The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondents are N/A and Michael Singh of West Midlands, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <barclay-wealth.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2011. On May 20, 2011, the Center transmitted by email to Tucows Inc. (the “Registrar”) a request for registrar verification in connection with the disputed Domain Name. On May 24, 2011, 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 June 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2011. The Respondent did not file a formal Response, but instead sent several email communications to the Center on June 13, 2011.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 14, 2011. 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.
The Respondents are shown as N/A and Michael Singh. Michael Singh was the originally named registrant of the Domain Name as shown by the WhoIs searches carried out. At some stage his name was removed and N/A substituted. Correspondence about the Domain Name has been with Mr. Singh and there is nothing to suggest that in substance he does not remain the registrant of the Domain Name.
The Complainant is Barclays Bank PLC. It is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services with an extensive international presence in Europe, the Americas, Africa and Asia.
The Complainant has traded as Barclays PLC since 1985. Prior to this the Complainant or its predecessor organizations traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. The Complainant currently operates in over 50 countries and employs approximately 144,000 people. The Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide.
The Complainant is the registered proprietor of a variety of United Kingdom (“UK”) registered and Community registered trade marks in the name BARCLAYS and BARCLAYS WEALTH in a range of classes including in relation to financial services. One example is UK registered mark no 2436569 registered in 2006 in respect of BARCLAYS WEALTH.
The Complainant is the registrant of a portfolio of domain names including <barclays.co.uk> which was registered prior to August 1996 and <www.barclays.com> which was registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Respondent registered the Domain Name on April 22, 2010.
The question of the way in which the Domain Name has been used and the correspondence that has passed between the Parties about it, is dealt with below.
The Complainant's contentions are straightforward and can be summarized as follows.
The Domain Name is confusingly similar to its trade mark BARCLAYS WEALTH. Omission of the letter "s" does not distinguish the Domain Name.
The Respondent has no rights or legitimate interests in the term “Barclay Wealth”.
The Domain Name was registered and is being used in bad faith. It was used in respect of a web page which was a page with links to providers of other financial services - though that page has at some stage removed. The Respondent by a letter dated September 4, 2010 offered to sell the Domain Name to the Complainant for GBP 311,000. Both of these indicate bad faith.
No formal response has been filed. The points made in correspondence from the Respondent seem to be firstly that he bought the Domain Name in good faith from a third party and secondly that it has not been used fraudulently and he does not intend to set up a company trading under or by reference to the Domain Name.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the trade mark BARCLAYS WEALTH (the "Trade Mark")
The Domain Name is confusingly similar to the Trade Mark. The omission of the final "s" from the word “Barclays” is a minor variation.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Trade Mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
“Barclays” is a word which the evidence establishes is very well-known and is associated with the Complainant and which has, so far as the Panel is aware, no separate or independent meaning. The word “Barclay” is a surname in the English language (although not particularly common), but has no other meaning. It is conceivable given its usage as a surname that there may well be other business which trade under the name Barclay or Barclays (no evidence has been filed in this respect) but the evidence filed by the Complainant indicates that the name is overwhelmingly likely, on a UK and international scale, to be associated with the Complainant. Accordingly there is no basis upon which the Respondent has any rights or legitimate interest in the word "Barclay Wealth”.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
No evidence is available as to how the Domain Name was first registered. Given the extremely well-known nature of the Complainant (see above) and the fact that the term “Barclay Wealth” is likely to be associated with the Complainant the Panel infers the registration was to take advantage of the well-known reputation of the Complainant and accordingly was in bad faith.
The Panel has considered whether the Respondent's communications should be relied upon in reaching its opinion given they are marked "without prejudice”. It does not seem to the Panel that these communications represent genuine attempts to compromise a dispute but are simply vehicles for the Respondent to set out his views. In this regard the Panel adopts the reasoning in The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd., WIPO Case No. D2009-0998 and relies upon what is contained in that decision. As indicated above, the Respondent’s offer was to sell the Domain Name for in excess of GBP 300,000 – the Panel infers that a sum of such magnitude was in excess of the Respondent's out of pocket costs in obtaining the Domain Name and is accordingly evidence of bad faith within paragraph 4(b)(i) of the Policy: "circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name".
In view of this finding it is not necessary to consider the evidence about web sites that may at some stage have been associated with the Domain Name.
The Panel notes that in subsequent correspondence the Respondent has offered to transfer the Domain Name for nothing, but the Complainant has not accepted that offer. This does not alter the Panel's analysis. The Respondent's views that he has not used the Domain Name fraudulently, nor does he intend to set up a company to trade under the name, represent an incorrect and overly narrow view of the concept of "bad faith" under the policy and do not avoid the finding of bad faith
In reaching its view the Panel notes that numerous other UDRP panels have reached similar conclusions in relation to similar issue concerning the Complainant and its well-known name – see for recent examples Barclays Bank PLC v. Arthur Kulik / Whois Privacy Protection Service, Inc., WIPO Case No. D2010-1992 (<barclayskbank.com>); Barclays Bank PLC v. Current Events, WIPO Case No. D2010-1989 (<barclaycenter.info> and <barclaycenters.com>); and Barclays Bank PLC v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-1990 (<barclaysonline.com>).
Accordingly, the Panel finds that the third condition of paragraph 4(a) of the Policy has been fulfilled and holds that the Domain Name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <barclay-wealth.com> be transferred to the Complainant.
Nick J Gardner
Sole Panelist
Dated: July 28, 2011