WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Huang Li Technology Corp.
Case No. D2011-2008
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Huang Li Technology Corp., of Shenzen, China.
2. The Domain Name and Registrar
The disputed domain name <xbarcap.com> is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On November 16, 2011, Dynadot, LLC 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 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2011.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on December 22, 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 a financial services provider. It was incorporated in the United Kingdom in 1896 and traded as Barclays Bank PLC. It has traded as Barclays PLC since 1985.
The Complainant owns a variety of United Kingdom registered and European Union Community Trade Mark registered trademarks. It is in particular the proprietor of the following trademarks: BARCAP, registration no. 2154329, registered in the United Kingdom on December 23, 1997, and BARCAP, registration no. 736306, registered as a Community trademark on July 16, 1999.
Through its subsidiary Barclays Capital, the Complainant is the registrant of the <barcap.com> and <barcap.co.uk> domain names.
The Respondent registered the disputed domain name on June 2, 2011. The disputed domain name resolves to a website featuring links to third-party sites providing financial services, some of which compete with the products and services offered by the Complainant.
On July 26, 2011 the Complainant sent a cease and desist letter to the Respondent and requested, in particular, the transfer of the disputed domain name. The Respondent did not respond to this letter. The Complainant wrote again to the Respondent on August 23 and September 9, 2011. The Respondent did not respond to these letters.
5. Parties’ Contentions
Concerning the first test under the Policy, the Complainant contends that the disputed domain name contains a word which is identical and/or similar to the names “Barclays” and “Barcap”, in which the Complainant has common law rights and for which it has registered trademarks. The Complainant also submits that given the worldwide fame reputation and notoriety of the trademarks BARCLAYS and/or BARCAP, no trader would choose the disputed domain name unless with the intention to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent.
Concerning the second test under the Policy, the Complainant states that the disputed domain name is being used as a holding page containing a number of finance-related sponsored links which relate to competitor products and services. According to the Complainant, the disputed domain name is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondent. The Complainant further submits that the Respondent registered the disputed domain name knowing that it is likely to attract interest from users who are searching for the Complainant. Moreover, the Complainant contends that the Respondent is not known by the disputed domain name, has never asked for and has never been given permission by the Complainant to register or use any domain name incorporating the Complainant’s trademark, and is not making a legitimate non-commercial or fair use of the disputed domain name.
Concerning the third test under the Policy, the Complainant points out that the Respondent did not reply to any of the letters that were sent to it. According to the Complainant, the Respondent must have been aware that in registering the disputed domain name, it was misappropriating the Complainant’s intellectual property and it intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The Complainant also submits that the Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to its trademark. Finally, the Complainant contends that the Respondent will never be capable of using the disputed domain name for a legitimate purpose, as the notoriety of the Complainant’s trademark is such that members of the pubic will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the Complainant’s trademark.
For these reasons, the Complainant requests that the disputed domain name be transferred.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and
(iii) the disputed domain name has been registered and is being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several BARCAP trademarks.
Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCAP trademark. The disputed domain name incorporates the entirety of the Complainant’s trademark, with only one minor and non distinctive difference: the addition of the letter “x” at the beginning of the disputed domain name. Such insignificant modifications to trademarks are commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and cases cited therein).
In view of the foregoing, the Panel finds that the disputed domain name <xbarcap.com> is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even it has acquired no trademark or service mark rights; or
(iii) 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.
In the present case, the Respondent did not file a Response. Based on the evidence on record, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The evidence on record shows that the only content of the website to which the disputed domain name resolves are pay-per-click links that redirect Internet users to other online locations, where products or services that compete with those offered by the Complainant are offered by third parties.
While a website containing pay-per-click links does not per se constitute any illegitimate or illegal activity, the Panel finds that in the circumstances of the present case, the Respondent is not making a bona fide offering of goods or services and that such use does not appear to be a fair use of the disputed domain name.
Moreover, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves and that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, nor a fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “xbarcap” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
(iv) 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 satisfied that these circumstances are fulfilled in this case.
The Respondent has registered and used a domain name which incorporates the Complainant’s trademark, with only a minor misspelling. The only use that is made of the disputed domain name is to redirect Internet users to a pay-per-click website, where links are provided to third-party websites offering products and services that compete with those offered by the Complainant.
The generation of revenue from domain name parking or other advertising activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the respondent is using the disputed domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trademark holder (see Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364).
The Panel further notes that both the Complainant’s trademark and the minor variation contained in the disputed domain name do not correspond to a descriptive or generic word. In the present case, this Panel finds it is unconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademark and intention of benefiting from confusion with such trademark.
In the view of the Panel, this fulfills the conditions of paragraph 4(b)(iv).
For all 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, <xbarcap.com> be transferred to the Complainant.
Fabrizio La Spada
Dated: January 19, 2012