WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Portcullis Agencies
Case No. D2012-2286
1. The Parties
The Complainant is Barclays Bank PLC, London, United Kingdom of Great Britain and Northern Ireland, represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Portcullis Agencies, Middlesex, Perivale, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <barclaycardppiclaim.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 9, 2013. 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 banking company offering a wide range of financial services, including credit card services, in over 50 countries, employing 144,000 staff, with over forty-eight million clients and customers world-wide. Details of trade mark registrations of the Complainant’s BARCLAY, BARCLAYS and BARCLAYCARD trade marks in various jurisdictions have been supplied to the Panel.
The disputed domain name was registered on March 27, 2012.
5. Parties’ Contentions
The Complainant alleges that it has accumulated considerable protectable goodwill in its trade marks BARCLAY, BARCLAYS and BARCLAYCARD as a result of its long trading history, and has protected these trade marks widely through registration.
The Complainant alleges that the disputed domain name simply adds the generic expressions “ppi” and “claim” to its trademark BARCLAYCARD, and could have been inserted in order to attract Internet traffic from those Internet users who were intending to search for information relating to recovering compensation in respect of mis-sold “PPI” from the Complainant, and that the disputed domain name is, accordingly, confusingly similar to a trade mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name; in particular that the Respondent is not commonly known by the disputed domain name, and has never asked the Complainant for nor received from the Complainant any permission to register and use the disputed domain name. Further, the Complainant alleges that the website operated under the disputed domain name has been used on a pay-per-click basis to links sponsored by third parties which relate to financial services, and contends that this does not constitute either non-commercial or fair use of the disputed domain name.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith. In connection with use in bad faith, a specific example to which the Complainant has drawn the Panel’s attention is the fact that one of the pay-per-click sponsored links on the website pertaining to the disputed domain name is “www.debtreview.co.uk”. At this website, Internet users are encouraged to make mis-sold PPI compensation claims against the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraphs 4(a)(i) to (iii) of the Policy set out the matters to be taken into account in deciding whether a disputed domain be either transferred to the Complainant, or cancelled. These can conveniently be summarised under the headings A-C below.
A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view, and, considers these indicators to be irrelevant in the present case.
The Panel has no hesitation in recognizing the Complainant’s trade marks BARCLAY, BARCLAYS and BARCLAYCARD as being “well-known”. In connection with well-known trade marks, it is the established view of panels in previous decisions under the Policy that the mere addition of generic elements to a Complainant’s trade mark is insufficient to avoid a finding of confusing similarity as set out in paragraph 4(a)(i). The Panel considers ”PPI” and “claim” to be generic elements in the circumstances of the above case, and, accordingly finds that the Complainant has satisfied the requirement set out in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel has concluded from the material presented that it is at least probable that the Respondent knew of the reputation of the Complainant’s trade marks BARCLAY, BARCLAYS and BARCAYCARD at the time that it registered the disputed domain name. It is well-established in prior decisions under the UDRP, for example in Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879, that a knowingly-infringing use of a trade mark to offer goods and services is not a bona fide offering of goods and services under the Policy. The Panel agrees with this well-established view and, in the circumstances of the present case, finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy in connection with the disputed domain name.
C. Registered and Used in Bad Faith
The Panel agrees with the UDRP panel in Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, that a finding of bad faith may be made where a respondent knew or should have known of the registration and/or use of the complainant’s trade mark prior to registering a domain name, and finds, in the circumstances of the present case, that the Respondent either knew or should have known of the Complainant’s trade mark, and that the disputed domain names were registered in bad faith.
Following the predominant view of panels in previous UDRP decisions that use of a website operated under a disputed domain name, found to have been registered in bad faith, to promote competing goods or services to those protected under a complainant’s established trade mark rights, for example by providing a pay-per-click facility, is clear evidence of use of the disputed domain name in bad faith. Here, the Panel agrees with the Complainant that the use of the disputed domain name by the Respondent in the present case constitutes use in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy in connection with the disputed domain name.
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 <barclaycardppiclaim.com> be transferred to the Complainant.
George R. F. Souter
Date: January 31, 2013