Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern of Ireland.
Respondent is JAMBOCUSH / Domains by Proxy, Inc., of Nairobi, Kenya.
The disputed domain name <barclayspay.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2010. On February 23, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On February 25, 2010, Wild West Domains, 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 February 26, 2010 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 amendment to the Complaint on March 4, 2010. The Center verified that the Complaint together with the amendment to 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 March 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2010. The Response was filed with the Center on March 22, 2010.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 26, 2010. 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.
Complainant is a well-known financial services provider headquartered in London, England. Complainant operates in more than 50 countries, including Kenya, and has a world-wide client base of some 49 million customers and clients, employing more than 155,000 personnel. Complainant has traded in Kenya for more than 90 years and is the largest retail financial services operation in that country. Complainant currently has 115 retail operations and 236 ATM machines in Kenya.
Complainant was established more than 300 years ago and has continuously operated under the BARCLAYS mark. Complainant is the owner of numerous trademarks of long standing, including numerous marks issued in Kenya. Complaint, Annex D.
Complainant is also the registrant of numerous domain names incorporating the BARCLAYS mark, including <barclays.com>, <abarclays.co.uk>, <barclays.net>, and <barclays.co.ke>.
Respondent registered the disputed domain name on February 8, 2010, although Respondent employed a privacy service so that the identity of the registrant could not be ascertained by a review of the Whois information. Respondent has been using the disputed domain name to resolve to a web site at which links to financial services are offered, including by direct competitors of Complainant. Complaint, Annex J; Response, Annex A.
On or about December 20, 2009, at some event Respondent discussed with a Kenyan employee of Complainant, the importance of online commerce and online payment systems. On February 8, 2010, Respondent had a meeting with a Nigerian employee of Complainant who sought to understand the purpose of the registration of the disputed domain name and the identification and intentions of those involved in its registration. Complainant's representative came away from the meeting with a lack of understanding or clarity as to Respondent's intentions. Complaint, Annex I, Letter from Complainant's Kenyan employee to Respondent, dated February 17, 2010. Complainant stated that at that meeting, Respondent informed Complainant that Respondent had registered the disputed domain name. Response, Annex A, Letter from Complainant's counsel to Respondent, dated February 22, 2010. In that same letter, Complainant's counsel sent a list of its Kenyan trademarks, objected to any use of the disputed domain name by Respondent, and demanded that the disputed domain name be ceded to Complainant. Complainant's counsel also attached a copy of Respondent's Business Plan which had been given to Complainant's Kenyan employee at the meeting. Id., and Complaint, Annex L.
On February 10, 2010, Respondent sent Complainant a letter in which Respondent offered to sell to Complainant the domain name <barclaysbank.co.ke>, which registration was owned by “our partners.” Respondent also stated that it had decided to presently hold off on the imminent launce of its online payment system using the disputed domain name. Complaint, Annex I; Response, Annex A.
Respondent has alleged that a Kenyan employee of Complainant had informed Respondent that Complainant lacked the software necessary to establish an online bill pay program in Kenya, that Respondent then offered its already developed online bill pay program, and requested that Complainant sign a non-disclosure agreement so that Respondent might disclose the details of the bill pay program developed by Respondent. Respondent alleged that Complainant refused to execute a non-disclosure agreement, but rather suggested that Respondent register the disputed domain name in order to protect Respondent's interest. In the meeting with Complainant's Kenyan employee, Respondent outlined the nature of Respondent's online bill pay system. Respondent suggests that its online bill pay program was unlawfully appropriated by Complainant. Respondent asserts that it has a legitimate interest in the disputed domain name since it intends to use it in conjunction with an online payment system. These assertions are nowhere memorialized in the correspondence annexed to the Complaint or to the Response.
Complainant contends that the disputed domain name is confusingly similar to the BARCLAYS family of marks owned by complainant, that Respondent has not been authorized by complainant to use the mark nor is Respondent in any other way using the mark in conjunction with a mark or business name owned by Respondent, and that Respondent has registered and is using the disputed domain name in bad faith.
Respondent contends that it registered the domain name at issue at the suggestion of Complainant in order to protect Respondent's interest in an online bill pay program that Respondent had devised to be used by Complainant. Respondent asserts that it has a legitimate interest in using the domain name at issue to host its online payment program.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The domain name at issue consists of the Complainant's BARCLAYS mark to which the common English word “pay” has been appended. The appended phrase is merely descriptive of an aspect of Complainant's financial services business. See, EFG Bank European Financial Group, SA v. Jacob Foundation, WIPO Case No. D2000-0036 (<efgprivate.com> held confusingly similar to the EFG PRIVATE BANK mark. Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant's mark.
Complainant has alleged that Respondent is not known by the domain name at issue, nor has Respondent been authorized in any way to use Complainant's mark. Respondent asserts that it has a legitimate interest in using the domain name at issue to host Respondent's online payment program that Respondent contends Complainant is attempting to unlawfully appropriate.
In general, without some showing of entitlement, a domain name registrant does not automatically acquire (for example, merely as a result of domain name registration) a legitimate interest in the use of the trademark of another in a domain name. That is especially so where (as here) the domain name at issue is evidently not comprised of a generic or descriptive term, but rather of a well-known mark such as BARCLAYS combined with a term descriptive of the mark holder's business. In any event, the Panel finds that Respondent has neither shown nor credibly asserted a legitimate interest in the use of the mark BARCLAYS in the domain name at issue here.
A dispute concerning the alleged misappropriation of a business concept is not justifiable as such under the UDRP. To the extent that Respondent wishes to resolve such a dispute, it must seek another and a proper forum.
On the evidence presented in these proceedings, the Panel finds that Respondent has failed to demonstrate any rights or legitimate interests in respect of the domain name at issue, whereas Complainant has made at the very least a prima facie case that the Respondent lacks such rights or legitimate interests. Accordingly, the Panel finds for the Complainant under this element of the Policy.
Respondent clearly registered the disputed domain name with the Complainant and its BARCLAYS mark in mind. The Respondent claims it registered the domain name at Complainant's suggestion following a meeting at a trade fair, but offers no real evidence of this. The Complainant has (in the Panel's estimate, quite plausibly) denied ever authorizing Respondent to register its BARCLAYS mark in the disputed domain name. The Panel finds Respondent's unsupported story implausible. Respondent has been using the domain name to resolve to a web site at which links, if followed, lead to financial group services directly competitive to those offered by Complainant. This constitutes bad faith registration and use. YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013. In short, this case strikes the Panel as a classic illustration of the type of opportunistic registration and use of a trademark in a domain name that the Policy was originally designed to prevent. Accordingly the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <barclayspay.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: April 20, 2010