WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Bruce Chang
Case No. D2012-0512
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 Bruce Chang of Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <barclaysgroup.info> is registered with GoDaddy.com, LLC.
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 GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On March 14, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center has verified that the Complaint satisfies 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 proceeding commenced on March 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 11, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on April 12, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 24, 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 is a company incorporated in the United Kingdom and the owner of numerous registrations worldwide for the trade mark BARCLAYS (the “Trade Mark”), the earliest dating from 1985.
The Respondent is apparently an individual based in China.
C. The Disputed Domain Name
The disputed domain name was registered on June 22, 2011.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
Established in 1896, the Complainant is a major global financial services provider. The Complainant operates in over 50 countries, employs approximately 144,000 people, and has more than 48 million customers worldwide. In addition to its registrations for the Trade Mark, the Complainant has used the Trade Mark for over 114 years.
The disputed domain name comprises and is confusingly similar to the Trade Mark.
The disputed domain name was initially resolved to a website offering sponsored links to the Complainant’s competitors’ websites (the “Website”). The Respondent generated income by hosting these sponsored links on the Website.
The Respondent is not commonly known under the disputed domain name and does not have any legitimate interests or rights in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name.
The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
The Respondent has used the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website, in order to profit from the notoriety of the Trade Mark.
The Respondent has also made two offers to sell the disputed domain name to the Complainant (for USD 3,000 and for EUR5,350), in response to communications sent by the Complainant’s representatives.
Such conduct amounts to registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 100 years.
UDRP panels have consistently held that domain names are generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The disputed domain name contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive word “group” does not serve to distinguish this disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden has thus shifted to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate, non-commercial or fair use of the disputed domain name. To the contrary, the evidence shows that the Respondent is using the Website in order to generate revenue through sponsored links to third party websites, capitalising on consumer confusion between the disputed domain name, the Website and the Complainant.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The evidence shows the Respondent has registered the disputed domain name and set up the Website in order to capitalise on the repute of the Trade Mark and gain revenue through attracting consumers to the Website.
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The evidence shows the Respondent has offered to sell the disputed domain name for amounts far in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain name.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraphs 4(b)(iv) and 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <barclaysgroup.info> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: April 26, 2012