WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Arthur Kulik / Whois Privacy Protection Service, Inc.
Case No. D2010-1992
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland represented by Pinsent Masons LLP, Glasgow, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Arthur Kulik of Bensalem, Pennsylvania, United States of America and Whois Privacy Protection Service of Yarmouth, Canada.
2. The Domain Name and Registrar
The disputed domain name <barclayskbank.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On November 19, 2010, Register.com. 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 November 24, 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 amended Complaint on November 26, 2010.
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 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on December 29, 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.
4. Factual Background
The Complainant is a global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services. In the Complaint, the Complainant stated that it has traded as Barclays PLC since 1985, and before that since 1896 as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited. The Complainant claims to operate in over 50 countries and employs approximately 144,000 people.
The Complainant is the registered proprietor of a variety of United Kingdom registered and Community registered trade marks which contain the word BARCLAY, BARCLAYS or BARCLAYS BANK, in relation to a range of goods and services including services in Class 36. In addition to its registered trade marks, the Complainant asserts that it has, through its use of the mark BARCLAYS over the last 114 years, acquired goodwill and a significant reputation in the areas in which it specializes. As such, the mark BARCLAYS has become a distinctive identifier associated with the Complainant and the services it provides.
The Complainant owns a portfolio of domains including “www.barclays.co.uk” and “www.barclays.com” which were registered in the 1990’s. These domain names are used to promote the Complainant’s banking and financial-related goods and services.
The disputed domain name was registered on June 10, 2010.
5. Parties’ Contentions
1. The Complainant asserts that the disputed domain name contains a word which is identical to the mark BARCLAYS in which it has rights and it is therefore confusingly similar. The Complainant asserted that given the worldwide fame, reputation and notoriety of the mark BARCLAYS, no trader would choose the domain name <barclayskbank.com> unless the intention is to create a false impression of association with the Complainant in order to attract business by misleadingly diverting the public from the Complainant to the Respondent.
The addition of the generic word “bank” does not avoid confusion or distinguish the disputed domain name from the mark BARCLAYS. In fact, since the word “bank” describes the Complainant’s core services, the addition of this word is more likely to increase confusion. The inclusion of the letter “k” in the disputed domain name also does not distinguish it from the mark BARCLAYS.
2. The Complainant asserts, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) From the evidence submitted, it appears that at the relevant time, the disputed domain name was being used as a holding page containing a number of finance-related sponsored links which relate to competitor products and services to those offered by the Complainant. The disputed domain name was being used to redirect Internet traffic away from the Complainant, to competitor products and services, with the intention to generate income for the Respondent. The Respondent registered the disputed domain name knowing that it was likely to attract interest from Internet users searching for the Complainant. When Internet users viewed the content displayed on the Respondent’s holding page and clicked one of the sponsored links on the webpage, revenue would have been generated from the initial interest arising from the use of the mark BARCLAYS in the disputed domain name. The Respondent is not thereby making a legitimate noncommercial or fair use of the disputed domain name.
(ii) The Respondent is not known by the disputed domain name.
(iii) The Respondent has never asked for, and has never been given, any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade marks.
3. Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
(i) The Complainant’s representative wrote to the Respondent on August 27, 2010, advising the Respondent of the Complainant’s registrations for marks comprising the name BARCLAYS and to ask for the disputed domain name to be transferred to the Complainant. The Respondent failed to respond to the letter and subsequent reminders that were sent. Despite the correspondence sent by the Complainant’s representative, the content on the Respondent’s webpage remained the same.
(ii) Given the widespread use, reputation and notoriety of the mark BARCLAYS, the 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 trade mark.
(iii) It can be reasonably anticipated that the disputed domain name would divert potential custom from the Complainant’s business due to the presence of links to competitor websites on the Respondent’s webpage.
(iv) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trade marks.
(v) The Respondent will never be capable of using the disputed domain name for a legitimate purpose as the fame of the BARCLAYS trade mark is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the BARCLAYS trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) 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
(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
The Panel finds that the Complainant has established that it is the owner of, and has rights in, the trade marks BARCLAYS and BARCLAYS BANK. The disputed domain name differs from the mark BARCLAYS BANK merely in the addition of the letter "k" in between the words “Barclays” and “Bank” in the disputed domain name. Such an insignificant addition does not prevent the disputed domain name from being considered virtually identical or confusingly similar to the Complainant’s mark. In another respect, the disputed domain name differs from the BARCLAYS trade mark merely in the addition of the letter “k” and the word “bank”. It has been well established in many UDRP panel decisions that the addition of a descriptive or generic word to a trade mark of a complainant in the domain name would not serve to distinguish the domain name from the trade mark at issue. Bearing in mind the context of the nature of the core services being provided by the Complainant in this case, the addition of the word “bank” to the trade mark BARCLAYS in the disputed domain name in fact enhances the confusing similarity with the Complainant’s BARCLAYS trade mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.”
As has been well established in previous UDRP panel decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Thereafter, the onus is shifted to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain name.
In this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name. Neither is there any evidence of a bona fide offering of goods or services by the Respondent on his webpage. The fact that the content on the Respondent’s holding page was seemingly tailored to match the Complainant’s core goods and services and contained sponsored links run counter to any possibility of one being to claim that the offering of goods or services was bona fide. Rights or legitimate interests in a domain name cannot be established by the unauthorized use of a domain name containing a complainant’s trade mark for the purpose of establishing and operating a parking or holding page with sponsored links which are based on the trademark value or significance of the disputed domain name. The manner in which the Respondent appeared, at the relevant point in time, to have been using the disputed domain name cannot be said to constitute a legitimate non-commercial or fair use of the domain name.
In the premises, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds from the evidence submitted by the Complainant that the circumstances of this case fall within paragraph 4(b)(iv) of the Policy. The incorporation of the entire trade marks BARCLAYS or BARCLAYS BANK in the disputed domain name, as well as the manner in which the Respondent had, at the relevant time, used the webpage to provide sponsored links to other websites which include those of the Complainant’s competitors, does give rise to a strong presumption in this case that the Respondent had registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Bearing in mind, too, the length of time and extent to which the Complainant has been in business, it is highly improbable that the Respondent was not aware of the Complainant’s business and rights in the trade marks BARCLAYS and BARCLAYS BANK at the time of registering the disputed domain name.
In the premises, the Panel finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <barclayskbank.com> be transferred to the Complainant.
Dated: January 12, 2011