WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Ho Lo
Case No. D2011-1322
1. The Parties
Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
Respondent is Ho Lo of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ibarclays.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2011. On August 2, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 4, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 9, 2011. The Panel find 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.
Following preliminary review of the Complaint and accompanying submissions, the Panel through Administrative Procedural Order No. 1, dated September 27, 2011, requested additional evidentiary support from Complainant regarding the status of its alleged trademark registrations, and a web page allegedly posted by Respondent. Administrative Panel Procedural Order No. 1 stated, inter alia:
“Complainant has referred to a ‘holding page’ it alleges was posted by Respondent, but has not furnished a printout of that holding page. The Panel examined the cease-and-desist letters transmitted by Complainant to Respondent for contemporaneous evidence regarding the content of the referenced holding page, and found that those letters did not describe the content of the alleged offending website. The Panel assumes that if Complainant had made a printout of the referenced holding page it would have appended it to the Complaint. If there is in fact such a printout in Complainant's possession, it should be transmitted to the Center and provided to the Panel. If there is no such printout, Complainant should address from a legal standpoint how it believes the Panel should proceed in the absence of concrete evidence regarding this alleged holding page.”
The Panel authorized Respondent to respond to any supplementary submission by Complainant. By e-mail dated September 30, 2011, Complainant submitted a supplemental submission to the Center comprised of a printout of a web page representing the use made of the disputed domain name, and printouts of relevant trademark office electronic database reports supporting its alleged trademark registrations. Other than an e-mailed statement that the attachments were sent in response to Administrative Panel Procedural Order No. 1, there was no explanation of the attachments from Complainant.
4. Factual Background
Complainant has registered the word trademark and service mark BARCLAY and BARCLAYS on the trademark register of the United Kingdom Intellectual Property Office (UKIPO), including Registration Number 1286579, dated March 3, 1989, in international class (IC) 36, covering “Financial services”; Registration Number 1380658, dated June 26, 1992, in IC 35, covering, inter alia, business advisory and inquiries services, and; Registration Number 1393351, dated October 2, 1992, in IC 16, covering, inter alia, publications and checks. In addition to the aforesaid BARCLAY and BARCLAYS trademark registrations, Complainant has registered a variety of BARCLAY-formative and design marks on the (UKIPO) trademark register. Complainant has also registered the word trademark BARCLAYS and various BARCLAYS-formative and design marks as Community Trade Marks (CTM), including for BARCLAYS, Registration Number 002315554, dated February 13, 2003, in ICs 9, 16, 35, 36, 38, and 42.
Complainant has registered a substantial number of domain names incorporating its BARCLAYS trademark, including <barklays.co.uk>, registered prior to August 1996, and <barclays.com>, registered on November 23, 1993.
Complainant is a substantial banking institution based in the United Kingdom, doing business in over 50 countries, and employing approximately 144,000 people. Complainant estimates that it “moves, lends, invests and protects money for more than 48 million customers and clients worldwide” (see Complaint). Predecessor entities to Complainant have done business under the BARCLAYS name since 1896. Complainant operates commercial Internet websites with URL addresses incorporating the BARCLAYS name, and its <barclays.com> domain name currently redirects, as example, to <group.barclays.com/Home>.1
According to the Registrar’s verification, Respondent is registrant of the disputed domain name, the record of registration of the disputed domain name was created on February 3, 2011, and the disputed domain name was registered to Respondent on February 3, 2011.
At the time the Complaint was filed in this matter, the disputed domain name directed Internet users to a webpage reading “Domain ibarclays.info is parked.”
Complainant alleged that the disputed domain name was previously used for another purpose, specifically:
“The Domain Name was being used as a holding page containing a number of finance related sponsored links which relate to competitor products and services to those offered by the Complainant. The Domain Name was being used to redirect internet traffic intended for the Complainant away from the Complainant and to competitor products and services, with the intention to generate income for the Respondent. The content on the website at the Domain Name was tailored to match the Complainant's core goods and services. This meant that when internet users viewed the content displayed at the Domain Name and clicked one of the sponsored links on the website Respondent generated revenue directly from the initial interest arising from the use of the name BARCLAYS in the Domain Name.”
The documents attached to the Complaint did not include a screenshot of the web page as referenced by Complainant. Complainant had transmitted two cease-and-desist-and-transfer demands to Respondent (dated May 6, 2011 and March 25, 2011), each of which refers to Complainant's trademark rights, and each of which refers to a “blatant attempt to trade off our client’s reputation and inevitably the resulting confusion”, but neither letter specifies the character of the activity being undertaken by Respondent. (Respondent did not reply to either demand). The Panel requested from Complainant substantiating evidence of the use of the disputed domain name alleged to have been made by Respondent, or an explanation as to how the Panel should proceed in the absence of such substantiation.
