WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Drexel Global Investor
Case No. D2012-0295
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Drexel Global Investor of Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <barclays-ad.com> and <barclaysmanagement.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On February 15, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both Disputed Domain Names, 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed Philip N. Argy as the sole panelist in this matter on March 22, 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following salient facts, taken from the Complaint, remain uncontested:
The Complainant 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. It has been in business continually under the BARCLAYS brand since 1896 and now operates in over 50 countries.
The Complainant is the registered proprietor of numerous trademarks comprising the word “Barclays” both alone and together with devices and other words. These numerous variants of the BARCLAYS mark are registered in many countries.
The Complainant is also the registrant of a portfolio of domain names including <barclays.co.uk> which was registered “before August 1996” and <barclays.com> which was registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services throughout the world.
According to the Registrar’s verification response, the Respondent registered both Disputed Domain Names on June 14, 2011.
5. Parties’ Contentions
The Complainant seeks to prove that all three limbs of the Policy are satisfied, namely, that:
(1) Each of the Disputed Domain Names is identical or confusingly similar to the BARCLAYS trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of either of the Disputed Domain Names; and
(3) The Disputed Domain Names were each registered, and are being used, in bad faith.
The Respondent did not reply to the Complainant’s contentions nor place any other material before the Panel.
6. Discussion and Findings
The Complainant bears the onus of proving that each limb of the Policy is satisfied. Accordingly, despite there being no Response, the Panel is obliged to consider the Complainant’s evidence and arguments.
A. Identical or Confusingly Similar
The Disputed Domain Names comprise the word “barclays” with a suffixed character string of “-ad” and “management” respectively and the further addition of the generic top-level domain “.com”. Neither of the suffixed character strings displaces the initial interest confusion caused by the “barclays” component. Curious though the Panel is as to why the Complainant provided no evidence of trade mark registrations in the United States of America, the Panel is satisfied that each of the Disputed Domain Names is confusingly similar to the Complainant’s UK and European Community BARCLAYS trademarks, and that finding is sufficient to make good the first limb of the Policy.
B. Rights or Legitimate Interests
The Panel cannot discern any basis on which the Respondent might hold rights or legitimate interests in a name that has been in use by the Complainant and its corporate predecessors for nearly 115 years. Barclays is a household word in most countries in which it does business, including the United States where the Respondent is located. The Complainant has not granted any rights to the Respondent to use either of the Disputed Domain Names and the Respondent claims none. Nor does the Respondent contend that it has any legitimate interests in the Disputed Domain Names. So far as the Panel can see each of the Disputed Domain Names resolves to a parking page at which click-through traffic is generated through the use of financial services links generated by GoDaddy.com, LLC. In the Panel’s view, that use does not amount to a legitimate interest in respect of either of the Disputed Domain Names. The Complainant has made good the second limb of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s lawyers wrote to the Respondent on no less than four occasions demanding cessation of use of the Disputed Domain Names, but all to no avail. In the Panel’s view, once a complainant has made out a prima facie case, as the Complainant has done in this matter, it behoves a respondent to file something by way of a credible response if it is to have much chance of displacing the bad faith interpretations that might otherwise be placed on its conduct.
The registration on the same day of two domain names by the Respondent, each containing the Complainant’s BARCLAYS trademark, makes it easy for the Panel to accept the Complainant’s contentions that the Respondent must have been aware of the Complainant and its reputation at the time it registered the Disputed Domain Names.
As to the use in bad faith, the websites associated to the Disputed Domain names are pay-per-click sites which contain links to products and services of the Complainant’s competitors. Therefore, in the Panel’s view, the Respondent may generate revenue directly from the initial interest arising out of the use of BARCLAYS trademark in the Disputed Domain Names (see e.g. paragraph 3.2, WIPO Overview 2.0).
Accordingly, the Panel agrees with the Complainant that each of the Disputed Domain Names was registered and is being used in bad faith, thus satisfying the third limb 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 Disputed Domain Names, <barclays-ad.com> and <barclaysmanagement.com>, be transferred to the Complainant.
Philip N. Argy
Dated: April 4, 2012