WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Ni How / Above.com Domain Privacy
Case No. D2012-2085
1. The Parties
The Complainant is Barclays Bank PLC of United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Ni How of Nanjing, China / Above.com Domain Privacy of Beaumaris, VIC, Australia.
2. The Domain Name and Registrar
The disputed domain name, <barclaycardvisa.com>, 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 October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2012, the Registrar 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 October 26, 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 October 30, 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 22, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 28, 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, a United Kingdom company that has operated for at least 114 years, offers financial services, including credit card services, on a global basis. It has registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the marks, BARCLAYS (Registration No. 1286579; registered October 1, 1986) and BARCLAYCARD (Registration No. 1286580; registered October 1, 1986).
The Respondent owns the disputed domain name, <barclaycardvisa.com>, which was registered on February 24, 2012. The disputed domain name is used to host a website that provides links to third party websites offering financial services that compete with those offered by the Complainant.
5. Parties’ Contentions
- The Complainant, based in the United Kingdom and in operation since 1896, is a major global financial services company that, among other things, offers credit card services. The Complainant has an extensive presence in Europe, the Americas, Africa and Asia, serving more than 48 million customers with approximately 144,000 employees.
- The Complainant has registrations with the UKIPO and the European Community for the marks BARCLAYS and BARCLAYCARD. These marks have acquired significant goodwill and reputation throughout the world. The Complainant also markets its services though its websites found at the domain names, <barclays.com> and <barclaycard.com>, which are owned by the Complainant.
- The disputed domain name, <barclaycardvisa.com>, is confusingly similar to the Complainant’s marks. The addition of the term “visa” does little to distinguish the name from the mark because that term is the name of a well-known credit card provider that operates in association with financial institutions.
- The Respondent has no rights or legitimate interests in the disputed domain name. No permission has been granted by the Complainant to the Respondent to use the Complainant’s marks in a domain name. Also, the Respondent is not known by the disputed domain name.
- Moreover, the disputed domain name is used to provide links to third party websites that offer financial services that compete directly with those of the Complainant. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
- The disputed domain name was registered and is being used in bad faith. Due to the fame of the Complainant’s marks, the Respondent must have been aware that it was misappropriating the Complainant’s rights when registering the disputed domain name.
- In using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks. The Respondent has also prevented the Complainant from registering its marks in a corresponding domain name.
- The Respondent failed to respond to letters requesting the transfer of the disputed domain name to the Complainant, while maintaining the same usage of that name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel shall find in the Complainant’s favor, and the Complainant shall obtain a transfer of the disputed domain name, <barclaycardvisa.com>, should the Complainant prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As the Complainant has presented the Panel with suitable evidence (Complaint Annex 4) of valid UKIPO registrations for the service marks BARCLAYS and BARCLAYCARD, the Panel concludes that the Complainant has sufficient rights in those marks for the purposes of Policy paragraph 4(a)(i). See, Barclays Bank PLC v. Ho Lo, WIPO Case No. D2011-1322 (“The Panel determines that Complainant has rights in the trademark BARCLAYS in the United Kingdom and the European Union.”); and The Royal Bank of Scotland Group plc v. Teddy Jackson, NAF Claim No. FA992134 (“Complainant has established rights in the RBS mark pursuant to Policy [paragraph] 4(a)(i) through registration of the mark with the UKIPO.”)
