WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Jonathan Syms
Case No. D2012-0513
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 Jonathan Syms of New York, United States of America (“USA”).
2. The Domain Names and Registrar
The disputed domain names <barclaysnews.com>, <barclaysshare.com> and <newsbarclays.com> are 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 names. On March 16, 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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 16, 2012. The Respondent did not submit a formal Response, but sent three email communications to the Center on March 15, 2012, April 5, 2012 and April 17, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 25, 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 an individual based in the USA.
C. The Disputed domain names
The disputed domain names were registered on June 9, 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 names comprise and are confusingly similar to the Trade Mark.
The disputed domain names were initially resolved to websites offering sponsored links to the Complainant’s competitors (the “Websites”), enabling the Respondent to generate income by hosting these sponsored links on the Websites. In response to a letter of demand from the Complainant’s representatives dated July 26, 2011, the Respondent offered to transfer the disputed domain names to the Complainant in return for compensation for “work and investment costs”. In ensuing correspondence, the Complainant’s representatives advised the Respondent that the Complainant did not intend to purchase the disputed domain names from the Respondent. The disputed domain names were subsequently, in around November/December 2011, resolved to the website “www.themedellinexperience.com”, a website promoting tourism in Medellin, Colombia (the “Medellin Website”).
The Respondent is not commonly known under the disputed domain names and does not have any rights or legitimate interests in respect of the disputed domain names.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain names.
The Respondent is not making a bona fide offering of goods or services under the disputed domain names.
The Respondent initially used the disputed domain names for the purpose of intentionally attracting, for commercial gain, Internet users to the Websites, in order to profit from the notoriety of the Trade Mark. The Respondent’s subsequent conduct has prevented the Complainant from registering the disputed domain names comprising the Trade Mark, contrary to paragraph 4(b)(ii) of the Policy.
Such conduct amounts to registration and use of the disputed domain names in bad faith.
The Respondent did not file a Response. In his email of March 15, 2012, the Respondent stated that he was suffering from multiple sclerosis. The Respondent further stated he was previously unaware of the Complainant and that he registered the disputed domain names both in memory of his dog, and in order to create news sharing websites. In subsequent email communications the Respondent asked for more time in order to resolve the dispute between the parties, and offered to “waive (his) rights to the lawfully purchased domains”.
The Respondent has not however taken any steps to transfer the disputed domain names to the Complainant.
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 names 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).
Each of the disputed domain names contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive words “news” or “shares” does not serve to distinguish this disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are 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 names 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 names. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden has thus shifted on 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 names or that the disputed domain names are 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 names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. To the contrary, the evidence shows the Respondent has previously used the Website in order to generate revenue through sponsored links to third party websites, by capitalising on consumer confusion between the disputed domain names, the Website and the Complainant, and that the disputed domain names have more recently been resolved to the Medellin Website.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. 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)(ii) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
The Panel concludes there is insufficient evidence to support a finding of bad faith registration and use under paragraph 4(b)(ii) of the Policy. In particular, the Complainant has failed to adduce sufficient evidence to show the disputed domain names were registered with the intent to prevent the Complainant from reflecting the Trade Mark in corresponding domain names, and, further, that the Respondent has engaged in a pattern of such conduct.
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 web site 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 web site or location.”
The evidence shows the Respondent has previously used the disputed domain names in order to capitalise on the repute of the Trade Mark and gain revenue through attracting consumers to the Websites.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
The Panel finds, in all the circumstances of this case, the Respondent’s conduct in initially offering to transfer the disputed domain names to the Complaint in return for compensation for “work investment and costs”, and in subsequently ignoring further communications from the Complainant’s representatives and resolving the disputed domain names to the Medellin Website, provides further support for a finding of bad faith registration and use under the Panel’s general discretion.
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 names <barclaysnews.com>, <barclaysshare.com> and <newsbarclays.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: April 26, 2012