WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. John Toan
Case No. D2011-2010
1. The Parties
Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
Respondent is John Toan of Belfast, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <barclaycardcreditcard.com> is registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 16, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 12, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on December 19, 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 a major bank and financial services company, which has done business for many decades on several continents. Complainant owns an extensive portfolio of trademarks incorporating the BARCLAYS mark, including, for example the following registrations: BARCLAYCARD, United Kingdom registration number 1286580 in Class 36, registered October 27, 19891 and BARCLAYCARD, Community registration number 000055277 in Classes 9, 16, 36 and 42, registered January 26, 1999.
The disputed domain name was registered on April 29, 2011 and routes to a webpage offering the disputed domain name for sale, for a minimum price of USD 2,500.2 The webpage also offers additional, unrelated domain names for sale by Respondent.
5. Parties’ Contentions
In summary legal allegations addressing the first two elements of the UDRP, Complainant contends first that “The [disputed] Domain Name contains a word which is identical and therefore confusingly similar to the name BARCLAYS in which the Complainant has common law rights and for which the Complainant has registered trade marks.”
With respect to the element of rights or legitimate interests, Complainant contends that “Respondent is attempting to sell this domain using the Barclays name in order to generate a profit [...] Respondent is not known by the [disputed] Domain Name,” and that “Respondent is not making a legitimate non-commercial or fair use of the [disputed] Domain Name.” Complainant also denies having given authorization to register or use any domain name incorporating Complainant’s trademarks.
Finally, addressing the element of bad faith under the Policy, Complainant avers that its counsel sent four letters to Respondent requesting transfer of the disputed domain name, which went unanswered.3 Complainant further alleges that “Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, the Respondent must have been aware that in registering the [disputed] Domain Name he was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks”; that “Respondent's registration of the [disputed] Domain Name has also prevented the Complainant from registering a domain name which corresponds to the Complainant's trade marks contrary to paragraph 4(b)(ii) of the Policy”; that “Respondent has intentionally attempted to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant's trade marks in breach of paragraph 4(b)(iv) of the Policy”; and that “Respondent will never be capable of using the [disputed] Domain Name for a legitimate purpose as the notoriety of BARCLAYS 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 trade mark.”
On the basis of these allegations, Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to trademarks of Complainant, as elaborated below.
UDRP Panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri- La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name wholly incorporates the BARCLAYCARD trademark and adds words descriptive of services that have been associated with the mark. The Panel concludes that the addition of the descriptive words “credit card” does not negate the confusion created by Respondent’s complete inclusion of the BARCLAYCARD mark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. In fact, given that Complainant’s marks are associated with financial services products including credit and debit cards, the Panel finds that the addition of the words “credit card” to Complainant’s marks simply increases the confusion that Internet users would experience. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s marks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
In the absence of a Response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use Complainant’s marks in its domain name and that Respondent is not commonly known by the disputed domain name.
Respondent’s website presently displays an offer for the sale of domain names, including the disputed domain name. The Panel concludes, therefore, that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes.
The Panel agrees with Complainant that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. The website at “www.barclaycardcreditcard.com,” where Respondent listed the disputed domain name for sale, appears to reflect a regular business of registering and selling domain names. As noted by another UDRP panel, “This may well in itself be a legitimate business activity, but the Panel is not persuaded that it is a bona fide offering under paragraph 4(c)(i) of the Policy, since Respondent does not use the domain names in connection with offering goods or services but rather sells the names themselves.” Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
The Panel therefore finds that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel also concludes that Respondent registered and is using the disputed domain name in bad faith in violation of Policy, paragraph 4(a)(iii).
The Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Two of those circumstances, set forth in paragraph 4(b) of the Policy, are germane here:
“(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name;
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the record establishes beyond any doubt that Respondent registered the disputed domain name in bad faith. It is clear from Respondent’s attempts to sell the disputed domain name that Respondent, when registering the disputed domain name, knew of Complainant’s well-established, registered trademark and business.4
It remains for the Panel to determine whether, in addition to registering in bad faith, Respondent is also using the disputed domain name in bad faith. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615. The Panel concludes that Respondent is also using the disputed domain name in bad faith, as elaborated below.
UDRP Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Respondent’s offer to sell the disputed domain name for more than out-of-pocket expenses is an indication of bad faith even though there is no evidence on the record that Respondent offered to sell directly to Complainant or a competitor, as stated in Policy paragraph 4(b)(i). See, e.g., Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675 (offer to the public to sell disputed domain name for excess of out-of-pocket expenses was among evidence supporting bad faith).
Respondent is employing the disputed domain name to attract offers from the public to buy various listed domain names represented on the website as belonging to Respondent. The evidence therefore establishes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Policy paragraph 4(b)(iv).
Respondent has also declined to submit a response to these proceedings or to respond to Complainant’s warning letters. In the circumstances, these are further indications of bad faith.5
The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled.
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 <barclaycardcreditcard.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: January 2, 2012
1 The Complaint erroneously lists the registration date as October 1, 1986.
2 A copy of the web page is annexed to the Complaint. The Panel has also viewed on the Internet the pages to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5.
3 Copies of the letters are annexed to the Complaint.
4 In the words of another panel, “It seems [highly] unlikely [. . .] that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236.
5 Since the evidence clearly establishes bad faith on other grounds, the Panel refrains from expressing a view on Complainant’s allegations that Respondent has prevented Complainant from registering a domain name corresponding to Complainant's trademarks or that Respondent could not under any circumstance be able to use the disputed domain name for a legitimate purpose under the Policy.