WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank, PLC v. Barclay Capital
Case No. D2012-1044
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 Barclay Capital of Somerset, Kentucky, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <barclaycapitalholdings.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2012. On May 18, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Name. On May 21, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2012.
The Center appointed Martine Dehaut as the sole panelist in this matter on July 3, 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 following factual submissions have been made by the Complainant:
The Complainant is a financial services provider engaged in retail banking, corporate banking, wealth management and investment management services.
The Complainant has traded as “Barclays Bank Limited” and “Barclays & Company Limited” since 1896. Since 1985, the Complainant has traded as “Barclays PLC”.
Through the use of the names “Barclays” and “Barclays Capital” over the last 114 years the Complainant has acquired goodwill and a significant reputation in the above mentioned areas.
The Complainant is the registered owner of numerous trademark registrations consisting of/or containing the names “Barclays” and “Barclays Capital” in several classes related to the financial services. Among them, the Panel has noted the Community Trademark Registration No. 55236 and No. 736298 respectively registered on January 26,1999, and on February 25, 1999.
The Complainant also submitted a portfolio of domain names registered either in its name or in the name of its wholly owned subsidiaries, including among others the domain names <barclays.co.uk> registered prior to 1996, and <barclays.com> registered in November 1993. The domain names <barclayscapital.com> and <barclayscapital.com> were registered respectively on January 9, 1998, and July 22, 1999, in the name of their wholly owned subsidiaries. These domain names are used to promote and offer the Complainant’s banking and financial related goods and services.
The Disputed Domain Name was registered on October 14, 2011. It resolves to a login page the purpose of which is to provide access to sample financial agreements. Further information cannot be obtained without a login identification.
The Complainant sent a Cease and Desist letter to the respondent on December 12, 2011, as well as several reminders but did not receive any answer.
Given the lack of reply of the Respondent, no further information is available concerning the Respondent and its activities.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name contains a sign which is identical and/or confusingly similar to the BARCLAYS and BARCLAYS CAPITAL trademarks in which it has common law rights and for which it has obtained Trademark Registrations in many countries as stated above.
Given the worldwide reputation and notoriety of the BARCLAYS and/or BARCLAYS CAPITAL trademarks no trader would choose the Disputed Domain Name unless it intended to create a false association with the Complainant’s business in order to divert the public from the Complainant to the Respondent.
The fact that the Disputed Domain Name resolves to a website page proposing to provide sample agreements in the same field as that corresponding to the core business of the Complainant lead the Complainant to anticipate that the Disputed Domain Name is used for illegitimate purposes.
The Complainant asserts that he has not given any authorization to the Respondent to register and to use the Disputed Domain Name.
According to the Complainant, the Respondent is not known under the name “Barclaycapitalholdings” and does not have legitimate interest or rights in the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, and notwithstanding the default of the Respondent, the Complainant must prove that the following three criteria are met:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
Each of these elements will be reviewed separately in the following sections.
A. Identical or Confusingly Similar
The distinctive and attractive part of the disputed Domain name <barclaycapitalholdings> i.e. “barclaycapital” is very close to the Complainant’s registered trademarks BARCLAYS and BARCLAYS CAPITAL as well as to the domain names <barclayscapital.com> and <barcllayscapital.co.uk>.
It contains the Complaint’s trademarks in its entirety and differs from it only by the deletion of the letter “s” and the addition of the term “holdings”.
In the Panel’s view these differences are not sufficient to prevent the public from being confused. Indeed the mere deletion of the letter ”s” does not actually alter the strong distinctiveness of the Complainant’s trademark BARCLAYS. Besides the term “holdings” is merely descriptive as to the Complainant’s services and does not dispel the confusion between the disputed domain names trademarks at issue.
As a consequence, the Panel finds that it is likely that the public could unduly be led to think that the products or services proposed on the Respondent’s website, at the Disputed Domain Name, originate from the Complainant or from one of its affiliates.
Considering the foregoing, the Panel considers that the requirements of paragraph 4(a) of the Policy are met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name. These are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is that:
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
See paragraph 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”.
As stated above, the Complainant contends that it has never given any permission to the Respondent to register and to use the Disputed Domain Name. Besides, according to the Complainant’s assertions, the Respondent is not commonly known by the disputed domain name for the business purportedly conducted at the Disputed Domain Name.
In failing to reply, the Respondent did not take the opportunity to challenge the Complainant’s assertions and consequently did not give to the Panel any reasons to believe that the Respondent has any legitimate interest in registering and using the Disputed Domain Name. On the contrary, the attempt to use a domain name so close to such a well-known trademark in relation with sample financial agreements is prima facie evidence of unfair use.
No justification likely to comply with the circumstances listed under paragraph 4(a) has been brought by the Respondent
The Panel therefore considers that the Complainant fulfils the requirement set forth in paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Considering the high level of the reputation all over the world of the Complainant in the field of financial services, the Panel considers it very unlikely that the Respondent would not have been aware of the business activities of the Complainant under the firm name, domain name as well as the BARCLAYS and BARCLAYS CAPITAL trademarks.
Furthermore, the Complainant sent a cease and desist letter as well as several reminders, informing the Respondent of its rights in the BARCLAYS and BARCLAYS CAPITAL trademarks. These letters remain without any answer from the Respondent.
Turning now to the use of the Disputed Domain name, the Panel is concerned by the content found on the website at the disputed Domain name and the presentation of its front page with references to “sample escrow agreements” and “sample funding agreements” without any possibility to go further without a login identification. The Panel’s attention has also been drawn to the title of the website at the Disputed Domain Name consisting of the word “holdings” only, which as such does not correspond to the name of the Respondent.
Such factual circumstances are regarded by the Panel as signs of illegitimate and unfair use of a domain name closely similar to the complainant’s trademarks and domain names in an attempt to attract Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s trademarks to take advantage of its reputation.
Without any information from the Respondent which could either clarify and justify the registration and the use of the disputed Domain name, the Panel is of the view that the Disputed Domain Name was registered and used in bad faith.
Therefore the third criteria set out in paragraph 4(a) of the Policy is satisfied.
For 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 <barclaycapitalholdings> be transferred to the Complainant
Dated: July 17, 2012