The 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 Respondent is Transure Enterprise Ltd, Host Master of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <nykconnectbarcap.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2012, Above.com, Inc. transmitted to the Center by email 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 February 17, 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 February 20, 2012, additionally naming Transure Enterprise Ltd as Respondent.
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 February 23, 2012. On February 29, 2012, the Center resent the Written Notice to the Respondent’s address provided by the Registrar and extended the Response due date to March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 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.
The Panel notes that use of privacy services to mask the identity of domain name registrants is becoming common in the recent past and in such cases it is usual for the Center to confirm who the underlying registrant is with the Registrar of the disputed domain name (See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886). The Panel further notes that the Registrar has identified “Transure Enterprise Ltd” as the registrant of the disputed domain name and that “Above.com Domain Privacy” is simply a privacy name registration service. Accordingly, and considering the amended Complaint filed by the Complainant, the Panel will treat registrant “Transure Enterprise Ltd” as the correct Respondent, in line with earlier panel decisions such as Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; Ecoyoga Ltd v. siteleader.com, Siteleader Hosting, WIPO Case No. D2009-1327; Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO Case No. D2008-1179 and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC, WIPO Case No. D2007-0169.
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 114,000 people.
The Complainant owns a variety of trademark registrations worldwide containing the element BARCLAYS, among them
- European Community trademark 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 no. 3049848 BARCLAYS (word) filed on October 18, 2004, and registered on January 9, 2007.
- United Kingdom trademark no. 1314306 BARCLAYS (word) filed on June 24, 1987, and registered on July 20, 1990.
Moreover, the Complainant holds registered trademarks worldwide regarding the terms BARCAP and BARCLAYS CAPITAL, among them
- European Community trademark no. 000736306 BARCAP (word) filed on January 26, 1998, registered on July 16, 1999 for goods and service in Class 36.
- United States trademark no. 2305566 BARCLAYS CAPITAL filed on May 26, 1998, registered on January 4, 2000
- United Kingdom trademark no. 2154329 BARCAP filed on December 23, 1997, and registered on July 10, 1998.
The Complainant also has registered domain names incorporating BARCLAYS marks, such as <barclays.com> (since 1993) and <barclays.co.uk> (since 1996) and domain names incorporating the BARCAP marks, such as <barcap.com> (since 1997) and <barcap.co.uk> (since 1999).
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, he claims the name BARCLAYS and trademark derivatives of the name such as BARCAP and BARCLAYS CAPITAL have become distinctive identifiers associated with the Complainant and the services it provides.
The disputed domain name <nykconnectbarcap.com> was created on June 16, 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 competitor products and services to those offered by the Complainant.
The Complainant sent a cease and desist letter to the Respondent on October 12, 2011. The Respondent did not reply to this letter. The Complainant wrote two other letters on November 4, 2011, and December 6, 2011. The Respondent did not reply to these letters either.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant is of the opinion that the disputed domain name is confusingly similar to the BARCLAYS, BARCAP and BARCLAYS CAPITAL trademarks in which it enjoys rights.
The Complainant claims that, by the inclusion of the word “barcap”, the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The Complainant presents, beyond this mere allegation, no facts or argumentation on this point.
(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 disputed domain name <nykconnectbarcap.com> and is not licensed or otherwise authorized to register or use the Complainant’s BARCLAYS mark or trademark derivatives of this mark such as BARCAP and/or BARCLAYS CAPITAL.
Furthermore, it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content found at the website to which the disputed domain name resolves is “pay-per-click” sponsored links which relate to financial services. This use of the website designed to obtaining 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 the BARCLAYS trademark and trademark derivates such as BARCAP and/or BARCLAYS CAPITAL.
The Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trademark contrary to paragraph 4(b)(ii).
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 in the content of the website to which the disputed domain name resolves. 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 the 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.
The Respondent did not reply to the Complainant’s contentions.
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 disputed 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.
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, BARCAP and BARCLAYS CAPITAL which predate the creation date of the disputed domain name. The disputed domain name consists of the term “nykconnectbarcap”.
The Panel notes that neither the trademark BARCLAYS nor the trademark BARCLAYS CAPITAL form part of the disputed domain name. The disputed domain name consists of the words “nykconnect” and “barcap”. The top level domain “.com” can be disregarded for the purposes of the assessment of a confusing similarity.
