WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-1050
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 Above.com Domain Privacy / Transure Enterprise Ltd of Beaumaris, Victoria, Australia and Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland , respectively.
2. The Domain Name and Registrar
The disputed domain name <berclayswealth.com> is registered with Above.com, Inc.
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 Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 23, 2012, Above.com, Inc. 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 May 23, 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 May 25, 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 May 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 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 Complainant is a global provider of financial services. Established in 1896, it offers its services in over 50 countries, to nearly 50 million clients.
The Complainant owns numerous registered trade marks for BARCLAYS, including a number of registrations over the expression BARCLAYS WEALTH. These include in particular the following United Kingdom (“UK”) registrations:
BARCLAYS WEALTH (word) Trade mark Registration No. 2436569
BARCLAYS WEALTH (word and device) Trade mark Registration No. 2486138
BARCLAYS WEALTH (word and device) Trade mark Registration No. 2486313
No information is available concerning the Respondent and its activities apart from the website to which the disputed domain name is directed.
The disputed domain name, <berclayswealth.com>, was registered on November 30, 2011. This Panel has accessed this domain name and seen that it is used to host a parking page which offers to Internet users a number of sponsored links, including links to websites offering financial services (banking, finance, credit card, and insurance).
5. Parties’ Contentions
The following are the most significant arguments put forwards by the Complainant, for each of the three criteria provided for by the Policy.
First, the Complainant indicates that “the domain name contains a word which is confusingly similar to the name BARCLAYS and BARCLAYS WEALTH in which the Complainant has common law rights and for which the complainant has registered trade marks”.
Secondly, the Complainant argues that “the Respondent is not known by the Domain Name”, and that “it is clear that the Respondent is not making a legitimate non-commercial or fair use of the Domaine Name”.
Thirdly, the Complainant states that “given the widespread use, reputation and notoriety of the famous BARCLAYS and BARCLAYS WEALTH marks, the Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks”. It further adds that “it is reasonably anticipated that this Domain Name will divert potential custom from the Complainant’s business due to the presence of links to competitor websites”.
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 Complaint is based on common law rights over BARCLAYS and BARCLAYS WEALTH, as well as on registered trade mark rights over the same signs. For reasons of procedural economy, this Panel will solely compare the disputed domain name with the BARCLAYS WEALTH trade marks registered in the UK.
Clearly and in the framework of the UDRP, the disputed domain name is confusingly similar to the Complainant’s trademarks. Indeed, the disputed domain name contains a single modification with respect to the trademark BARCLAYS WEALTH: the vowel “a” is substituted by the vowel “e”. Accordingly and as a result of a mere typo error committed by Internet users (this letters are quite close on AZERTY and QWERTY keyboards), they can access to the disputed domain name instead of reaching the domain names of the Complainant. Indeed and even though this is not mentioned in the Complaint, it is worth mentioning that the services of the Complainant are also offered via a webpage hosted under the domain name <barclayswealth.com>.
As a result, the first element of the Policy is 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 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”
The Respondent has failed, indeed, to allege any right or legitimate interest in the disputed domain name. In any event, the fact that this domain name refers to a parking page tends to demonstrate the lack of right or legitimate interest of the Respondent. This Panel finds that the second element of the Policy is met.
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.
In the Panel’s view, it is undisputable that the Respondent has registered and is using the domain name <berclayswealth.com> in bad faith.
First, the choice of the disputed domain name strongly suggests a prior knowledge of the trademarks of the Complainant, and the will to take advantage of possible typographical errors committed by Internet users.
Secondly, the disputed domain name is used as a parking page, which offers in particular links to third parties’ websites in the same field of activity. This is a typical bad faith use, as the Respondent is taking advantage of the typographical errors committed by Internet users to obtain a financial gain through a pay-per-click system.
Accordingly, 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 domain name <berclayswealth.com> be transferred to the Complainant.
Dated: July 9, 2012