WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-0092
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“U.K”) represented by Pinsent Masons LLP, U.K.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia and Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the U.K.
2. The Domain Name and Registrar
The disputed domain name <barclaylaycardus.com> is registered with Above.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On January 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing Registrant and contact information for the domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2012 providing the Registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 27, 2012.
The Center verified that the Complaint together with the amended 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 January 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2012.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 2, 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
In the absence of a Response, the Panel relies upon the evidence submitted by the Complainant which it finds to be true.
The Complainant, Barclays Bank PLC, is a 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 in Europe, the Americas, Africa and Asia.
The Complainant has traded as Barclays PLC since 1985 under Company No. 00048839. Prior to this, the Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. It operates in over 50 countries and employs approximately 144,000 people. It moves, lends, invests and protects money for more than 48 million customers and clients worldwide.
The Complainant has received several awards including in 2009 the Lender of the Year during the Bankhall annual conference in London, the best leadership team in global private banking accolade at the Global Private Banking Awards in Geneva, the best credit card provider at the Moneyfacts Awards 2009, best local bank in the UK at the Euromoney Private Banking Awards; and in 2008 the Complainant was awarded the business superbrand status in recognition of quality, reliability and distinction by the Business Superbrands Council and Individual Business Professionals.
The Complainant is the registered proprietor of a variety of U.K. registered and Community registered trademarks in the marks BARCLAYS and BARCLAYCARD in a range of classes including in relation to financial services. The Complainant’s registered trademarks are listed in the Schedule provided as Annex 4 to the Complaint.
In addition to its registered trademarks for its use of the mark BARCLAYS over the last 114 years, the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. As such, the name Barclays and trademark derivatives of the name, such as BARCLAYCARD, have become distinctive identifiers associated with the Complainant and the services it provides.
The goodwill associated with the marks BARCLAYS and BARCLAYCARD is the property of the Complainant and cannot pass to any third party without a formal assignment. No such assignment in favour of the Respondent has taken place.
The Complainant is also the registrant of a portfolio of domain names including <barclays.co.uk> which was registered prior to August 1996 and <barclays.com> registered on November 23, 1993. The Complainant is also the registrant of the domain names <barclaycard.com> and <barclaycard.co.uk> which were registered on August 6, 1997 and prior to August 1996 respectively. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The domain name was registered on February 8, 2011, details of the domain name registration are contained at Annex 6 to the Complaint.
5. Parties’ Contentions
According to the Complainant:
1. The domain name contains a word which is confusingly similar to the name BARCLAYS and identical to the name BARCLAYCARD in which the Complainant has both common law trademark rights and registered trademarks.
2. The Respondent has no rights or legitimate interests in the domain name. The Respondent is not known by the domain name and is not making a legitimate noncommercial or fair use of the domain name.
3. The domain name was registered and is being used in bad faith.
4. The Complainant relies upon the failure to respond to demand letters sent by the Complainant’s solicitors, Pinsent Masons LLP on July 26, 2011 and subsequently on August 23, 2011, and September 9, 2011.
5. The Respondent must have been aware given the “famous nature” of the mark BARCLAYS that in registering the domain name it was misappropriating the intellectual property of the Complainant.
6. The Respondent has intentionally attempted to attract for commercial gain Internet users to the website associated with the domain name by creating a likelihood of confusion with the Complainant’s trademarks in breach of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
For the reasons set out above, the Panel is satisfied that the Complainant has established unregistered and registered trademark rights in the marks BARCLAYS and BARCLAYCARD.
The Panel finds that the domain name is confusingly similar to the marks BARCLAYS and BARCLAYCARD. The dominant part of the domain name consists of the word “Barclay”. In addition, apart from the duplication of the syllable “lay”, the domain name is almost identical to the mark BARCLAYCARD.
Accordingly, the Panel finds for the Complainant in respect of the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the domain name.
The Panel accepts the submissions made by the Complainant. It is apparent that the domain name is being held as a holding page containing a number of links including finance related sponsored links which relate to competitor products and services to those offered by the Complainant. This means that when Internet users view the content displayed at the domain name and click upon one of the sponsored links on the website, the Respondent may generate revenue directly from the initial interest arising from the use of the name BARCLAYS and BARCLAYCARD marks in the domain name.
There is no evidence that the Respondent is known by the domain name and no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The content found at the domain name is pay-per-click sponsored links which relate to financial services. The Panel finds that in the present circumstances such activity does not qualify as noncommercial or fair use.
For the sake of completeness, the Complainant points out that the Respondent has never asked for and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainants trademark.
For these reasons, the Panel finds for the Complainant in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, in the absence of any evidence to the contrary, that on the evidence that the domain name was registered and is being used in bad faith.
The evidence of the history of correspondence between the Respondent and the Complainant’s agent, Pinsent Masons LLP, is such that effectively the letters were not responded to nor not dealt with in any satisfactory form.
The Panel accepts that the marks BARCLAYS and BARCLAYCARD are famous marks so that the Respondent must have been aware that in registering the domain name it was misappropriating the intellectual property of the owner of those marks.
It is also clear that the registration is being used to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks in breach of paragraph 4(b)(iv) of the Policy. Members of the public may likely assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYS and/or BARCLAYCARD trademark.
For these reasons, the Panel finds for the Complainant in relation to the third element 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 <barclaylaycardus.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: March 13, 2012