WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Adam Mathias
Case No. D2012-1048
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Pinsent Masons LLP, U.K.
The Respondent is Adam Mathias of Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <barclaysfantasyfundmanager.com>, <barclaysfantasyfundmanager.info>, <barclaysfantasyfundmanager.net> and <barclaysfantasyfundmanager.org> are registered with GoDaddy.com, 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 GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, LLC 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 May 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012
The Center appointed Gunnar Karnell as the sole panelist in this matter on June 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 major financial service provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with international presence in Europe, the Americas, Africa and Asia. It currently operates in over 50 countries, employing approximately 144,000 people.
The disputed domain names were registered by the Respondent on October 3, 2011.
The Complainant has requested that the disputed domain names be transferred to the Complainant.
5. Parties’ Contentions
The disputed domain names contain the word “barclays” which is identical or confusingly similar to the name “Barclays” in which the Complainant has common law rights and for which the Complainant has a variety of UK and Community registered trademarks in relation to financial services predating the registration of the disputed domain names. The Complainant and its wholly owned subsidiaries use a portfolio of domain names, such as <barclays.co.uk> and <barclays.com>.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not known by these names. They are being used for holding pages containing a number of finance related sponsored links which relate to products and services that compete with those offered by the Complainant. On such pages, the disputed domain names redirect Internet traffic intended for the Complainant to competitor products and services. The content found at the disputed domain names are pay-per-click sponsored links which relate to financial services. It is not a matter of noncommercial or fair use. The Respondent has not been authorized by the Complainant to register or to use any domain name incorporating the Complainant’s trademark.
The disputed domain names were registered and they are used in bad faith. The Respondent must have been aware of the widespread use, reputation and notoriety of the BARCLAYS marks and that registration and use of the disputed domain names constitute a misappropriation of the Complainant’s intellectual property. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundation of the Complainant’s contentions, while supporting its non-contradicted Complaint by written evidence, leads the Panel to the following conclusions:
A. Identical or Confusingly Similar
The Complainant has demonstrated to the Panel to have rights in the well-known trademarks (which is also a trade name) BARCLAYS.
The similarity of the trademarks to which the Complainant has rights and the disputed domain names is in this Panel’s view obviously confusing. Far from contributing to any distinction from the Complainant’s marks the added word “fantasyfundmanager” in the disputed domain names creates a false impression of an association with the Complainant, thereby misleading the public from the Complainant to the Respondent.
Therefore, the Panel finds that the Complainant has fulfilled the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain names.
As a consequence, and due to the fact that the Respondent has not rebutted the prima facie case made out by the Complainant, the Panel finds that the second element of the Policy under paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions regarding facts leading up to its conclusions about registration and use in bad faith of the disputed domain names, and since all circumstances that have here more specifically been noted have been taken into account, the Panel finds that the disputed domain names have been registered and used in bad faith.
Consequently, the Panel finds that the conditions about bad faith registration and bad faith use for a transfer of the disputed domain names to the Complainant are 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 names <barclaysfantasyfundmanager.net>, <barclaysfantasyfundmanager.info>, <barclaysfantasyfundmanager.org> and <barclaysfantasyfundmanager.com> be transferred to the Complainant.
Dated: June 26, 2012