrar
The disputed domain name <barclayssa.net> (hereinafter the “Disputed Domain Name”) is registered with Wild West Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On that same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Later on the same date, Registrar transmitted by email to the Center its verification response confirming that Respondent #2 is listed as the Registrant and providing the contact details.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2011. Neither of the Respondents submitted any response. Accordingly, the Center notified Respondents’ default on October 24, 2011.
The Center appointed James H. Grossman as the sole panelist in this matter on November 1, 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
Complainant is one of the world’s 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 around the world. Complainant predecessor was incorporated on July 20, 1896 and has traded as Barclays PLC since 1985. Complainant currently operates in 50 countries with approximately 144,000 employees with more than 48 million customers and clients worldwide.
Complainant has a variety of UK registered and European Community registered trade marks in the name BARCLAYS in a range of classes including, but not limited to, those relating to financial services. For example, Complainant has the trademarks BARCLAYS (UK Registration Number #1314306) registered on June 24, 1987 as well as for BARCLAYBANK (UK Registration Number #1336098) registered on February 19, 1988 and for BARCLAYS again with other classes (UK Registration Number #1314306) registered on January 11, 2008. In the European Community, Complainant owns trademarks including BARCLAYS (EU Registration Number #55236 January 26, 1999 and February 13, 2003).
Complainant is the registrant of a number of domain names which redirect the Internet user to the website “www.barclays.com” registered on November 23, 1993 and “www.barclays.co.uk” which was registered prior to August 1996. According to the WhoIs database, Barclays Bank LLC owns approximately 2,298 domain names.
Respondents registered the Disputed Domain Name on October 10, 2010.
It is important to note that the Disputed Domain Name apparently expired on October 11, 2011. On September 30, 2011, the Center wrote to the Registrar noting the impending expiration of the Disputed Domain Name and requesting the Registrar to confirm its compliance with Paragraph 126.96.36.199 of the ICANN Domain Deletion Policy which gives Complainant, during a pending dispute, the option to renew or restore the domain name. In response on the same day, the Registrar confirmed the lock on the Disputed Domain Name and states that the Disputed Domain Name expires only when the Registrar receives an order dismissing or suspending the case or “upon the expiration of the domain registration including the Redemption Grace and Pending Delete Periods at the Registry”. In accordance with the terms of the ICANN Policy cited above, the Registrar states that the Complainant must bear the burden of ensuring that the domain name do[es] not expire. Notwithstanding the above, the Registrant confirms it does take “steps to ensure that the domain name remains in status quo during the pending dispute.” The Panel notes this position of the Registrar. While there can be no assurance of action by this Registrar, the Panel is hopeful that what has now become an expired Disputed Domain Name will remain in the status quo pending the decision of the Panel in this matter.
5. Parties’ Contentions
Complainant points out that in addition to its registered trade marks and domain name filings, Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. Thus, the name BARCLAYS is identified with both Complainant and the services it provides. The Disputed Domain Name contains the full word BARCLAYS, and therefore is identical and confusingly similar to Complainant’s trade marks, domain names, and also its common law rights. After 114 years of doing business, the name BARCLAYS has become a distinctive identifier associated with Complainant and the services it provides. Complainant states that it has given Respondents no rights to use the BARCLAYS name nor is Respondents known by the Disputed Domain Name. Nor is there any legitimate noncommercial or fair use involved in Respondents’ usage. The diversion by Respondents of the world famous name BARCLAYS can only have been done with clear intent to misappropriate the valuable intellectual property rights of Complainant and thus was done in bad faith.
Beginning in November 26, 2011, Complainant’s counsel emailed Respondent #1 on a number of occasions informing them of Complainant’s trademark rights and requesting transfer to Complainant of the Disputed Domain Name. The first of such requests provided Respondent #1 with a ready made reply turning over all rights to the Disputed Domain Name to Complainant. On December 21, 2010, Respondent #1 advised Complainant that it was merely acting as a privacy agent for Respondent #2.
Finally on March 2, 2011, upon confirmation from Complainant that Respondent #2 had not responded to its demand letters, Respondent #1 provided the contact details of Respondent #2 to Complainant. Thereafter, Complainant sent similar demand letters to Respondent #2, copies of such emails were also provided to the Panel. Complainant states in its Complaint that Respondent #2 did not respond to any of the communications from counsel for Complainant and that this as well should be considered in the Panel’s consideration of bad faith by Respondent #2. Complainant also notes Respondent #2’s attempt to confuse the issue by adding Domains by Proxy, Inc. as a registrant in which to hide behind.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondents have no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent #2 has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Management,, Inc. v. webnet-marketing, inc., NAF Claim No. 95095.