BARCAP is a trademark in which the Complainant has rights, forming the end of the disputed domain name. The Complainant fails to present facts or any argumentation why the combination of “nykconnect” with “barcap” makes the disputed domain name confusingly similar to the trademarks in which the Complainant has rights. In particular, the Complainant fails to make a case that the trademark BARCAP itself, among the trademarks of the Complainant, enjoys a particular reputation or is particularly well known to the public. There are no explanations or annexes provided as evidence to that effect. The Panel finds it cannot be inferred from any documentation or contentions regarding the alleged well-known character of the BARCLAYS or BARCLAYS CAPITAL mark that the acronym BARCAP also benefits from such well-known character or reputation of those other marks. Thus, the Panel holds that the trademark BARCAP, in which the Complainant has rights, may be regarded for purposes of these Policy proceedings as being of average distinctiveness only. Furthermore, the Complainant has not provided any facts or argumentation as to why the first part of the disputed domain name, “nykconnect”, should be disregarded or is of minor importance for the assessment of confusing similarity with the trademark BARCAP. Neither does the Complainant make any showing that “nyk” and/or “connect” and/or the combination “nykconnect” are descriptive or not distinctive in relation to the area in which the trademarks or disputed domain name are used, nor does the Complainant offer an explanation as to what “nyk” or “nykconnect” are supposed to mean. As far as “connect” is concerned, this is certainly a term which in the area of telecommunications is descriptive for putting Internet or telecommunication users in connection with each other. This, however, does not impact on the area of financial services. Also, the word “nyk”, at least to the knowledge of the Panel, does not have any meaning whatsoever. It might be, from its look, a Scandinavian word, or an individual or a fantasy name. Furthermore, “nykconnect” does not constitute an insignificantly small prefix e.g. just one letter in front of the term BARCAP that may not able to redirect the attention from the BARCAP trademark (see Barclay Bank PLC v. Huang Li Technology Corp., WIPO Case No. D2011-2008) but is a rather long addition. Also, the Panel finds the word “nykconnect” is not likely to be associated with the financial services of the Complainant in any other way. Neither “nyk” nor “connect” are words that Internet users would intuitively affiliate with the services of a bank. Finally, the Internet user tends to focus its attention on the first part of a domain name. For these reasons, the word “nykconnect” cannot be disregarded when looking at the disputed domain name as a whole in comparison with the trademark BARCAP.
In connection with the above assessment the Panel has given due consideration to issuing a panel order requesting further facts and evidence relating to any enhanced distinctiveness of BARCAP and the likelihood of association of the word “nykconnect” with the Complainant. However, in the specific circumstances, noting also that the Complainant is represented by legal counsel and is experienced in UDRP proceedings as is evidenced by earlier cases filed by the Complainant, absent exceptional circumstances and considering that the expedited UDRP is typically meant to operate on a single round of pleadings and evidence, the Panel ultimately decided against issuing such an order calling for further evidence in this case.
It seems to the Panel highly unlikely that any Internet user would look for the services of the Complainant by typing the disputed domain name, nor is it obvious that the disputed domain name would be a natural domain name of the Complainant.
For these reasons, the Panel concludes that the addition of the words “nyk” and “connect” do change the overall impression of the disputed domain name and do serve to distinguish the disputed domain name from the Complainant’s marks. Considering all these elements, the Panel concludes that the disputed domain name is neither identical nor confusingly similar to the Complainant’s BARCLAYS, BARCAP or BARCLAYS CAPITAL marks.
In this Panel’s view, the Complainant has not proven that the disputed domain name is identical or confusingly similar to the Complainant’s trademark that is present in this case.
In view of the above, the Panel holds that the Complainant has not satisfied the requirement of paragraph 4(a)(i) of the Policy.
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.
In light of the foregoing finding, it is unnecessary for the Panel to consider this aspect of the Complaint.
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the Respondent registered and used the disputed domain name in bad faith.
As the Complainant has failed to establish confusing similarity under paragraph 4(a)(i) of the Policy, it is not necessary for the Panel to consider this aspect of the Complaint.
The present UDRP Decision is issued by the Panel on the basis of the provided record only, and the administrative outcome under the Policy in this case in no way precludes either party from pursuing such options as may be available against the other in respect of the disputed domain name via the courts in regular procedure, should either wish to pursue such cause.
Based on its consideration on the information provided and on its findings of facts as presented in the Complaint material provided in this proceeding, the Panel concludes that the Complainant has not established its case. The Complaint is therefore denied.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: April 27, 2012