WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Above.com Domain Privacy / 'Hi How' (Ni How)
Case No. D2012-1829
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Pinsent Masons LLP, U.K.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia and 'Hi How' (Ni How) of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <barclaysuscard.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 September 13, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 September 24, 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 September 26, 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 September 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.
The Center appointed Richard Hill as the sole panelist in this matter on November 7, 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 has rights in the trademark BARCLAYS dating back to 1896 and the mark is very well known around the world in the area of banking and finance. The Complainant also has registered trademark rights for the trademark BARCLAYCARD.
The Respondent registered the disputed domain name in 2012.
The Respondent is using the disputed domain name to provide a web portal which provides users with a search function as well as advertisements related to financial services. This portal includes links to competitors of the Complainant.
5. Parties’ Contentions
The Complainant alleges that is has traded as Barclays PLC since 1985, but has been in business under the Barclays name since 1896. It operates in over 50 countries and employs 144,000 people. It is a very well-known bank.
Further, says the Complainant, it has registered and has common law trademark rights in many marks that incorporate its name, in particular BARCLAYS and BARCLAYCARD.
The Complainant alleges that the disputed domain name is confusingly similar to its trademark. Further, given the worldwide fame of the Complainant’s trademarks, no trader would chose that domain name unless with the intention to create a false impression of association with the Complainant in order to attract business and misleadingly divert the public.
According to the Complainant, the disputed domain name was registered in February 2012 and is being used as a holding page containing a number of finance-related sponsored links which relate to products and services which compete with those of the Complainant. The disputed domain name is being used to redirect Internet traffic intended for the Complainant to competing products and services with the intent to generate income for the Respondent.
The Complainant states that the Respondent is not known by the disputed domain name and has not been given any permission or license to use the Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel will first address the procedural issues related to the fact that the Respondent has defaulted and then analyse the evidence to determine whether the Complainant has proven, in accordance with paragraph 4(a) of the Policy that:
(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) The Respondent has no rights or legitimates interests in the disputed domain name; and
(iii) The Respondent registered and is using the disputed domain name in bad faith.
I. The procedural issue related to the default of the Respondent
Since the Respondent has defaulted, this Panel must first determine what the procedural implications are of a default. Should the Complainant automatically prevail, or should the Panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the Policy, the Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, paragraph 4(a) of the Policy states:
“In the administrative proceeding, the Complainant must prove that each of these three elements are present.” [emphasis added]
This Panel therefore holds that it cannot grant the Complainant’s request automatically, but that it must instead examine the evidence presented to determine whether or not the Complainant has proven its case as required by the Policy.
II. Analysis of the evidence in this case
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The addition of the generic term “card” and the extra letters “us” do not sufficiently distinguish the disputed domain name from the Complainant’s mark for the purposes of Policy, paragraph 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
B. Rights or Legitimate Interests
The Respondent is using the disputed domain name to operate a website that contains links to various commercial websites that compete with the Complainant. Given the confusing similarity in the names, and the fact that the disputed domain name is not a common, generic term, such use does not constitute 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). See ALPITOUR S.p.A. v. Ali Albloushi, NAF Claim No. 888651 (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii)); see also Martin H. Meyerson v. Speedy Web, NAF Claim No. 960409 (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)).
The Panel holds that the Complainant has established its burden of proving this element of the Policy.
C. Registered and Used in Bad Faith
The Respondent is using the disputed domain name to operate a website that provides links to various web sites offering services that compete with the Complainant’s business. The Respondent is profiting from such use through the collection of referral fees for each redirected Internet user. Such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii). See Southern Exposure v. Southern Exposure, Inc., NAF Claim No. 94864 (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, as the Complainant correctly notes, the Respondent’s web site is such that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv). See American University v. Richard Cook, NAF Claim No. 208629 (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Systems Corporation v. Perot.net, NAF Claim No. 95312 (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <barclaysuscard.com> be transferred to the Complainant.
Dated: November 9, 2012