WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Lafayatte Smith
Case No. D2012-0091
1. The Parties
Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Pinsent Masons LLP, U.K.
Respondent is Lafayatte Smith of Can Lan, Madagascar.
2. The Domain Name and Registrar
The disputed domain name <barclaysloans.org> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2012.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on February 15, 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 company incorporated in London, U.K. It is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services, and it currently operates in over 50 countries and employs approximately 144,000 people.
Complainant is the registered owner of a variety of U.K. registered and Community registered trademarks in the name BARCLAYS in a range of classes including in relation to financial services. The mark BARCLAYS (e.g., mark BARCLAY/BARCLAYS was registered in the U.K. since 1986) was registered long before the registration of the the disputed domain name (2011). Complainant has also registered numerous domain names incorporating the BARCLAYS marks, such as <barclays.com> (since 1993), and <barclays.co.uk> (since 1996).
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to its trademark BARCLAYS and that the addition of the generic term “loans” does not avoid confusion. Complainant further asserts that such addition is likely to increase confusion as “loans” describe one of the services provided by Complainant.
Complainant argues that given the worldwide fame reputation and notoriety of BARCLAYS, no trader would choose the domain unless with the intention to create a false impression of association with Complainant in order to attract business from Complainant or misleadingly to divert the public from Complainant to Respondent.
Complainant states that the disputed domain name is being used as a holding page that displays an article on financial services Complainant provides together with a number of finance related sponsored links which relate to competitor products and services to those offered by Complainant. It is clear from such use that Respondent is aware of Complainant’s rights over the trademark BARCLAYS. Respondent is also using the trademark BARCLAYS in the meta tag keyword data for this domain name, which is also evidence of Respondent’s attempt to attract and mislead consumers.
Respondent is not known by the disputed domain name.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as the website only displays pay per click ads.
Respondent has never asked for, and has never been given any permission by Complainant to register or use any domain name incorporating Complainant’s trademark.
Complainant’s agent wrote to Respondent in relation to the disputed domain name advising Respondent of Complainant’s registered trademark BARCLAYS and asking for the disputed domain name to be transferred to Complainant. No response was received from Respondent.
Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, 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 trademarks.
Respondent’s registration of the disputed domain name has also prevented Complainant from registering a domain name which corresponds to Complainant’s trademarks.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks.
Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between Respondent and Complainant, and/or between Respondent and the BARCLAYS trademark.
The disputed domain name will divert potential custom from the Complainant’s business due to the presence of links to competitor websites at the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly to Complainant’s BARCLAYS trademark and to Complainant’s domain names. The Panel finds that the addition of a generic word, such as “loans” is not enough to escape a finding of confusing similarity. In fact, adding a word that corresponds to one of Complainant’s services is likely to increase the risks of confusion amongst consumers. Also, under the Policy the addition of the “.org” top level domain is immaterial when considering the issue of confusing similarity between a complainant’s trademark and a domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s BARCLAYS trademark.
Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy. Respondent did not reply to Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests in the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time this Decision was issued, the disputed domain name was used to host a website showing pay-per-click advertising, directing Internet users to websites selling Complainant’s goods as well as competing goods.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent must have intentionally registered the disputed domain name which totally reproduces Complainant’s famous trademark BARCLAYS. By the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights in the trademark BARCLAYS.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its BARCLAYS registered trademark when the disputed domain name was registered. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you 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”, Policy, paragraph 4(b)(iv). At the time this Decision was issued, the disputed domain name was used to host a website showing pay-per-click advertising, directing Internet users to websites selling competing competitor products and services to those offered by Complainant. The Panel finds this to be evidence of the intention of Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of these, the Panel finds Respondent registered and used the disputed domain name in bad faith. Complainant has established the third element of the paragraph 4(a) of the Policy.
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 <barclaysloans.org> be transferred to Complainant .
Luiz E. Montaury Pimenta
Dated: February 29, 2012