WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. herethereandeverywhere, inc
Case No. D2011-1851
1. The Parties
The Complainant is Barclays Bank PLC of London, E14 5HP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is herethereandeverywhere, inc of Allentown, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barclayscarhire.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 26, 2011, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Intercosmos Media Group d/b/a directNIC.com 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 November 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2011.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on November 29, 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 registered proprietor of a number of United Kingdom registered and European Union Community registered trade marks in the name BARCLAYS in a range of classes including in relation to financial services.
The Respondent registered the disputed domain name on June 5, 2007.
5. Parties’ Contentions
The Complainant is a global financial services company that employs 14,4000 people in 50 countries, servicing more than 48 million customers. The Complainant has traded under the trade mark BARCLAYS since 1896.
The Complainant asserts that through its registered trade marks and use of its name it has acquired goodwill and a significant reputation in the financial services field, so that the trade mark BARCLAYS has become a distinctive identifier of the Complainant and its services. The Complainant asserts the goodwill associated with the trade mark BARCLAYS is its property and that it has never assigned its goodwill to the Respondent. The Complainant owns a number of domain names incorporating the trade mark BARCLAYS, inter alia, <barclays.com>.
The Complainant contends that the disputed domain name contains a word which is identical and therefore confusingly similar to the trade mark BARCLAYS in which the Complainant has common law and statutory rights.
The Complainant contends that because of the worldwide reputation of the trade mark BARCLAYS, no trader would choose the disputed domain name unless its intention was to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly divert the public from the Complainant to the Respondent.
The Complainant asserts that the disputed domain name is used in relation to a website for car hire “www.companyvizivo.com”, and that when the web page is accessed it redirects users to “www.eurocarhire.eu”. The Complainant contends that the disputed domain name is used to redirect Internet traffic intended for the Complainant away from the Complainant with the intention of generating income for the Respondent. The Complainant contends that the Respondent registered the disputed domain name with the knowledge that Internet users would be confused into believing that the car hire services offered at the website hosted at the disputed domain name either emanated from the Complainant or are somehow connected with the Complainant.
The Complainant contends that the website to which the disputed domain name resolves has no nexus to the trade mark BARCLAYS as it appears in the disputed domain name. The website relates to car hire services. The use made by the Respondent of the disputed domain name does not amount to legitimate noncommercial or fair use, according to the Complainant.
Nor has the Respondent ever requested or obtained permission to register a domain name incorporating the Complainant’s trade mark. The Complainant asserts the Respondent is not known by the disputed domain name. The Complainant wrote to the Respondent on a number of occasions but without any response. During that period the website at the disputed domain name remained unchanged.
The Complainant further contends that given the widespread fame of its trade mark, the Respondent must have been aware that it was misappropriating the Complainant’s intellectual property by registering the disputed domain name.
Further, the Complainant contends that the Complainant has been prevented from registering a domain name which corresponds to the Complainant's trade mark, contrary to paragraph 4(b)(ii) of the Policy. Also, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks in breach of paragraph 4(b)(iv) of the Policy.
According to the Complainant the Respondent will never be capable of using the disputed domain name for a legitimate purpose, as the Complainant’s trade mark is so well-known that consumers will always think there is connection with the Complainant or its trade marks.
Finally the Complainant asserts that the Respondent has a history of registering domain names incorporating third-party trade marks and has had a number of UDRP panel decisions against it in that regard. This amounts to a clear pattern of conduct of the Respondent using the disputed domain names in bad faith, according to the Complainant. The Complainant cites Jet2.com Limited v. Heretherenandeverywhere, Inc , WIPO Case No. D2011-1003; and also Green Flag Limited v Herethereandeverywhere, Inc, NAF Claim No. FA1005001325481,
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trade mark BARCLAYS. However, the disputed domain name wholly incorporates the trade mark as its first and most prominent element. The addition of the generic terms “carhire” is not apt to distinguish the disputed domain name from the Complainant’s trade mark, as has been regularly decided by panels in analogous cases. The combination of the trade mark and the generic terms suggests nothing other than car hire services offered by or associated with the Complainant. The Complainant is a very large bank offering financial services relevant to many activities. Its trade mark is very distinctive and Internet users are likely to assume there is a connection with the Complainant, which does not in fact exist.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trade mark BARCLAYS.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name, nor by the name “Barclays”. The Respondent has received no permission from the Complainant to register or use the disputed domain name or to use its trade mark in any way.
Further, the disputed domain name resolves to a website that links through to a website offering car hire services. Incorporating a third party’s famous trade mark in a registered domain name so as to attract the attention of Internet users and then divert them to a website where unrelated services are offered by an unrelated party does not in this Panel’s view give rise to rights or legitimate interests in a domain name. Nor has the Respondent made a legitimate noncommercial or fair use of the disputed domain name incorporating the Complainant’s mark. It is apparent that the use of the disputed domain name is intended to benefit the Respondent financially.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trade mark BARCLAYS is very well known. The Complainant’s banking and financial services are conducted and advertised in many countries and have been so for many years. The Complainant has very many employees and clients. It is inconceivable that the Respondent was unaware of the Complainant and the goodwill it holds in the trade mark BARCLAYS, at the time of registration of the disputed domain name. Neither the Respondent nor its activities have any legitimate connection with the name or trade mark BARCLAYS. The disputed domain name was thus registered in bad faith according to paragraph 4(b)(iv) of the Policy.
The disputed domain name resolves to a website where ultimately car hire services are offered. It is apparent that the Respondent stands to gain financially from attracting the attention of Internet users by incorporating the Complainant’s famous trade mark in the disputed domain name, and then diverting them to an unrelated commercial service. This is done in the absence of any rights or legitimate interests on the part of the Respondent in relation to the relevant name or trade marks. This amounts to a use in bad faith of the disputed domain name.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <barclayscarhire.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Dated: December 9, 2011