WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-1460
1. The Parties
Complainant is Barclays Bank PLC, London, United Kingdom of Great Britain and Northern Ireland, (the “United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
Respondents are Above.com Domain Privacy, Victoria, Australia, of Australia / Transure Enterprise Ltd, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <barclayusacard.com> (“Domain Name”) 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 July 18, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 25, 2012 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 2012.
The Center verified that 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 Respondents 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. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on August 17, 2012.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on September 26, 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 Barclays Bank PLC is a large financial services company engaged in retail banking, credit cards, corporate banking, and wealth and investment management services. Complainant is registered in the United Kingdom and operates globally in over 50 countries, including, with particular relevance to this case, the United Kingdom, Europe, and the United States of America.
Since 1985, Complainant has traded as Barclays PLC. Prior to 1985, and from 1896, Complainant traded as Barclays Bank PLC, Barclays Bank Limited, and Barclay & Company Limited.
Complainant owns numerous trademark registrations for the name BARCLAYS and various formatives of that name, including the mark BARCLAYCARD, in the United Kingdom, the European Community, and the United States of America. Complainant’s trademark registrations include, among others:
BARCLAY/BARCLAYS; United Kingdom; Registration No. 1286579; Registered October 1, 1986;
BARCLAYCARD; United Kingdom; Registration No. 1286580; Registered October 1, 1986;
BARCLAYCARD; European Community, Registration No. 55277; Registered January 26, 1999;
BARCLAYCARD; United States of America; Registration No. 1638620; Registered March 19, 1991.
Complainant also owns and uses various domain names based on the Barclays name, including <barclays.co.uk>, registered prior to August 1996; <barclays.com>, registered November 23, 1993; <barclaycard.com>, registered August 6, 1997; and <barclaycard.co.uk>, registered prior to August 1996.
Respondents registered the Domain Name on November 11, 2011.
The Domain Name resolves to a holding page containing sponsored links to various financial services providers, including some whose products and services compete with those offered by Complainant. Respondents are able to earn pay-per-click revenues when Internet users click on such sponsored links.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to its BARCLAY and BARCLAYCARD trademarks in which Complainant possesses common law rights and rights based upon its registrations of those trademarks. Respondents’ insertion of the letters “usa” between “barclay” and “card” in the Domain Name does not sufficiently distinguish the Domain Name from Complainant’s trademarks to avoid similarity or confusion. The use of “usa” may be more likely to increase confusion because Internet users may believe that “usa” relates to United States of America, which is an important market for Complainant’s business.
Complainant contends that Respondents have no rights or legitimate interests in respect of the Domain Name. Respondents are not known by the Domain Name. Complainant has never given Respondents permission to register or use any domain name incorporating Complainant’s trademark. Respondents are using the Domain Name to redirect Internet traffic intended for Complainant to a website holding page featuring sponsored links to a number of providers of financial services, some of whom compete with Complainant. Respondents earn revenues when the Internet user clicks on such links. Respondents thus generate revenue directly from the initial interest arising from Respondents’ use of the BARCLAY and BARCLAYCARD marks in the Domain Name. Respondents are not making a legitimate noncommercial or fair use of the Domain Name.
Complainant contends that Respondents registered and are using the Domain Name in bad faith, citing, first, that, given the widespread use, reputation and notoriety of Complainant’s famous BARCLAY and BARCLAYCARD trademarks, Respondents were necessarily aware that in registering the Domain Name they were misappropriating the valuable intellectual property of Complainant.
Complainant further contends that Respondents have prevented Complainant from registering a domain name that corresponds to Complainant’s trademarks; that Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant’s trademarks; that Respondents will never be capable of using the Domain Name for a legitimate purpose; and that it is reasonably anticipated that the Domain Name will divert business from Complainant to competitor websites.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondents did not respond to the Complaint, therefore the Panel considers whether Respondents have been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondents at the addresses provided in the Complaint, in Respondents’ registration information available in the Internic publicly available WhoIs database and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondents of the Complaint and the administrative proceeding and appears to have achieved actual notice.
Where there is no response to the complaint, the Panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The Panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondents’ failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
A UDRP Panel may conduct limited factual research into matters of public record as deemed necessary to reach the correct decision, including sources such as official trademark registration databases. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5; Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057. The Panel here reviewed the USPTO database to determine whether Complainant had registered relevant trademarks in the United States of America and, if so, when.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant clearly possesses legal rights in the BARCLAY and BARCLAYS trademarks based upon registrations of those trademarks in the United Kingdom, the European Community, and the United States of America. The same is true of the trademark BARCLAYCARD, which Complainant registered at least as early as 1986 in the United Kingdom and at least as early as 1991 in the United States. See WIPO Overview 2.0, paragraph 1.1 (Ownership of a registered trademark generally satisfies the Policy requirement of having trademark rights).
