WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Polat Ltd., Selim Polat
Case No. D2011-1585
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, United Kingdom.
The Respondent is Polat Ltd., Selim Polat of Istanbul, Turkey.
2. The Domain Name and Registrar
The Domain Name <barclayconsult.com> is registered with FBS Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On the same date, the Center transmitted by email to FBS Inc a request for registrar verification in connection with the Domain Name. On September 30, 2011, FBS Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 10, 2011, the Center informed the parties that the Complaint had been submitted in English whereas the language of the registration agreement for the disputed domain name was Turkish. Accordingly, the Center requested the parties to file arguments in this respect. On October 21, 2011, the Complainant filed arguments requesting English to be the language of the proceeding together with arguments on its support. The Respondent failed to reply to the Center’s communication.
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 November 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 11, 2012. 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 a major global financial services provider with an extensive international presence in Europe, the Americas, Africa and Asia. The Complainant currently operates in over 50 countries and employs approximately 144,000 people. The Complainant has several trademark registrations, in addition to its unregistered trademarks, through its use of BARCLAYS over the last 114 years.
The trademarks BARCLAY and BARCLAYS were registered long before the registration of the Domain Name (which was registered on March 31, 2011).
5. Parties’ Contentions
According to the Complainant, the Domain Name <barclayconsult.com> comprises the term “barclay”, which is confusingly similar to the registered trademark BARCLAYS, registered by the Complainant as a trademark and domain name in numerous countries all over the world.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.
The trademark BARCLAY belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
The Complainant tried to contact the Respondent through a cease and desist letter. No response was received.
The Domain Name was being used to promote the services of the so called company Barclays Consult Ltd. Despite the claim that the Respondent operates in the same industry as the Complainant, the Complainant has no knowledge, from a general online search, of Barclay Consult Ltd. nor is there any evidence of Barclay Consult Ltd. Trading.
According to the Complainant, the Respondent was aware of the rights the Complainant has in the trademark BARCLAYS and the value of said trademark at the moment of the registration of the Domain Name.
Consequently, the Complainant states by referring to the above-mentioned arguments that the Respondent must be considered to have registered and be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name registered by the Respondent 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 by the Respondent in bad faith.
A. Language of the Proceeding
Although the language of the Registration Agreement in this case is Turkish, the Panel determines in accordance with the Complainant’s request and the paragraph 11(a) of the Rules, that the language of these administrative proceedings shall be English. The Panel finds that it would be inappropriate to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English.
B. Identical or Confusingly Similar
The Complainant has registered the trademarks BARCLAY and BARCLAYS as a word and/or device mark in respect of financial services. The Complainant also owns domain names which include its trademarks BARCLAY and BARCLAYS. The trademark BARCLAY was registered long before the registration of the Domain Name.
The Panel concurs with the opinion of several prior UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In this Panel’s view, the addition of the term “consult” does not sufficiently distinguish the Domain Name from the Complainant’s trademark.
Additionally, the Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. It is clear to the Panel that the Respondent has not demonstrated any bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the Domain Name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the BARCLAY trademark in the Domain Name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use made of the Domain Name that when the Respondent registered the Domain Name it must have known that BARCLAY was the trademark of the Complainant and that it registered the Domain Name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name and therefore, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Panel believes that the Respondent must have been aware of the rights the Complainant has in the trademark BARCLAY and the value of said trademark at the moment of the registration of the Domain Name. By using the Domain Name, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for what is likely its commercial gain.
It is obvious to this Panel that, by using the Domain Name, the Respondent‘s intention must have been to intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the Domain Name or that there is conceivable good faith use for its use of the Domain Name.
In view of the above, after examining all circumstances surrounding the registration and use of the Domain Name, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
Accordingly the Panel finds in favor of the Complainant on the third element of the Policy, in accordance with paragraph 4(a)(iii) 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 Domain Name <barclayconsult.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: January 26, 2012