WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. Domains By Proxy LLC/ Nigel Parmenter

Case No. D2012-1047

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 Respondents are Domains By Proxy LLC of Scottsdale, Arizona, United States of America and Nigel Parmenter of Marbella, Malaga, Spain.

2. The Domain Name and Registrar

The disputed domain name <barclayscigarettes.com> is registered with GoDaddy.com, LLC.

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 GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On May 22, 2012, GoDaddy.com, LLC 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 May 23, 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 May 28, 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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2012.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on June 29, 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 major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management with an extensive international presence in Europe, the Americas, Africa and Asia.

The Complainant has traded as Barclays PLC since 1985 after having traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.

The Complainant is the right holder of numerous United Kingdom (“UK”) registered and Community registered trademarks, be it verbal or graphic, consisting in whole or in part of the name BARCLAYS in a range of classes including related to financial services.

It in particular owns the following UK registered verbal trademarks:

- BARCLAY/BARCLAYS (n° 1286579), registered on October 1, 1986, under class 36 of the Nice Classification;

- BARCLAY/BARCLAYS (n° 1380658), registered on April 19, 1989, under class 35 of the Nice Classification;

- BARCLAY/BARCLAYS (n° 1393351), registered on July 27, 1989, under class 16 of the Nice Classification.

It also owns the following Community registered verbal trademarks:

- BARCLAYS (n° 2315554), registered on February 13, 2003, under classes 9, 16, 35, 36, 38 and 42 of the Nice Classification;

- BARCLAYS (n° 55236), registered on January 26, 1999, under classes 9, 16, 35, 36 and 42 of the Nice Classification.

The Complainant also owns a portfolio of domain names including < barclays.co.uk>, which was registered prior to August 1996, and <barclays.com>.

The second Respondent registered the domain name <barclayscigarettes.com> on 7 March 2011.

On September 23, 2011, the Complainant sent to the first Respondent a cease and desist letter, drawing its attention to its trademarks and requesting the transfer of the disputed domain name. At that date, a search of the WhoIs database indicated that Domains by Proxy was the registrant of the disputed domain name. On October 10, 2011, the first Respondent responded that it had forwarded the Complainant’s letter of September 23, 2011 to its customer, inviting it to respond by October 17, 2011. Absent any response from its customer, the first Respondent sent a second email to the Complainant on October 18, 2011, providing contact details for the second Respondent. Accordingly, the Complainant wrote to the second Respondent on November 15, 2011. Absent any response, reminders were sent to the second Respondent on February 9, 2012 and March 9, 2012. The second Respondent never responded.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name <barclayscigarettes.com> is confusingly similar to the name BARCLAYS in which it has common law rights as well as registered trademarks.

The Complainant then argues that the Respondents have no rights or legitimate interests in the disputed domain name. Given the worldwide fame reputation and notoriety of BARCLAYS, the Complainant alleges that no one would choose the disputed domain name but with the intent to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly to divert the public from the Complainant to the second Respondent. According to the Complainant, this is confirmed by the fact that the disputed domain name is being used as a holding page containing a number of links including financing related sponsored links which relate to competitor products and services to those offered by the Complainant, so as to generate revenues directly from the initial interest arising from the use of BARCLAYS in the disputed domain name. Such a use cannot be considered a legitimate noncommercial or fair use of the disputed domain name. In addition to these circumstances, the Complainant adds that the Respondents are not known by the disputed domain name and have never asked for, nor been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trademark.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Considering the reputation of its trademarks, the Respondents must have been aware that, in registering the disputed domain name <barclayscigarettes.com>, they were infringing upon the Complainant’s rights and that, by doing so, they were also preventing the Complainant from registering a domain name corresponding to its trademarks, and were intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with its trademarks. The Complainant is of the opinion that the Respondents will never be capable of using the disputed domain name for a legitimate purpose considering the notoriety of its trademarks, as users will always assume that there is an association between the Respondents and the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of several registered verbal trademarks consisting of the word “Barclays”.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

This is all the more true when the trademark is well-known, and consists of the dominant part of the disputed domain name, and where the added elements are merely descriptive (see paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Panel finds such happens to be the case here. The addition of a term such as “cigarettes” is merely descriptive and does not exclude the likelihood of confusion resulting from the use of the dominant sign “BARCLAYS”.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondents have no rights or legitimate interests in the disputed domain name.

As the UDRP panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient under the Policy for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).

In the present case, the Complainant has demonstrated that it is the owner of numerous BARCLAYS trademarks. The Complainant has no business or other relationships with the Respondents.

UDRP panels agree that use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or constitute “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder (paragraph 2.6, WIPO Overview 2.0). Such is the case here.

Considering the worldwide reputation enjoyed by the Complainant’s trademarks, the Complainant thus has made a prima facie case showing that the Respondents have no rights or legitimate interests in the disputed domain name.

On its side, the Respondents have not answered the Complaint.

Considering the absence of a Response and the fact that the Respondents are neither commonly known by the disputed domain name, nor have made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondents have failed to demonstrate any rights or legitimate interests in the disputed domain name.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed under the Policy, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith typically requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Complainant is the owner of numerous BARCLAYS trademarks, which enjoy a worldwide reputation and amount to well-known trademarks.

Considering the worldwide reputation of the Complainant’s trademarks, the Panel finds it hard to believe that the Respondents would have chosen and registered the disputed domain name <barclayscigarettes.com> in good faith, without having been aware of the Complainant’s trademarks. The Respondents, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the evidence presented, and the Respondents have to bear the consequences of their default on that regard.

There is no doubt, in the Panel’s opinion, that the Respondents were very well aware of the Complainant’s trademarks, and that the disputed domain name has been registered, and is being used to attract Internet users to the Respondents’ website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondents’ website is linked to the Complainant.

As found by several UDRP panels (see for instance, Dr Martens International Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1753), by creating a PPC parking website that features PPC links to the Complainants’ competitors, the use of the disputed domain name may be found to be in bad faith under the Policy. The purpose of this PPC parking website, to this Panel, clearly is to attract Internet users to the site, for profit, based on their confusing the Respondents’ domain name and/or website with the Complainant’s marks. Once on the Respondents’ page, some users may likely click on advertisers’ links, which presumably and as alleged by the Complainant would confer a commercial benefit on the Respondents. The fact that the second Respondent was willing to pay money to register or acquire the disputed domain name, to continue to maintain it, and to host the website, all are evidence, to this Panel, that the second Respondent expected to profit from the disputed domain name in this way. The Panel therefore infers that the Respondents profit from the goodwill associated with the BARCLAYS trademarks by collecting click-through fees and that the Respondents use the domain name in bad faith.

Consequently, the Panel is of the opinion that the disputed domain name <barclayscigarettes.com> was registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.

7. Decision

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 <barclayscigarettes.com> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Dated: July 2, 2012