Complainant in a supplemental submission provided a screenshot of a webpage with a header showing the name of the web hosting service, “Bluehost”, indicating “Web Hosting-courtesy of www.bluehost.com”. Under that heading, is a rectangular box with a modest-sized font heading “Welcome to ibarclays.info”, and an open box in the bottom right-hand of that same box with a button labeled "search", and no additional information. There are no advertisements or links on the web page. Small-font footer information at the bottom of the web page is associated with “www.bluehost.com”. The afore-described screenshot is dated September 28, 2011, and was furnished without explanation by Complainant other than as responsive to Administrative Panel Procedural Order No.1.
The registration agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant alleges rights in the trademark BARCLAYS and that the disputed domain name is identical or confusingly similar to that trademark. Complainant argues that the disputed domain name contains a word which is identical to Complainant's trademark, and is therefore confusingly similar. Complainant argues that the BARCLAYS trademark has “worldwide fame, reputation and notoriety”.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent registered the disputed domain name on February 3, 2011; (2) the disputed domain name was used as a holding page containing sponsored links which included the products and services of competitors of Complainant; (3) initial interest confusion at Respondent's website resulted in click-throughs by Internet users and income for Respondent; (4) Respondent is not known by the disputed domain name; (5) Respondents operation of a pay-per-click sponsored page does not constitute legitimate noncommercial or fair use of the disputed domain name, and; (6) Complainant never gave permission to Respondent to use its trademark in the disputed domain name.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith because: (1) Complainant transmitted cease-and-desist-and-transfer demands to Respondent, and no responses were received; (2) because of the well-known character of Complainant's trademark, Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of Complainant; (3) Respondent's registration of the disputed domain name has prevented Complainant from registering a domain name which corresponds to its trademark; (4) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark; (5) “Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume there is an Association between the Respondent in the Complainant, and/or between the Respondent in the BARCLAYS trade mark”; and (6) use of the disputed domain name will divert potential business from Complainant to links on Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center could not identify a physical address associated with the incomplete information in the record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark BARCLAYS on the register of the UKIPO and as a CTM at the Office of Harmonization for the Internal Market (OHIM), and of the substantial use of the BARCLAYS trademark in commerce in the United Kingdom and other countries. Respondent has not challenged Complainant's rights in the BARCLAYS trademark. The Panel determines that Complainant has rights in the trademark BARCLAYS in the United Kingdom and the European Union.
The disputed domain name appends the prefix letter “i” to the BARCLAYS trademark to form the term <ibarclays.info>.2 The letter “i” is commonly used as a prefix to trademarks and other terms in connection with Internet usage, as a short-form reference for “Internet”, “information” or terms with similar meaning.3 Complainant's trademark is distinctive and well-known. An Internet user viewing Complainant's trademark with the prefix “i” might well associate the disputed domain name with an Internet portal for Complainant's services and products. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because (1) Respondent registered the disputed domain name on February 3, 2011; (2) the disputed domain name was used as a holding page containing sponsored links which included the products and services of competitors of Complainant; (3) initial interest confusion at Respondent's website resulted in click-throughs by Internet users and income for Respondent; (4) Respondent is not known by the disputed domain name; (5) Respondents operation of a pay-per-click sponsored page does not constitute legitimate noncommercial or fair use of the disputed domain name, and; (6) Complainant never gave permission to Respondent to use its trademark in the disputed domain name.
Complainant has failed to substantiate its argument that Respondent used the disputed domain name in connection with a pay-per-click parking page. In response to a request from the Panel in Administrative Panel Procedural Order No. 1 for evidentiary support, Complainant furnished a standard form Bluehost parking page that includes the disputed domain name as a modest-sized font block heading, but without any indication of sponsored links. While the page included a blank box allowing a search, there was no indication or suggestion that the search was for anything other than a general Internet search.
Complainant had the opportunity but did not provide an explanation for the difference between the website it alleged Respondent to have established, and the webpage screenshot Complainant provided. In the absence of such explanation, the Panel must assume there is none, and that the screenshot provided in response to Administrative Panel Procedural Order No. 1 accurately reflects Respondent's usage of the disputed domain name.
Complainant has otherwise made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent’s sole use of the disputed domain name has been in connection with a standard form “free parking page” provided by Bluehost. The mere parking of a domain name on a standard form page does not represent a bona fide offering of goods or services, and does not indicate that Respondent was known by the disputed domain name. The use by Respondent of Complainant's trademark in the disputed domain name such that Respondent’s website may attract Internet users to a webpage with no function other than a standard form parking page does not constitute sufficient “use” by Respondent to establish rights or legitimate interests in the disputed domain name incorporating Complainant's trademark. It is not a “use” for any particular purpose.