The Domain Name uses the word “Barclay” which is identical or confusingly similar to trademarks in which Complainant has rights. Further, the Domain Name uses both the words “barclay” and “card” which, taken together, are identical to Complainant’s registered BARCLAYCARD trademark. The Domain Name thus incorporates in their entirety one or more of Complainant’s trademarks.
The Domain Name is not identical to Complainant’s BARCLAYCARD trademark only in that the Domain Name inserts the letters “usa” between “barclay” and “card.” This difference is not sufficient to avoid confusing similarity between the Domain Name and Complainant’s trademarks. The trademarks constitute the dominant components of the Domain Name. The letters “usa” would likely be read as a shorthand reference to the United States of America. The use of such geographic wording does not create a distinction sufficient to avoid the confusion resulting from the implication that the Domain Name is affiliated with, or sponsored by, Complainant or Complainant’s business. See WIPO Overview 2.0, paragraph 1.9. This is all the more true where the geographic term refers to a country where Complainant does business and where it has registered the trademark that is confusingly similar to the Domain Name. Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138.
The Panel concludes that the Domain Name is confusingly similar to trademarks in which Complainant has rights, and that Complainant, therefore, has established the first element of its case.
B. Rights or Legitimate Interests
A complainant bears the overall burden to prove that a respondent has no rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.1. Where, however, the complainant makes out a prima facie case that the respondent does not possess such rights or interests, the burden of production shifts to the respondent to prove that it does in fact possess such rights or legitimate interests. Id. Where, as here, a respondent fails to come forward with allegations or evidence to prove that it possesses such rights or interests, the complainant’s prima facie case will usually be found sufficient to meet the complainant’s overall burden of proof. Id.
Paragraph 4(c) of The Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or
(ii) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating all of these circumstances. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Complainant here has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The evidence of record before the Panel is sufficient to show that Respondents are using a Domain Name that is confusingly similar to Complainant’s trademarks to divert Internet users to a web page featuring sponsored links of various financial services providers, including some that compete with Complainant, where Respondents can generate pay-per-click revenues for themselves. The Panel does not consider Respondent’s use of the Domain Name, which exploits confusion and the value of Complainant’s trademark for Respondents’ own commercial gain, to constitute a bona fide offering of goods or services, a legitimate noncommercial use, or a fair use of the Domain Name that would confer upon Respondents rights or legitimate interests in the Domain Name. See WIPO Overview 2.0, paragraph 2.6.
In addition, there is no evidence that Respondents have ever been commonly known by the Domain Name, or that Respondents have ever been given permission to use Complainant’s trademarks in the Domain Name.
Respondents having failed to demonstrate any of the factors under Paragraph 4(c) of the Policy, the Panel finds that Complainant’s prima facie case meets Complainant’s burden under Paragraph 4(a)(ii) of the Policy and concludes that Respondents have no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant must show both that the Domain Name was registered and is being used in bad faith. .
The Panel finds that the BARCLAY, BARCLAYS and BARCLAYCARD marks are widely known in the field of financial services and that Respondent undoubtedly knew of their existence, reputation and goodwill when incorporating them into the Domain Name or would not have used them in registering the Domain Name. Knowledge of such a well known mark at the time of registration of a domain name suggests bad faith. See F. Hoffmann-LaRoche AG v. Transure Enterprise Ltd., WIPO Case. No. D2008-0422; Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO Case No. D2005-0130). Respondents have provided no plausible explanation for the use of Complainant’s marks in the Domain Name and have provided no evidence to establish any rights or legitimate interests in the Domain Name. Registration of a domain name containing a famous mark inextricably connected to Complainant without proving any rights or legitimate interests in the Domain Name suggests bad faith registration of the mark. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Under paragraph 4(b)(iv) of the Policy, the following is evidence of registration and use in bad faith:
By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Respondents intentionally created a likelihood of confusion with Complainant’s trademarks when they registered the Domain Name incorporating Complainant’s long-established trademarks, both BARCLAY and BARCLAYCARD, in their entireties. Respondents are using the Domain Name and exploiting the resulting confusion to divert Internet users to Respondents’ website where Respondent provides links to products and services that compete with those of Complainant and where Respondents can earn pay-per-click revenues. The Panel finds that Respondent is intentionally creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website which indicates bad faith registration and use of the Domain Name under the Policy.
The Panel concludes that Complainant has established the third and final element of its case.
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, <barclayusacard.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: October 10, 2012