WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Goldie Simmons, Goldie Inc
Case No. D2012-1053
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Pinsent Masons LLP, UK.
The Respondent is Goldie Simmons, Goldie Inc of Woodbridge, Virginia, United States of America.
2. The Domain Names and Registrar
The disputed domain names <barcayswealth.com>, <barclaysealth.com>, <barclaysewalth.com>, <barclayswaelth.com>, <barclayswealht.com>, <barclaysweatlh.com>, <barclayswelath.com>, <barclaywsealth.com>, <barlayswealth.com>, <brclayswealth.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2012. On May 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 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 May 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2012.
The Center appointed Martine Dehaut as the sole panelist in this matter on July 2, 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 is a global provider of financial services. Established in 1896, it offers its services in over 50 countries, to nearly 50 million clients.
The Complainant owns numerous registered trademark rights over BARCLAYS, including a number of registrations over the expression BARCLAYS WEALTH. These include in particular the following UK registrations:
BARCLAYS WEALTH (word), No. 2436569, date of registration October 26, 2006;
BARCLAYS WEALTH (word and device), No. 2486138, date of registration October 10, 2008;
BARCLAYS WEALTH (word and device), No. 2486313, date of registration September 12, 2008.
No information is available in the file concerning the Respondent and its activities.
The disputed domain names were registered on October 5, 2011. They re-direct users to parking pages which offer links in a variety of fields, including financial services (banking, finance, credit card, insurance).
5. Parties’ Contentions
The following are the most significant arguments put forward by the Complainant, for each of the three criteria provided for by the Policy.
Firstly, the Complainant indicates that “the domain names contain various derivatives of the words BARCLAY WEALTH which are confusingly similar to the names BARCLAYS and BARCLAYS WEALTH in which the Complainant has common law rights and for which the complainant has registered trade marks”.
Secondly, the Complainant argues that “the Respondent is not known by the Domain Names”, and that “it is clear that the Respondent is not making a legitimate non-commercial or fair use of the Domaine Names”.
Thirdly, the Complainant states that “given the widespread use, reputation and notoriety of the famous BARCLAYS and BARCLAYS WEALTH marks, the Respondent must have been aware that in registering the Domain Names she was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks”. It further adds that “the letters making up the words BARCLAYS WEALTH have one letter omitted or swapped around which is a classic typosquatting tactic. It is reasonably anticipated that the Respondent intended to capture internet traffic intended for the Complainant”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, and notwithstanding the default of the Respondent, the Complainant must prove that the following three criteria are met:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii)); and
(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
Each of these elements will be reviewed separately in the following developments:
A. Identical or Confusingly Similar
The Complaint is based on common law rights over BARCLAYS and BARCLAYS WEALTH, as well as on registered trade mark rights over the same signs. For reasons of procedural economy, this Panel will solely compare the disputed domain names with the earlier trademarks BARCLAYS WEALTH registered in the UK.
Clearly and in the framework of the UDRP, the disputed domain names are confusingly similar to the Complainant’s trademarks. Indeed, as rightly mentioned by the Complainant, each of the disputed domain name contains a single letter variation with respect to the earlier trademark BARCLAYS WEALTH: either an omission (e.g. <brclayswealth.com>), or a swap (e.g. <barclaysweatlh.com>). Accordingly and as a result of a mere typo error committed by Internet users, they access to the disputed domain names instead of reaching the domain names of the Complainant. Indeed and even though this is not mentioned in the Complaint, it is worth mentioning that the services of the Complainant are also offered via a webpage hosted under the domain name <barclayswealth.com>.
As a result, the first element of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name. These are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is that “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Respondent has failed, indeed, to allege any right or legitimate interest in the disputed domain names. In any event, the fact that these domain names refer to a parking page tends to demonstrate the lack of right or legitimate interest of the Respondent.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
In the Panel’s view, it is undisputable that the Respondent has registered and is using the disputed domain names in bad faith.
With respect, firstly, to the registration of the disputed domain names: the idea behind these registrations are to take advantage of typing errors committed by Internet users. As already mentioned before, all these disputed domains names contain a single modification with respect to the expression BARCLAYS WEALTH, and none of them makes sense, or has a meaning, per se.
Secondly, these disputed domain names are used to redirect users to a parking page, which offers in particular links to third parties’ websites in the same field of activity the Complainant is engaged in. This is a typical bad faith use, as the Respondent is taking advantage of the typo errors committed by Internet users to obtain a financial gain through a pay-per-click system.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <barcayswealth.com>, <barclaysealth.com>, <barclaysewalth.com>, <barclayswaelth.com>, <barclayswealht.com>, <barclaysweatlh.com>, <barclayswelath.com>, <barclaywsealth.com>, <barlayswealth.com>, <brclayswealth.com> be transferred to the Complainant.
Date: July 18, 2012