WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Sharon ObiozorCantle, Web Hosting
Case No. D2012-0837
1. The Parties
The Complainant is Barclays Bank PLC of London United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Sharon Obiozor-Cantle, Web Hosting of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bloggingbarclaysbank.com> (the “Domain Name”) is registered with Launchpad.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 19, 2012, the Center transmitted by email to Launchpad.com Inc. a request for registrar verification in connection with the Domain Name. On April 23, 2012, Launchpad.com Inc. 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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 31, 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 major global financial services provider. It has traded since 1896 under names including “Barclays” or “Barclays Bank” and services more than 48 million customers in over 50 countries worldwide.
The Complainant is the proprietor of numerous United Kingdom and European Community registered trademarks which comprise or include the terms “Barclay” or ”Barclays”. These marks include, for example, United Kingdom registered trademark No. 1336098 for BARCLAYBANK registered on February 19, 1988 in international class 36 for banking and related services, and European Community trademark registration No. 2315554 for BARCLAYS registered on February 13, 2003 in numerous classes including class 36.
The Domain Name was registered on January 20, 2011.
At the date of the Complaint, the Domain Name resolved to a website which featured content relating to banking and financial services and contained links to providers of services competitive with those of the Complainant.
5. Parties’ Contentions
The Complainant provides evidence of its trademark registrations referred to above.
The Complainant submits that by virtue of its worldwide presence and activities over 114 years it has acquired significant reputation and goodwill in the areas in which it operates and that the term “Barclays” has become a distinctive identifier in that regard. In addition to its trading activities referred to above, the Complainant points to a substantial portfolio of active domain names including the term “Barclay”.
The Complainant submits that, by virtue of the above matters, the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that, in view of the fame and notoriety of the BARCLAYS name and mark, no trader could choose a domain name including the term “Barclay” without such confusion arising.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has never authorized the Respondent to use the Domain Name nor has the Respondent ever been known by that name. The Respondent is using the Domain Name misleadingly to divert Internet users to websites operated by the Complainant’s competitors, which does not constitute bona fide use of the Domain Name. Nor is the Respondent making legitimate non-commercial or fair use of the Domain Name.
The Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant repeats its contentions as to the use of the name. It submits that the Respondent is attempting to attract Internet users to her site for commercial gain by creating confusion with the Complainant’s mark as to the source of the services offered. Further, given the notoriety of the Complainant’s marks, the Respondent must have appreciated that she was misappropriating the Complainant’s valuable goodwill. In addition, the Complainant points to correspondence between its solicitors and the Respondent, including an email from the Respondent dated August 31, 2011 stating that she believed the matter had been ‘dealt with’ and that she believed the Domain Name no longer existed.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the registered proprietor of numerous UK and Community registered trademarks which include the term “Barclay”, including BARCLAYS and BARCLAYBANK, for services including banking and financial services. It has also established that it has significant unregistered trademark rights in those marks. The Domain Name is <bloggingbarclaysbank.com>. The distinctive part of the Domain Name is “‘barclaysbank” which in the view of the Panel is undoubtedly confusingly similar to the Complainant’s marks and would be likely to be understood by Internet users to refer to those marks. The prefix “blogging” is descriptive in nature and does not detract from the distinctive element of the Domain Name and the consequent likelihood of confusion. Accordingly, the Complainant has duly established for the purpose of the Policy that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not disputed the Complainant’s contention that it has never granted the Respondent permission to use the Domain Name and that the Respondent has never been known by that name. Nor is there any evidence of legitimate noncommercial or fair use of the Domain Name. There is no submission, for example, that the Domain Name has been or will be used for the purposes of a fan or protest site. Instead, the Complainant’s contention is that the website linked to the Domain Name featured content relating to banking and financial services and contained links to competitors of the Complainant on, presumably, a pay-per-click or other commercial basis. Furthermore, the only evidence emanating from the Respondent is an email stating that she believed the Complainant’s complaint had been “dealt with” and that the Domain Name no longer existed. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant relies on similar matters as in the case of rights or legitimate interests. Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith, if the Complainant can show that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location. The Panel finds that the Respondent has done so. In particular, the Panel readily infers on the facts of the case that the Respondent knew of the Complainant’s well-known name and marks and that she registered and used the Domain Name with the intention of unfairly profiting from the Complainant’s goodwill. This conduct constitutes registration and use of the Domain Name in bad faith for the purpose of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bloggingbarclaysbank.com> be transferred to the Complainant.
Steven A. Maier
Dated: June 5, 2012