World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. David Neilson

Case No. D2012-0511

1. The Parties

Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom (“UK”).

Respondent is David Neilson of Broadbeach Waters, Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <barclaybusinessbrokers.com>, <barclaybusinessbrokers.net>, <barclaybusinessbrokers.org>, <barclaysaustraliabusinessbrokers.com>, <barclaysaustraliabusiness.com>, <barclaysbusinessbrokersnetwork.com>, <barclaysbusinessfinance.com>, <barclaysbusinessmigration.com>, <barclaysbusinessnetwork.com>, <barclaysbusinesssalesnetwork.com>, <barclaysfinancalservices.com>, <barclaysglobalbusiness.com>, <barclaysmigration.com> and <barclaysmigrationservices.com> (together, the “Disputed Domain Names”) are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc (the “Registrar”).

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 the Registrar a request for registrar verification in connection with the disputed domain names. On March 20, 2012,the Registrar 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 March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 11, 2012.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 17, 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

Complainant is a global financial institution, providing retail, corporate and investment banking, as well as credit cards and wealth management services. Complainant, a UK company, was incorporated on July 20, 1896, and operates in fifty countries around the globe.

Complainant has obtained several UK trademark registrations for the mark BARCLAY and the mark BARCLAYS. These marks date from at least the 1980s. These include: Trademark No. 1286579 (issued 1986); Trademark No. 1380658 (issued 1989); and Trademark No. 1393351 (issued 1989). Complainant has also obtained UK trademark registrations including the term BARCLAY or BARCLAYS with the addition of another word. These include BARCLAYS GLOBAL INVESTORS, Trademark No. 2111341 (issued 1996); BARCLAYBANK, Trademark No. 1336098 (issued 1988); and BARCLAYCARD, Trademark No. 1286580 (issued 1986).

Complainant owns the registration for the domain name <barclays.com> as well as <barclays.co.uk>, the latter since “prior to August 1996,” according to the publicly available WhoIs database of domain name registrations and attested to by Complainant’s counsel. Complainant uses these domain names to connect to websites through which it informs potential customers about its BARLCAYS mark and its banking and other services and products.

According to the inquiry response from the Registrar, Respondent registered the Disputed Domain Names between July 9 and July 17, 2011. Respondent has no affiliation with Complainant. Respondent has in the past linked the Disputed Domain Names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products. Complainant has not authorized these links, nor the use of its trademarks therewith.

Respondent has offered the disputed domain name for sale to Complainant at a cost of GBP 1500 per Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that: (i) the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondent registered and is using the Disputed Domain Names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. Each of the Disputed Domain Names directly incorporate Complainant’s registered trademark, either BARCLAY or BARCLAYS and merely adds a descriptive word, generally referring to Complainant’s banking business. Since Complainant also has trademarks including descriptive terms regarding its banking business, the Panel finds that this is especially confusing, and consumers would be more likely to expect the URLs associated with such websites to be associated with goods or services emanating from a source related to, or sponsored by, Complainant.

