WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Stanislaw Krzenszczynski
Case No. D2012-1458
1. The Parties
Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
Respondent is Stanislaw Krzenszczynski of Warsaw, Poland.
2. The Domain Name and Registrar
The disputed domain name <barclaycart.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 24, 2012, the Center sent to Complainant a complaint deficiency notification concerning the mutual jurisdiction issue, since the Complaint did not include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), paragraph 3(b)(xiii). On July 25, 2012, Complainant filed an amended Complaint.
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, 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2012.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 23, 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
Complainant is a financial institution with presence in Europe, the Americas, Africa and Asia, and provides financial services such as retail banking, credit cards, corporate banking, investment banking, wealth management and investment management.
Complainant owns numerous trademark registrations in the United Kingdom, inter alia BARCLAY / BARCLAYS, Reg. No. 1286579, Reg. Date March 3, 1989, Filing Date October 1, 1986, covering financial services of International Class 36, and BARCLAYCARD, Reg. No. 1286580, Reg. Date October 27, 1989, Filing Date October 1, 1986, covering services of International Class 36.
Complainant also owns several Community trademark registrations, including BARCLAYCARD, Reg. No. 000055277, Reg. Date January 26, 1999, covering goods and services of International Classes 9, 16, 36 and 42.
Complainant registered a portfolio of domain names including <barclays.co.uk>, registered prior to August 1996, <barclays.com>, registered on 23 November 1993, <barclaycard.com>, registered on August 6, 1997, and <barclaycard.co.uk>, registered prior to August 1996.
The disputed domain name was registered on December 2, 2011.
On January 26, 2012, Complainant's agent wrote to Respondent in relation to the disputed domain name advising Respondent of Complainant's BARCLAYS and BARCLAYCARD registered trademarks, and asking for the disputed domain name to be transferred to Complainant. Complainant did not receive any response to this letter or to further letters sent by Complainant on February 13, 2012 and 4 May 4, 2012. The letter dated January 26, 2012 was subsequently returned “undelivered”. The letters were also sent via email but no response was received and the content on the website at the disputed domain name remained unchanged.
As confirmed by the Panel’s visit made on August 28, 2012, the main page of the website at the disputed domain name, under the title “barclaycart.com”, contains the following “related searches”: “Barcklay [SIC] Card”, “Apply a Credit Card”, “Visa Credit cards”, “Credit Card Payment Service”, “Master Card Credit Card”, “Visa Prepaid Kreditkarte”, “Barclays Card”, “Cash back on Credit Card”, “Apply for visa Card online” and “MasterCard Credit Card offers”. By using Google’s AdSense advertising program, several of the links corresponding to these “searches”, redirect the Internet user to websites of banks such as HSBC Bank and Banco Galicia, offering financial services clearly competing with Complainant. All the links contained in Respondent’s website appear to be of a commercial nature.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name contains a word which is confusingly similar to the trademarks BARCLAYS and BARCLAYCARD in which Complainant has common law rights and for which Complainant has registered rights. Respondent has substituted the letter "d" in barclaycard with a letter "t". Such a minor change is a classic example of typosquatting, clearly intended to benefit from an Internet user typing “Barclaycard” into an Internet browser when searching for Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the worldwide fame, reputation and notoriety of the trademarks BARCLAYS and/or BARCLAYCARD, no trader would choose the disputed domain name unless with the intention to create a false impression of association with Complainant in order to attract business from Complainant or misleadingly to divert the public from Complainant to Respondent.
The disputed domain name is being used as a holding page containing a number of links including finance related sponsored links which relate to competitor products and services to those offered by Complainant. The disputed domain name is being used to redirect Internet traffic intended for Complainant away from Complainant and to competitor products and services, with the intention to generate income for Respondent. Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users searching for the Complainant. The content on the website at the disputed domain name is tailored to match some of Complainant's core goods and services. This means that when Internet users view the content displayed at the disputed domain name and click one of the sponsored links on the website, Respondent generates revenue directly from the initial interest arising from the use of BARCLAY and BARCLAYCARD marks in the disputed domain name.
Respondent is not known by the disputed domain name. It is clear that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The content found at the disputed domain name is pay-per-click sponsored links which relate to financial services. Such activity does not qualify as noncommercial or fair use.
Respondent has never been given any permission by Complainant to register or use any domain name incorporating Complainant's trademark.
The disputed domain name was registered and is being used in bad faith. Given the widespread use, reputation and notoriety of the famous BARCLAYS and/or BARCLAYCARD marks, Respondent must have been aware that in registering the disputed domain name he was misappropriating the valuable intellectual property of the owner of the BARCLAYS and BARCLAYCARD marks.