The disputed domain name, <barclaycardvisa.com>, incorporates the Complainant’s BARCLAYCARD service mark and adds the generic term, “visa”, and the top-level domain suffix, “.com”. The latter addition is of no moment for the purposes of a Policy similarity comparison, because all domain names must have such a suffix. Furthermore, the Panel notes that many prior Policy panels have held that the addition of a generic term, such as “visa”, to a mark affords negligible distinction from that mark. Such reasoning is especially relevant when the generic term relates directly to a complainant’s business, as in the present case, where “visa” is the brand name of an internationally famous credit card service that is licensed for distribution by financial service companies, like the Complainant, throughout the world. Therefore, the Panel concludes that the disputed domain name is similar, and confusingly so, to the Complainant’s BARCLAYCARD mark. Moreover, because the term, “barclay”, is nearly identical to “barclays” and is the primary and dominant term in the disputed domain name, the Panel also concludes that the name is confusingly similar to the Complainant’s BARCLAYS mark as well. See, Barclays Bank PLC v. John Toan, WIPO Case No. D2011-2010 (where the panel found <barclaycardcreditcard.com> to be confusingly similar to the BARCLACARD mark); and Barclays Bank PLC v. New City Resources Inc. [Provided in Response: Barclay Investment Co., Ltd.]; WIPO Case No. D2011-1584 (finding <barclayinvest.com> to be confusingly similar to the BARCLAYS service mark); and Gardline Surveys Ltd. v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
As so reasoned, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel believes that the Complaint has set forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The name is confusingly similar to the Complainant’s famous marks, and the Complainant contends unequivocally that it did not grant the Respondent permission to use those marks in a domain name. The Complainant’s prima facie case places upon the Respondent the responsibility to put forward a detailed rebuttal. See, Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828.
Since the Respondent failed to file a Response in these proceedings, the Panel finds no such rebuttal forthcoming from the Respondent. Furthermore, the Panel determines that the record in this case furnishes no other evidence to rebut the aforementioned prima facie case through invocation of the criteria specified in paragraph 4(c) of the Policy. Upon examination, the Panel finds no reason to believe that Respondent (as either “Ni How” or “Above.com Domain Privacy“) has been commonly known as the disputed domain name, rendering paragraph 4(c)(ii) inapplicable. Moreover, the Panel accepts the Complainant’s undisputed assertion that the Respondent uses the disputed domain name for a website that merely hosts links to third party websites which offer services that directly compete with those offered by the Complainant. The Panel also endorses the Complainant’s contention that the Respondent more than likely receives pay-per-click revenue from said links. In accordance with many prior UDRP panel decisions, the Panel rules that this disputed domain name usage constitutes neither “a bona fide offering of goods or services” per paragraph 4(c)(i) nor “legitimate noncommercial or fair use” of the names per paragraph 4(c)(iii). For example, see, MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (“…Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the Domain Name provided, in part, links to websites that were in direct competition with Complainant.”); and Mattel, Inc. v. Domain Park Limited, NAF Claim No. FA1164348 (“Respondent is using the [disputed] domain name to display hyperlinks to a parked page with a list of third-party websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made a bona fide offering of goods or services under Policy [paragraph] 4(c)(i) or a legitimate noncommercial or fair use under Policy [paragraph] 4(c)(iii).”).
As so reasoned, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel does not find it credible that the Respondent was unaware of the Complainant’s famous BARCLAYS mark. That the Respondent, with no tangible connection to the Complainant or said mark, should employ that mark as the first component of a domain name is a clear example to the Panel of opportunistic bad faith registration and use of such a name. See, Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070 (where the panel found bad faith registration and use of the disputed domain name, <nestlefoods.com>, relative to the complainant’s famous NESTLE trademark, based on the conclusion that, “Complainant’s trademarks are famous, and have evidently been known to Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainant’s trademarks.”); and Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (“CHANEL is an immediately recognizable and famous mark that exclusively identifies Complainant…Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use the CHANEL mark, the very fact that Respondent has registered <buychanel.com> establishes bad faith use and registration.”).
Moreover, as noted above, the Panel accepts the Complainant’s uncontested contentions that the disputed domain name is used by the Respondent to collect pay-per-click fees resulting from linkage to the websites of third parties that are operated by the Complainant’s direct competitors. Therefore, the Panel is compelled to conclude that the Respondent has intentionally chosen and used the disputed domain name to attract, for commercial gain, Internet users to its website based on confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Thus, the Panel believes that the disputed domain name has been registered and used by the Respondent in bad faith per paragraph 4(b)(iv) of the Policy. See, Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001, (”Respondent's website not only incorporates the dominant part of Complainant's service mark, but, also, the content on Respondent's website refers to and links to third parties offering services and goods competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.”); and Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142.
As so reasoned, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).
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, <barclaycardvisa.com>, be transferred to the Complainant.
Dennis A. Foster
Date: December 12, 2012