WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Thomas Breloff
Case No. D2012-2294
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Thomas Breloff of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barclaysmobiles.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 sent email communications to the Center on November 28 and November 30, 2012. The Center notified the parties of the Proceeding Update on December 18, 2012.
The Center appointed Gérald Page as the sole panelist in this matter on January 3, 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.
Due to exceptional circumstances, the Panel reserved its decision until February 15, 2013.
4. Factual Background
As shown by Annex 1 to the Complaint, the Respondent has registered on March 16, 2012, the disputed domain name <barclaysmobiles.com>. Barclays PLC is a bank incorporated on July 20, 1896 in the United Kingdom. It holds a large number of establishments both in the United Kingdom and in more than 40 countries.
The Complainant is the owner of the United Kingdom registered trademarks BARCAP, BARCLAY-BARCLAYS, BARCLAYS SKILLS BANK, BARCLAYS, BARCLAY BANK, BARCLAY CARD, BARCLAY CARD SMART PAY, BARCLAY CARD EASYPAY, BARCLAY CARD BP and INSTANT BARCLAZ CARD, essentially in classes 36 but for some marks also in classes 9, 16, 35, 38 and 41. It also owns several other trademarks containing, in combination with a suffix, the word “Barclays”.
The Complainant also holds trademarks containing the word “Barclays” as community registered trademarks.
By letter dated May 23, 2012, Counsel for the Complainant has asked the Respondent to stop using the disputed domain name <barclaysmobiles.com>. The Respondent did not send any reply to this letter. Two further letters of July 3, 2012 and July 18, 2012, and only on July 26, 2012, the Respondent replied by stating that he was not the owner of the disputed domain name.
He did not respond to a new letter dated August 14, 2012 sent by the Complainant and stressing the fact that the Respondent was in fact the true registered owner of the disputed domain name.
The Respondent uses the disputed domain name on a website, containing a holding page displaying several sponsored links related to financial products. It is alleged, without being challenged, that the disputed domain name is simply used to redirect Internet traffic, directed by Internet users to the Complainant using the word “Barclays”.
There is no evidence that the Respondent himself is or has been active in financial services otherwise.
The Respondent is not only the registrant but also the administrative and technical contact for the disputed domain name at the Registrar.
The Complaint was notified to the Respondent on November 27, 2012, by courier, at the Respondent’s registered address in New York.
The courier was received on November 28, 2012 by the Respondent.
The Respondent answered by email of the same day stating, again, that he was not the owner of the disputed domain name.
He did not raise specifically any objections to the Complaint.
The Respondent, as it seems from the case file, did not find it either useful or necessary to write a letter to the Registrar to let them know that he was not, as he alleges, the owner of the disputed domain name.
No further explanation or evidence is provided with regard to the effective use of the website at the disputed domain name.
5. Parties’ Contentions
The Complainant essentially explains that it has been, through various registered entities containing the word “Barclays” or “Barclays Bank”, incorporated and active in financial services for a very long time, in the United Kingdom and more than 40 countries in the world. The companies as well as the trademarks it holds were registered well before registration of the disputed domain name by the Respondent.
The disputed domain name <barclaysmobiles.com> is not identical to its trademarks but, because it contains the word “Barclays”, it is confusingly similar.
Barclays, as a worldwide institution, has been well known for many years. The Respondent is unknown in an activity using the denomination “Barclays”, but for the single web page using the disputed domain name <barclaysmobiles.com>, used only for redirecting Internet traffic.
The Complainant contends that the Respondent intends to attract traffic otherwise directed to the Complainant’s institutions and make unlawful gains from such traffic through the use of sponsored links, redirecting the traffic to other, possibly competitive, websites.
The Respondent has not given any explanation about the use of the website at the disputed domain name. He only stated that the registration was a mistake and that he was not the owner of the disputed domain name.
This implies in particular that he is not using the disputed domain name and the website to which it resolves.
The Panel notes here that the Respondent does not show that he has taken further steps to let the Registrar know that the registration of the disputed domain name was a “mistake”.
6. Discussion and Findings
Is the disputed domain name identical or confusingly similar?
The disputed domain name is not identical with any of the trademarks or corporate names owned by the Complainant.
One must therefore determine whether it is confusingly similar. The only part of the word which is identical is the word “Barclays”.
“Barclays” is a word which is, as a trademark and corporate name distinctive and well known in the world. It is associated by the vast majority of people as the traditional United Kingdom and international banking institution.
The Panel therefore finds that the disputed domain name <barclaysmobiles.com> is confusingly similar, and is in fact used in a manner which creates such confusion.
Does the Respondent have rights and legitimate interests in respect of the disputed domain name?
The Respondent has stated that he did not own the disputed domain name. Logically, he has therefore no rights to use it. To the contrary, in his statement, the Respondent has stressed that the registration of the domain name in his name was causing him undue harm.
If one must believe that the Respondent does not own the registered disputed domain name, it implies that he cannot assert rights or legitimate interests in its use.
Even if one had doubts about the accuracy of the Respondent’s denial of ownership, in the Panel’s view, it is a fact that neither rights nor legitimate interests have been asserted to the benefit of the Respondent, in this case.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <barclaysmobiles.com>.
Has the Respondent registered or used the disputed domain name in bad faith?
If the disputed domain name has been registered by “someone” (as the Respondent’s statement implies) wrongly in the name of the Respondent, such registration or use is obviously in bad faith.
If, as the official registration entries show, the Respondent is using the disputed domain name not only to attract traffic but as well to redirect such traffic to competing websites for financial services, while making through the sponsored links an economic gain, the use is made in bad faith.
In any case, the fact that the Respondent did not find it useful in these proceedings to give himself instructions to the Registrar to delete what he calls a “wrong entry”, in the Panel’s view, is another convincing sign of bad faith.
The Panel therefore finds that, since the registration and use of the disputed domain name has been done in bad faith, all conditions for the transfer of the disputed domain name to the Complainant are met.
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 <barclaysmobiles.com> be transferred to the Complainant.
Date: February 13, 2013