WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Private Registration, WhoisGuardService.com
Case No. D2012-1662
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.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <wwwbarclayswealth.com> (the “Domain Name”) is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 22, 2012, the Center transmitted an email to the parties in both the Chinese and English language regarding the language of proceedings. On August 24, 2012, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
The Center appointed Karen Fong 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
The Complainant is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an extensive international presence in Europe, the Americas, Africa and Asia. The Complainant and its predecessors in title have traded under the business and company names which include “Barclay” and “Barclays” since 1896.
The Complainant is the registered proprietor of a variety of United Kingdom and Community trade marks for the marks BARCLAYS and BARCLAYS WEALTH in a variety for classes including financial services. The earliest evidence submitted of these trade mark registrations date back to 1986. It also owns and operates the domain names connected to the following websites “www.barclays.co.uk”, “www.barclays.com”, “www.barclayswealth.com” and “www.barclayswealth.co.uk”.
The Respondent registered the Domain Name on February 24, 2011. The Domain Name is connected to a website which is a holding page containing a number of banking and finance related advertising links to competitors’ products and services. The Respondent did not respond to the cease and desist letter and reminders sent by the Complainant’s legal representatives in relation to the registration and use of the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the BARCLAYS and BARCLAYS WEALTH trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to a domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement of the Domain Name is Chinese.
The Complainant submits in the letter from its legal representatives of August 24, 2012 that the language of the proceeding should be English as the Respondent is familiar with the English language. The Complainant contends amongst other things that the content of the website is in English, the Complainant is not familiar with the Chinese language and conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the Center’s language of the proceeding notification by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the trade marks BARCLAYS and BARCLAYS WEALTH through use and registration that predate the registration of the Domain Name.
The Domain Name integrates the Complainant’s registered trade marks BARCLAYS and BARCLAYS WEALTH with the descriptive and generic “www” prefix and the generic “.com” domain name suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain name suffix. Further, the addition of the descriptive and generic terms “www” which is one of the common server names which forms part of a website’s URL do not negate the confusing similarity encouraged by the Respondent’s complete integration of the BARCLAYS and BARCLAYS WEALTH trade marks in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the BARCLAYS and BARCLAYS WEALTH trade marks of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its BARCLAYS and BARCLAYS WEALTH trade marks in the Domain Name or any other manner. The Respondent is not apparently commonly known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s BARCLAYS and BARCLAYS WEALTH marks when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The inclusion of the term “www” before the name BARCLAYS WEALTH is intended to capture Internet traffic from Internet users who fail to put in the full stop after “www” when typing in the URL of the Domain Name. Further the web page connected to the Domain Name is a landing page with advertising links to banking and finance third party services which is the industry in which the Complainant operates. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
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 <wwwbarclayswealth.com> be transferred to the Complainant.
Dated: October 10, 2012