WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. IPOWER Hosting / Wendy Zucker
Case No. D2012-0510
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 Respondents are IPOWER Hosting of Phoenix, United States of America, represented by Eric White, United States of America, and Wendy Zucker of New York, United States of America, self represented.
2. The Domain Name and Registrar
The disputed domain name <barclayleasing.net> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2012. On March 14, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On March 16, 2012, FastDomain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2012, providing the registrant and contact information disclosed by FastDomain, Inc. and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2012 by Wendy Zucker.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 11, 2012. The Response was filed with the Center on March 27, 2012 by Wendy Tucker.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 13, 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 paragraph 7 of the Rules.
On May 15, 2012, the Panel issued Procedural Order No. 1 to the parties, requesting the Respondent to submit further evidence regarding the underlying registrant of the domain name <barclayleasing.com> and of the use of the website associated with the domain name <barclayleasing.com> for its business since the very beginning of its business operations. The Respondent filed a reply to Procedural Order No. 1 on May 17, 2012. The Complainant did not reply to the Respondent’s submission.
4. Factual Background
The Complainant is a major global financial service provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an international presence in Europe, the Americas, Africa and Asia. The Complainant was established in 1896 and currently operates in over 50 countries, employs approximately 144,000 people and serves more than 48 million customers and clients worldwide.
The Complainant is the registered owner of numerous trade marks protecting the words BARCLAY and BARCLAYS and variations thereof in various countries for goods and services in a variety of classes, inter alia United Kingdom registration no. 1286579 for BARCLAYS, registered on October 1, 1986, and Community Trade Mark registrations no. 2315554 BARCLAYS, registered on February 13, 2003, and no. 55236 “BARCLAYS”, registered in January 26, 1999 (hereinafter referred to as the “BARCLAYS Marks”). Furthermore, the Complainant is the registered owner of a portfolio of domain names including <barclays.co.uk> and <barclays.com> which are used to promote and offer its banking and finance related goods and services.
The disputed domain name <barclayleasing.net> was registered on October 3, 2011.
The Complainant sent a cease and desist letter to the Respondent on November 24, 2011, followed by reminders on December 19, 2011 and January 12, 2012, which all remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that the disputed domain name contains a word which is confusingly similar to the Complainant’s BARCLAYS Marks, in which the Complainant has registered and, due to the use in commerce for over 114 years, unregistered rights in connection with the services it provides. The Complainant further states that no trader would choose the disputed domain name unless it was with the intention to create a false impression of association with the Complainant in order to attract business from the Complainant or to misleadingly divert the public away from the Complainant.
(2) The Respondents have no rights or legitimate interests in respect of the disputed domain name as they are neither known by the disputed domain name nor making a legitimate non-commercial or fair use of the disputed domain name, but provide pay per click sponsored links which relate to competitor products and services to those offered by the Complainant. Further, the Respondents have never asked for, and have never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark.
(3) With regard to bad faith, the Complainant contends that the BARCLAYS Marks are famous and that the Respondents must have been aware that in registering the disputed domain name they were misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks. The Complainant further states that the Respondents’ registration of the disputed domain name has also prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks and that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s trade marks, that the Respondents will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of the BARCLAYS Marks is such that the members of the public will always assume that there is an association between the Respondents and the Complainant. Finally, the Complainant argues that the disputed domain name will presumably divert potential customers from the Complainant’s business due to the presence of links to competitor websites provided under the disputed domain name.
The Response was filed by Wendy Zucker, who denies the Complainant’s assertions.
She states that the disputed domain name was registered for Barclay Leasing Inc., a family owned micro ticket United States based leasing company incorporated in the state of New York, United States, in 2005, though its webhosting company. She submits a printout from the Division of Corporations of the NYS Department of State, providing information on such entity which names a certain H. Zucker as contact person.