Respondent's registration of the disputed domain name has also prevented Complainant from registering a domain name which corresponds to Complainant's trade marks contrary to paragraph 4(b)(ii) of the Policy.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant's trade marks in breach of Policy paragraph 4(b)(iv). As explained earlier, the substitution of the letter "t" for the letter "d" in the BARCLAYCARD mark is an example of classic typosquatting.
Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of the BARCLAYS and BARCLAYCARD marks is such that members of the public will always assume that there is an association between Respondent and Complainant, and/or between Respondent and those marks. It is reasonably anticipated that the disputed domain name will divert potential custom from Complainant's business due to the presence of links to competitor websites in the content of the disputed domain name.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the BARCLAYS and BARCLAYCARD MARKS. See section 4 above.
The Panel notes that the disputed domain name reproduces Complainant’s BARCLAYCARD with the difference that the “d” letter in “card” is replaced by a “t”. The Panel considers that such a minor difference is negligible because “card” and “cart” are phonetically nearly identical. Also, UDRP panels consistently consider that the addition of the gTLD in a domain name is immaterial when comparing it with a mark for purposes of Policy paragraph 4(a)(i). Accordingly, the Panel concludes that the disputed domain name is confusingly similar to a mark in which Complainant has rights. See McKesson Corp. v. Texas International Property Associates- NA NA, WIPO Case No. D2009-0341 (“The disputed domain name differs from the Trademark McKesson by the simple addition of the letter “e” in “MecKesson” and these two terms are phonetically identical. The further addition of the term “.com”, top level domain, does not in any way diminish the likelihood of confusion. Contrary to the Respondent stating that the two are “entirely distinct and dissimilar”, the Panel is of the view that ‘MecKesson’ is as close as a word can be with MCKESSON without being identical and there is no need to adduce further evidence of confusion.”)
B. Rights or Legitimate Interests
Complainant contends that Respondent is not known by the disputed domain name and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the website at the disputed domain name contains pay-per-click sponsored links related to financial services. Further, Complainant contends that Respondent has never been given any permission by Complainant to register or use any domain name incorporating Complainant's trademark.
Taken together, these contentions and supporting evidence are apt, in the Panel’s view, to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Moreover, in the Panel’s view the disputed domain name is an obvious case of typosquatting, where Respondent closely imitates Complainant's BARCLAYCARD mark, thus allowing that Internet users presumably looking for Complainant and making a slight mistake when typing a “t” instead of a “d” into their browsers, are being offered links and “related searches” providing links to websites offering financial services in competition with Complainant’s business, and to other websites of a commercial nature. This use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, because it is aimed at obtaining profit from diverting Internet users presumably looking for Complainant's website.
It is the consensus view of UDRP panels that once a complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Since Respondent has not submitted any comments or evidence whatsoever in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the renown of Complainant, a global financial institution, and of its BARCLAYS and BARCLAYCARD marks, and considering that the disputed domain name is a clear case of typosquatting, and that the website at the disputed domain name is displaying links to commercial websites, some of which are offering goods and services competing with Complainant, the Panel concludes that Respondent must have had Complainant and its BARCLAY and BARCLAYCARD marks in mind at the time of registering the disputed domain name, which is a requisite of registration in bad faith.
Also, Complainant has shown that the disputed domain name resolves to a website containing “related searches” and other links either to websites offering financial services in competition with Complainant, or to other websites of commercial nature provided by Google’s AdSense advertising program. It is immaterial whether the monies obtained by Respondent from its affiliation to this program are big or small because in any case Respondent obviously is profiting from the Internet traffic attracted by the confusion it created among Internet users. As found in Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729, “[…] even if the only fees and commissions received by the Respondent were those obtained through the “Adsense” program, and even if they were used solely to defray the costs of his website, the use of the Domain Name for a website which promoted suppliers of other products was in itself an objectionable exploitation of the Complainant’s reputation under its mark. This use of the disputed domain name attracted Internet users to a website which promoted commercial suppliers of other products by misleading them into believing that it was a website operated by or with the consent of the Complainant. Such use is closely analogous to one of the specific examples of evidence of bad faith identified in paragraph 4(c) of the Policy and the Panel regards it as being in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.”
Accordingly, the Panel finds that Respondent, by using the disputed domain name as described above, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location, which is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).
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 <barclaycart.com> be transferred to Complainant
Dated: September 5, 2012