The Disputed Domain Name <barclaybusinessbrokers.com> incorporates Complainant’s registered trademark BARCLAY and adds the descriptive terms “business” and “brokers” which suggest to consumers an online location where they can obtain information regarding Complainant’s banking and brokerage services. The Disputed Domain Names <barclaybusinessbrokers.net> and <barclaybusinessbrokers.org> do the same, with different top level domains. The disputed domain name <barclaysaustraliabusinessbrokers.com> similarly incorporate Complainant’s registered trademark BARCLAYS and adds the descriptive terms “Australia,” which is a place where Complainant does business, as well as “business” and “brokers.” The Disputed Domain Name <barclaysaustraliabusiness.com> incorporates Complainant’s registered trademark BARCLAYS and adds the descriptive terms “Australia” and “business,” again, putting together the concepts of a country where consumers will find Complainant doing business. The Disputed Domain Name <barclaysbusinessbrokersnetwork.com> incorporates Complainant’s registered trademark BARCLAYS and adds the descriptive terms “business,” “brokers,” and “network.” This connotes to consumers the network of business brokers working through Complainant’s BARCLAYS business. The Disputed Domain name <barclaysbusinessfinance.com> incorporates Complainant’s registered trademark BARCLAYS and adds the descriptive terms “business” and “finance,” which describe the business and finance services offered by Complainant to its consumers, including online. Similarly, the Disputed Domain Name <barclaysbusinessmigration.com> incorporates Complainant’s registered trademark BARCLAYS and adds the descriptive terms “business” and “migration,” suggesting to consumers an online location where they can “migrate” or send their BARCLAYS business. The Disputed Domain Name <barclaysbusinessnetwork.com> incorporates Complainant’s registered trademark BARCLAYS and adds the descriptive terms “business” and “network,” suggesting to consumers an online business network run by Complainant. Similarly, the Disputed Domain Name <barclaysbusinesssalesnetwork.com> incorporates Complainant’s registered BARCLAYS trademark and adds the descriptive terms “business,” “sales,” and “network,” which suggests a location for consumers to take advantage of Complainant’s sales and networking business online. The Disputed Domain Name <barclaysfinancalservices.com> incorporates Complainant’s registered BARCLAYS trademark, and adds the descriptive terms “financial” and “services,” suggesting to consumers an online location where they can obtain information about Complainant’s financial services. The Disputed Domain Name <barclaysglobalbusiness.com> incorporates Complainant’s registered BARCLAYS trademark and adds the descriptive terms “global” and “business,” suggesting to consumers a place where they would find information about Complainant’s global business operations. Finally, the Disputed Domain Names <barclaysmigration.com> and <barclaysmigrationservices.com> incorporate Complainant’s registered BARCLAYS trademark and add the descriptive term “migration” (and/or “services”), suggesting to consumers information about Complainant’s banking services online.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); CBS Broadcasting Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

This Panel therefore finds that each of the Disputed Domain Names is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the Disputed Domain Names. Rather, as mentioned in Section 4 of this Panel’s Decision, Respondent has early on used the Disputed Domain Names to divert Internet users to websites that are unaffiliated with Complainant or Complainant’s services and later offered to sell them to Complainant.

Therefore, this Panel finds that Complainant has provided sufficient and uncontested evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s Decision, Respondent has earlier linked the Disputed Domain Names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services.

In particular, Respondent has in the past linked the Disputed Domain Names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These included competing products. Complainant did not authorize these links, nor the use of its trademarks therewith.

Furthermore, Complainant has evidenced that Respondent has “registered or . . . acquired the domain name primarily for the purpose of selling . . . for valuable consideration in excess of . . . documented out-of-pocket costs,” in a showing of bad faith as contemplated by paragraph 4(b)(i) of the Policy. In particular, Respondent offered the Disputed Domain Names for sale to Complainant, offering on at least two occasions via email to sell them to Complainant at a cost of GBP 1500 per Disputed Domain Name. In his email of October 30, 2011, Respondent stated the following:

“I would like to point out to you the original correspondence to your client the proposal for sale (I.P) [sic] Intellectual Property. There was a list of (51) domain names your associates have only sent through (38) of the original list [sic]. As i mentioned in the earlier Email and now i am happy to sign over as requested by your client Barclays Bank PLC on all domain names listed for a small fee for my time and costs at 1,500 British pounds per domain name as to the list, which i am sure your client would have supplied to you [sic]. I await your correspondence.”

Therefore, this Panel finds that Respondent registered and used the Disputed Domain Names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <barclaybusinessbrokers.com>, <barclaybusinessbrokers.net>, <barclaybusinessbrokers.org>, <barclaysaustraliabusinessbrokers.com>, <barclaysaustraliabusiness.com>, <barclaysbusinessbrokersnetwork.com>, <barclaysbusinessfinance.com>, <barclaysbusinessmigration.com>, <barclaysbusinessnetwork.com>, <barclaysbusinesssalesnetwork.com>, <barclaysfinancalservices.com>, <barclaysglobalbusiness.com>, <barclaysmigration.com> and <barclaysmigrationservices.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: April 25, 2012

 

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