Respondent has not successfully rebutted Complainant's prima facie case that it lacks rights or legitimate interests in the disputed domain name. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are two specifically relied upon by Complainant:
“(ii) [Respondent 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 [Respondent has] engaged in a pattern of such conduct; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant has argued, in sum, that: (1) Complainant transmitted cease-and-desist-and-transfer demands to Respondent, and no responses were received; (2) because of the well-known character of Complainant's trademark, Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of Complainant; (3) Respondent's registration of the disputed domain name has prevented Complainant from registering a domain name which corresponds to its trademark; (4) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark; (5) “Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of Barclays is such that members of the public will always assume there is an Association between the Respondent in the Complainant, and/or between the Respondent in the BARCLAYS trade mark”; and (6) use of the disputed domain name will divert potential business from Complainant to links on Respondent's website.
While in theory Respondent might have registered the disputed domain name to prevent Complainant from registering its own trademark in a corresponding domain name, Complainant has not provided evidence that Respondent engaged in a pattern of such conduct. Complainant has not demonstrated that Respondent engaged in bad faith conduct within the meaning of paragraph 4(b)(ii) of the Policy.
This would be an “easy case” if Complainant had substantiated its allegation that Respondent had used the disputed domain name in connection with a "link farm parking page" that directed or redirected Internet users to websites of competitors of Complainant, or otherwise offered competing goods or services, or if Complainant had explained why it was unable to provide substantiating evidence. The explicit "causing confusion" and "commercial gain" requirements of paragraph 4(b)(iv) of the Policy might more clearly have been satisfied.
In the discussion of legitimate noncommercial or fair use, the Panel observed that Respondent had not made sufficient use of the disputed domain name to establish rights or legitimate interests in it. This does not mean, however, that Respondent has not "used" the disputed domain name. It has made use of the disputed domain name in connection with a standard form free parking page that includes an open search box.
Respondent registered the disputed domain name which incorporates Complainant's well-known and distinctive trademark, and associated it with a webpage. The registration of a well-known trademark in a domain name by a party other than its owner may be justifiable under the Policy in a limited number of circumstances, as discussed below, but registration by a third-party of a trademark that is well-known places a heightened burden on that third-party to justify its conduct. International legal rules applicable to well-known trademarks accord certain additional benefits over those accorded to ordinary trademarks (e.g., well-known marks benefit from an obligation on trademark offices to refuse third-party registration sua sponte).4
It is conceivable that Respondent might have had a "noncommercial" motive for registering and using the disputed domain name. Without any suggestion as to whether such usage might have established rights or legitimate interests (such as by constituting legitimate noncommercial use), Respondent might have been altruistically motivated to report on alleged violations of banking regulations by Complainant, or reported on the unhappiness of its bank consumers. Respondent did not make any such use of the disputed domain name, and it did not seek to substantiate such an intended use.
Respondent included Complainant's well-known trademark in the disputed domain name. By using the disputed domain name in connection with a website it has created some Internet user confusion as to the sourcing, sponsorship, affiliation or endorsement of its website by Complainant. That is, on first view an Internet user would reasonably assume that Complainant's trademark would be associated with a website sponsored by or otherwise affiliated with Complainant. Because Complainant's trademark is well-known, and because Respondent has neither sought to justify its registration in the disputed domain name, nor justified it, the Panel draws the inference that Respondent registered the disputed domain name with a commercial motive, i.e., that it intended "commercial gain". The Panel is looking to the totality of the circumstances that includes a well-known distinctive trademark, a use by Respondent in connection with a web page that is modified following notice from Complainant, the provision by Respondent of incomplete contact information, and Respondent's failure to reply to the Complaint with any justification for its registration and use.
It is not clear to the Panel why Complainant's counsel was unable to substantiate the allegations in the Complaint with concrete evidence, and why Complainant's counsel furnished evidence inconsistent with the characterization of the evidence in the Complaint. This has created considerable difficulty for the Panel in making its determination, and the Panel find it appropriate here to further admonish Complainant’s counsel to give serious and careful consideration to the adequacy of supporting evidence in any future Policy proceedings, especially in any case in which the relied upon mark may be less well known. The Panel, nonetheless, is hesitant to penalize Complainant in circumstances where it appears that Respondent has registered the disputed domain name in bad faith.
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 domain name, <ibarclays.info> be transferred to the Complainant.
Frederick M Abbott
Sole Panelist
Dated: October 28, 2011
1 Panel visit of October 9, 2011.
2 For purposes of the Policy, under circumstances such as those found here, addition of the top-level domain “.info” is not relevant to a comparison of the trademark and disputed domain name in determining confusing similarity.
3 See, e.g., “Internet-related prefixes” in Wikipedia, Panel visit of October 9, 2011.
4 See Paris Convention on the Protection of Industrial Property, Article 6bis. See also WTO TRIPS Agreement, art. 16.2 & 16.3.