World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. Value Domain, Value-Domain Com

Case No. D2012-0296

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.

The Respondent is Value Domain, Value-Domain Com of Osaka-shi, Osaka-fu, Japan.

2. The Domain Name and Registrar

The disputed domain name <barclays-sitesavers.org> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

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 the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2012, the Registrar 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2012.

The Center appointed Tobias Zuberbühler 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.

4. Factual Background

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, and it currently operates in over 50 countries and employs approximately 144,000 people.

The Complainant is the registered owner of a variety of United Kingdom registered and Community registered BARCLAYS trademarks in a range of classes, including in relation to financial services. The mark BARCLAYS was registered long before the registration of the disputed domain name in 2011. The Complainant has also registered numerous domain names incorporating the BARCLAYS marks, such as <barclays.com> (since 1993) and <barclays.co.uk> (since 1996).

The disputed domain name is being used as a holding page containing a number of finance-related sponsored links and searches which relate to products and services competing to those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the following:

The disputed domain name contains a word which is identical to the name “Barclays” in which the Complainant has common law rights and for which the Complainant has registered trademark rights. Therefore, the disputed domain name is confusingly similar to the Complainant's trademarks.

The disputed domain name is being used as a holding page that displays an article on financial services the Complainant provides together with a number of finance-related sponsored links which relate to competitor products and services to those offered by the Complainant.

The Respondent is not known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name, as the website only displays sponsored links.

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 Complainant’s trademark.

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 it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademarks.

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCLAYS trademark. The disputed domain name reproduces the Complainant’s mark in its entirety, and it is recognized that the incorporation of a trademark in its entirety is generally sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Also, the addition of generic words such as “site savers” and a hyphen is not sufficient to avoid a finding of confusing similarity. See, Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.

Based on the Complainant’s contentions, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It may be concluded under the circumstances of this case that the Respondent must have known of the existence of the Complainant’s trademarks and their reputation when the disputed domain name was registered.

The disputed domain name is being used to redirect Internet traffic intended for the Complainant to competing products and services, with the intention to generate income for the Respondent. Such conduct falls under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use and the Complainant has thus fulfilled the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <barclays-sitesavers.org> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Dated: April 4, 2012

 

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