WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. Above.com Pty Ltd

Case No. D2012-0093

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 Pty Ltd of Beaumaris, Victoria, Australia.

2. The Domain name and Registrar

The disputed domain name <barclayssecurities.com> is registered with Key-Systems GmbH d/b/a domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 20, 2012, the Center transmitted a request to the Registrar by email for registrar verification in connection with the disputed domain name. On January 20, 2012, the Registrar transmitted to the Center by email its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 January 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was on February 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2012.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on March 26, 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 financial service provider engaged in retail banking, credit card services, corporate banking, investment banking, wealth management and investment management services. “Barclays Bank Limited” and “Barclay and Company” have been providing financial services since 1896, and the development of their global business began in the 1920’s. The Complainant itself has traded as “Barclays Bank PLC” since 1985. The Complainant currently operates in over 50 countries and employs approximately 144,000 people.

The Complainant owns a variety of trademark registrations worldwide containing the element “Barclays”, among them:

- European Community Trademark Registration No. 55236 BARCLAYS (word) filed on April 1, 1996, registered on January 26, 1999, for goods and services in Classes 9, 16, 35, 36, 42, which include in particular financial services and banking services.

- United States Trademark Registration No. 3049848 BARCLAYS (word) filed on October 18, 2004, and registered on January 9, 2007.

- U.K. Trademark Registration No. 1314306 BARCLAYS (word) filed on June 24, 1987, and registered on July 20, 1990.

The Complainant has also registered domain names incorporating the BARCLAYS marks, such as <barclays.com> (since 1993) and <barclays.co.uk> (since 1996).

In addition to its registered trademarks and domain names, through the use of the name BARCLAYS over the last 114 years, the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. As such, BARCLAYS has become a distinctive identifier associated with the Complainant and the services it provides.

The disputed domain name <barclayssecurities.com> was initially registered on May 24, 2011. The disputed domain name is still active and is used as a parking website containing a number of sponsored links, which relate to a range of competitors’ products and services.

The Complainant sent a cease and desist letter to the Respondent on September 27, 2011. The Respondent did not reply to this letter. The Complainant wrote two other letters on October 18, 2011, and November 4, 2011. The Respondent did not reply to these letters either.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is established in the present case:

(1) The Complainant is of the opinion that the disputed domain name is confusingly similar to the BARCLAYS trademarks in which it enjoys rights.

In this respect, the addition of the generic word “securities” does not dispel the confusion. Given the association the word has with finance and financial services, which are the Complainant’s main business, the addition of the word “securities” is more likely to reinforce confusion rather than to distinguish the disputed domain name from the name BARCLAYS (see Quixtar Investments, Inc v. Smithberger and QUITAR-IBO, WIPO Case No. D2000-0138). Thus, the disputed domain name may evoke the impression that the website is operated or otherwise authorized by the Complainant.

In similar circumstances, panels have consistently recognized that the addition of a non-distinctive element, in this case the word “securities”, is not able to diminish the confusion (see Barclays Bank PLC v. Lafayette Smith, WIPO Case No. D2012-0091; Barclays Bank PLC v. Domain Registrar, WIPO Case No. D2011-2012; and Barclays Bank PLC v. Zhongshan Banks Electric Marketing Co. Ltd (中山市比克斯电器营销有限公司), WIPO Case No. D2011-2014).

(2) Further, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As regards this second element, the Complainant contends that the Respondent is not commonly known by the name “barclayssecurities” and is not licensed or otherwise authorized to register or use the Complainant’s BARCLAYS mark.

Furthermore, it is clear that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The content found on the website at the disputed domain name is “pay-per-click” sponsored links which relate to financial services. This use of the website designed to obtain revenue from such links to take unfair monetary advantage from the Complainant’s trademarks, is not a bona fide use of the disputed domain name.

(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

Given the widespread use of the famous BARCLAYS mark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of BARCLAYS trade mark.

The Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade mark contrary to paragraph 4(b)(ii) of the Policy. Furthermore, the Complainant is of the opinion, that the Respondent has registered the disputed domain name solely for commercial gain, in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to endorsement or affiliation in breach of paragraph 4 (b)(iv) of the Policy. The purpose behind the registration of the disputed domain name was to exploit Internet traffic destined to the Complainant by diverting potential customers from the Complainant’s business by the presence of links to competitor websites via the content on the website at the disputed domain name. This use of the disputed domain name enables the Respondent to reap financial benefit and disturb the business of the Complainant. The Respondent need not be a direct competitor of a Complainant, it is sufficient that the use of the disputed domain name provides means for Internet users to access links to businesses that rival the Complainant.

When considering the reputation and notoriety of the BARCLAYS trademarks throughout the world and the nature of the Respondent’s website, the only reason why the Respondent could have wanted to register and use the disputed domain name was that it had actual knowledge of this mark at the time of registration, and wanted to use it to profit from the Complainant’s mark in the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the complainant’s trademark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In the following, the Panel will discuss in consecutive order whether each of these requirements are met here.

A. Identical or Confusingly Similar

The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy, is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark BARCLAYS, which predate the registration of the disputed domain name. The disputed domain name consists of the term “barclayssecurities” and the top-level domain “.com”, which is generally disregarded when addressing confusing similarity.

The disputed domain name contains the Complainant’s trademark in its entirety and differs from the trademark by the addition of the word “securities”.

The additional word “securities” does not dispel confusion. On the contrary, the Panel finds that the word enhances the likely confusion. “Securities” is a descriptive term that may easily be associated with services the Complainant provides, as they are a specific kind of financial product that the Complainant offers. Thus, this disputed domain name could easily be a domain name of the Complainant itself.

As already found by numerous UDRP Panels, the mere addition of generic or descriptive words is insufficient in itself to avoid a finding of confusing similarity (see Credit Lyonnais v. Jehovah Technologies Pte LTD, WIPO Case No. D 2000-1425; and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314).

For this reasons, the Panel concludes that the addition of the word “securities” does not change the overall impression of the disputed domain name as being dominated by the distinctive trademark “BARCLAYS” and does not serve to distinguish the disputed domain name from Complainant’s marks.

Hence, the disputed domain name is confusingly similar to the Complainant’s BARCLAYS trademarks. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant offering financial services. Therefore, in the Panel’s view, Internet users may assume that the disputed domain name refers to a website of or authorized by the Complainant.

In view of the above, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the 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.

Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.

Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.

Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.

Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.

Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:

“circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;

the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct;

the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.”

The Complainant has brought evidence that its trademarks are known to more than 48 million customers and clients worldwide, which has not been contested by the Respondent, and the Panel finds this evidence credible due in particular to the international trademark ranking submitted by the Complainant in Annex 4 to the Complaint. Thus, the Panel accepts the Complainant's contention that the trademark BARCLAYS can be considered well known for the purposes of this proceeding, and was so before the registration of the disputed domain name. Therefore the Panel concludes that it is inconceivable that the Respondent had not known of the Complainant’s trademark upon registration of the disputed domain name.

Further, the Complainant has brought forward considerable evidence that the Respondent is using the disputed domain name in order to attract Internet users looking for the Complainant’s website to its own website by creating a likelihood of confusion with the Complainant’s BARCLAYS mark as to the source, sponsorship, affiliation or endorsement of its website for the purposes of monetary gain. The website at the disputed domain name is a typical parking website, providing links to the websites of the Complainant’s competitors and generating revenues by means of a “pay-per-click” mechanism. The Panel concludes that the Respondent deliberately registered the disputed domain name with the Complainant’s mark in mind, seeking to derive “pay-per-click” revenue from Internet users looking for the Complainant’s website.

In similar circumstances, UDRP panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate “pay-per-click” sites, may be considered to be evidence of bad faith, regardless of whether it becomes apparent to the Internet user when having arrived at the “pay-per-click” site, that the website is not necessarily connected with the trademark owner (see Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569; Société Air France v. Bing G Glu, WIPO Case No. D2006-0834; Société Air France v. WWW Enterprise Inc. (173206), WIPO Case No. D2005-1160; and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). At that point, upon arrival at the website, the disputed domain name has already served its purpose to attract the user and generate commercial gain.

For all of the above, the Panel finds that the disputed domain has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <barclayssecurities.com> be transferred to the Complainant.

Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: March 28, 2012