Ms. Zucker further states that Barclay Leasing Inc. has never used the name “Barclays”. She further states that Barclay Leasing Inc. never posted any advertising at all, that the advertising available at the disputed domain name was a landing page and was added by their web hosting company, that the advertising was removed immediately upon receipt of the Complaint on March 21, 2012 and that Barclay Leasing Inc. has not collected any revenue for the advertising
With regard to paragraph 4(a)(ii) of the Policy, Ms. Zucker states that she is known by “Barclay Leasing” as this is the name of one of her companies.
With regard to bad faith use and registration, Ms. Zucker states that Barclay Leasing Inc. registered <barclayleasing.com> in 2005 and the disputed domain name in October 2011 to avoid confusion with other companies in the United States and not to conflict with or to leverage the Complainant’s name.
Ms. Zucker finally states that there is goodwill associated with their company as they have been a micro ticket United States based leasing company for over 8 years and have been in the leasing business for over 11 years.
6. Discussion and Findings
The first point to be dealt with is the identity of the Respondent. The Panel accepts Ms. Zucker’s allegations and evidence that the disputed domain name was registered in the name of Barclay Leasing Inc. through a webhosting company and that Barclay Leasing Inc. is the beneficial holder of the disputed domain name. As a result, the Panel will treat Barclay Leasing Inc. as beneficial holder of the disputed domain name.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the word Barclay.
The additional word “leasing” in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of common or generic words, such as “leasing” (cf. Bibby Financial Services Limited Bibby Leasing Limited v. WhoisGuard / Click Consultancy Services Limited, WIPO Case No. D2007-1319 (<bibbyleasing.com>); Enterprise Rent-A-Car Company v. Spiral Matrix, NAF Claim No. 688823 (<enterpriseautoleasing.com> et al.); America Online, Inc. v. Autoleasing On Line, NAF Claim No. 209904 (<aolleasing.com> et al.); Toyota Motor Sales, U.S.A., Inc. v. ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> et al.)).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 if the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in a disputed domain name, it is the consensus view among UDRP panelists that a complainant may make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. In such cases, the burden of demonstrating that the respondent has rights or legitimate interests in a disputed domain name will then shift to the respondent.
The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.
The Respondent, however, provided evidence in these Policy proceedings that it has been registered under the name Barclay Leasing Inc. with the Division of Corporations of the NYS Department of State since 2005 and that it has used the domain name <barclayleasing.com> to promote and offer its finance related services for many years and before any knowledge of the dispute. A respondent may refer to its own rights or legitimate interests in a disputed domain name under paragraph 4(c)(ii) of the Policy if such respondent has used a name which corresponds to the second level of the disputed domain name in a business context before registering the disputed domain name (cf. CITGO Petroleum Corporation v. Matthew S. Tercsak, WIPO Case No. D2003-0003; AST Sportswear, Inc. v. Steven R. Hyken, WIPO Case No. D2001-1324; Penguin Books Ltd. v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204). In the present case, the evidence shows that the Respondent started doing business under the name “Barclay Leasing” in 2005 and has used the domain name <barclayleasing.com> on business equipment, inter alia forms, marketing postcards, business cards and other marketing equipment, since at least 2008. Furthermore, in the Panel’s opinion, the Respondent has convincingly asserted that it registered the disputed domain name in connection with its business for defensive purposes and that the advertising that was once displayed on the website at the disputed domain name had been added by its web hosting company and was removed immediately upon receipt of the Complaint. The Panel therefore accepts that the Respondent has used the name “Barclay Leasing” in the context of its business since before the disputed domain name was registered and that it therefore has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. As a consequence, the Complaint must fail.
C. Registered and Used in Bad Faith
In the light of the Panel’s finding with regard to the Respondent’s own rights or legitimate interests (cf. 6.B.) it is not necessary for the Panel to come to a decision in this regard.
For all the foregoing reasons, the Complaint is denied.
The Panel’s decision is for the limited purpose of the Policy which is in place to enable trademark owners to resolve clear cases of cyber squatting. The denial of the Complaint in that context is naturally without derogation to any cause of action that the Complainant may have against the Respondent with respect to the use of the BARCLAY and BARCLAYS marks in other forms.
Dated: May 31, 2012