WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy
Case No. D2012-0838
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 of Great Britain and Northern Ireland.
The Respondent is Transure Enterprise Ltd, Host Master of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <braclayspremierleague.com> is registered with Above.com, Inc. (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2012, the Registrar 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 April 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2012.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 30, 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 an international banking and finance company which has done business under its Barclay name since 1896 (variously as Barclay’s PLC, Barclay’s Bank Limited and Barclay & Company Limited). According to the uncontested information provided in the Complaint, the Complainant is active in over 50 countries worldwide, maintains a staff of roughly 144,000 employees, and manages the funds of over 48 million clients around the globe.
The Complainant is further the registered holder of numerous trademarks for its Barclay brand, including registrations for BARCLAY, BARCLAYS and a variety of names and phrases containing the BARCLAY element. Additionally, the Complainant is the registered holder of numerous word-and-image marks in the United Kingdom for the phrase “Barclays Premier League” with a device, either composed of a football and/or a crowned lion with a football. These latter marks were all registered between 2005 and 2009, several years prior to the registration of the disputed domain name.
The disputed domain name was registered on October 26, 2011 and was, at the time of the filing of the Complaint, held by the registrant through a privacy service. Upon notice by the Center of the UDRP Complaint, the Registrar disclosed the name of the underlying registrant, Transure Enterprise Ltd. The Complainant amended its Complaint to include this disclosed entity.
The disputed domain name is being used to display pay-per-click links to, among other topics, banking and financial services, including mortgage services, loans, online banking, and banking institutions in competition with the Complainant.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain is confusingly similar to its numerous BARCLAY marks because the domain name contains a simple misspelling of the “Barclay” element.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it has not been licensed to use the Complainant’s marks in any way. The website is being monetized by the Respondent by capitalizing on misdirected Internet traffic intended for the Complainant’s website. The Respondent’s use of the disputed domain name is not a bona fide offering, nor a noncommercial or fair use. Further, the Complainant alleges that the Respondent is not known by a name corresponding to the disputed domain name.
Concerning the third requirement of the Policy, the Complainant notes its longstanding use of its BARCLAY marks and indicates that the Respondent must have been aware of the Complainant at the time it registered the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain pursuant to paragraph 4(b)(iv) of the Policy, and additionally to prevent the Complainant from registering the domain name pursuant to paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said trademark.
By virtue of its numerous trademark registrations for BARCLAY and related marks, including the BARCLAYS PREMIER LEAGUE mark, as well as its use in commerce of the Barclay name for over 100 years, the Complainant has clearly demonstrated its rights for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020. It has furthermore been well established that a generic top level domain (gTLD) suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The textual string of the disputed domain name is “braclayspremierleague”, which contains a reversal of the second and third letters of the Complainant’s BARCLAYS PREMIER LEAGUE trademark. This minor alteration does not change the overall impression created by the disputed domain name, and appears to constitute a classic case of typosquatting. See WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; Compagnie de Saint-Gobain v. Bao Shui Chen, WIPO Case No. D2009-0712; Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection, WIPO Case No. D2008-0691; and Credit Suisse Group v. VPDD UBGM ltd, WIPO Case No. D2007-0867. Likewise, the removal of the spaces between the words comprising the mark is irrelevant for the purpose of comparison, as spaces are not capable of representation in domain names. See Société AIR FRANCE v. Ted Chen, WIPO Case No. D2007-0528.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BARCLAY and BARCLAYS PREMIER LEAGUE marks, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its BARCLAY marks in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, the website is used to host a pay-per-click landing page, from which the Respondent presumably generates revenue, that contains links to, inter alia, financial institutions and banking opportunities. Thus, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that its BARCLAY marks are widely known in connection with its banking, financial, and investment services. The BARCLAY mark has been in use since 1896 and the Complainant holds numerous registrations for trademarks comprising or containing the Barclay name which pre-date the Respondent’s registration of the disputed domain name. The disputed domain name contains a very slight misspelling of the Complainant’s BARCLAYS PREMIER LEAGUE trademark, and the Respondent has used its domain name in connection with pay-per-click links connected to the same industry in which the Complainant operates. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its BARCLAYS PREMIER LEAGUE mark when it selected the disputed domain name.
By registering the BARCLAYS PREMIER LEAGUE mark as a domain name, including a two-letter spelling inversion, and using the domain name to host a pay-per-click landing page to garner referral revenue, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s website. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez, WIPO Case No. D2010-1987 and Luigi Lavazza S.p.A. v. Satoshi Shimoshita, WIPO Case No. D2011-1299.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 <braclayspremierleague.com> be transferred to the Complainant.
Dated: June 1, 2012