A. Identical or Confusingly Similar
The Panel agrees with the points set forth above by the Complainant. Further, the additions of the letters “sa” to a domain name that has the indicia of one of the world’s most well recognized financial institutions does nothing to avoid the fact that the Disputed Domain Name is clearly identical or confusingly similar to Complainant’s trademark. F. Hoffmann- La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629 ("The Panel finds that [the] Domain Name is confusingly similar to Complainant’s trademark because the addition to [of] the letters “la” to the trademark XENICAL does not change the fact that the Domain Name looks and reads like Complainant’s XENICAL trademark”). An Internet user could possibly think that the Disputed Domain Name with the “sa” following the word “barclays” may relate to a Societe Anonymous which is used in some countries to designate a type of corporation, but of course that is not the case. In fact the Disputed Domain Name was being used to redirect Internet traffic away from the Complainant. At some time which is not known to Complainant, the Disputed Domain Name content was amended so now it redirects Internet users to Complainant’s existing website “www.barclayswealth.com”. Complainant states that previous to this change, there were a number of listings for new bank accounts at other financial institutions, so it may be reasonably presumed that Respondent #2 was receiving revenues from the sponsored “links” for sending Internet users to these sites. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
There is no evidence that Respondents are known by the Disputed Domain Name nor have any connection with the name BARCLAYS. The Panel is advised that Respondents have never asked or been given any permission whatsoever to use the Disputed Domain Name incorporating Complainant’s trademark or its domain name. It is also clear that Respondents are not making a legitimate noncommercial or fair use of Complainant’s trademark or domain names.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that a respondent lacks rights or legitimate interests in the Disputed Domain Name. The Panel accepts that Complainant has made a prima facie case that Respondents lack rights or legitimate interests in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondents. Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.
Since Respondent #2 has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondents have no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel agrees with Complainant that Respondents had to know they were misappropriating a well known trademark when they registered in October 2010 the Disputed Domain Name.
There can be no other reason for Respondents’ actions in registering the Disputed Domain Name than a bald faced attempt by the Respondents to divert Internet users who believe that the Disputed Domain Name is related to Complainant. Caesars World Inc. v. Forum LLC. WIPO Case No. D2005-0517 (“Respondent’s use of the disputed Domain Name is considered by this Panel as an action to misdirect Complainant’s clients, attract them to Respondent’s services for Respondent’s profit.“). The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
The Panel has determined to deal with one final issue relating to whether Complainant has taken action here against the proper respondent. In reviewing the case file submitted by the Complainant in detail, it is important to note that in its response to Complainant on December 21, 2010 (before the Complaint was filed by the Center), Respondent #1 stated in part that:
“Domains by Proxy (hereinafter DBP) provides a proxy registration service that allows its customers to register domain names without listing their contact information in the public WHOIS database. Since DBP is listed as the registrant of all domain names for which it provides service, it may appear that DBP has an interest in the domain name or website. That is not the case; DBP is neither a domain name registrar, nor a hosting provider.” (emphasis added by Panel)”.
Nevertheless, the WhoIs database as reviewed at the time of the filing of the Complaint by Registrar still refers to Respondent #1 as Registrant.
In a similar case where Complainant filed its Complaint solely against the privacy agent, the registrar, Wild West Domains, Inc., disclosed the name of the substantive registrant as Respondent #2 and Complainant was given the option by the Center to amend its complaint so as to name as respondent only the substantive party and not the privacy agent. The complainant did make such an amendment. See Barclays Bank PLC v. Stakeinc, WIPO Case No. D2011-1374.
In this case, although advised many months prior to the filing by Respondent #2 that “DBP is neither a domain name registrar, nor a hosting provider”, Complainant nevertheless filed its Complaint against both Respondent # 1 and Respondent #2. Subsequent thereto, the Registrar confirmed that Respondent #2, as Respondent #1 had advised much earlier, was the actual registrant. In such circumstances where the WhoIs database shows at the time of filing a listing of a privacy agent as registrant but Complainant with or without some knowledge of the reality of the situation files against both parties, the Panel is advised that the Center typically does not request the Complainant to amend its complaint, but rather allows the matter to proceed with the Notification of the Complaint to both Respondents. This Panel has little tolerance for these privacy agents which simply add complexity and diversion to the need for transparency in the domain name system. While the Panel would have preferred that the privacy agent would have been removed as a respondent by a Complainant made aware of the true facts prior to filing its Complaint, the Panel takes the view that the decision below will transfer the Disputed Domain Name away from the Respondents and that the resulting transfer will effectuate the substantive decision being made by this Panel.
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, <barclayssa.net> be transferred to the Complainant.
James H. Grossman
Dated: November 15, 2011