Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors of United Kingdom of Great Britain and Northern Ireland.
Respondents are Rampe Purda of Hailuoto, Finland and Privacy--Protect.org of Shanghai, the People’s Republic of China.
The disputed domain name <barclaysonline.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD/ aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD/ dba HebeiDomains.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD/aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD/dba HebeiDomains.com a request for registrar verification in connection with the disputed domain name. On November 19, 2010, Hebei Guoji Maoyi (Shanghai) LTD/aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD/dba HebeiDomains.com. 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.1 The Center sent an email communication to the Complainant on November 26, 2010 providing the registrant and contact information disclosed by the Registrar2, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2010.
The Center verified that 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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 10, 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 Complainant requested that the language of these proceedings should be English, notwithstanding the fact that the language of the registration agreement is Finnish. The Panel refers to previous UDRP decisions to which the Respondent was a party, notably The RueDuCommerce Company v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-1632. This Panel concurs with the opinions articulated in that decision, and, accordingly decides that the language of these proceedings should, as requested by the Complainant, be English.
Complainant Barclays Bank PLC is a major global financial services provider engaged in retail banking, credit cards, corporate and investment banking, wealth management and investment management services. Complainant currently operates in over 50 countries and moves, lends, invests, and protects money for more than 48 million customers and clients worldwide.
Complainant owns a number of United Kingdom and European Union registrations that incorporate, in whole or in part, the mark BARCLAYS for use in a range of classes, including financial services. See Complaint, Annex 4. The BARCLAYS mark has been used by Complainant for the last 114 years. Complainant also owns a number of domain name registrations, including <barclays.co.uk> and <barclays.com>. See Complaint, Annex 5.
The disputed domain name, <barclaysonline.com>, was registered on July 4, 2010. See Complaint, Annex 6. The domain name is being used as a holding page containing a number of finance-related pay per click sponsored links which relate to products and services offered by competitors of Complainant.
Complainant’s counsel sent “cease and desist” letters to the apparent previous domain name registrant, Isaac Goldstein, on August 27, September 10 and September 29, 2010, seeking transfer of the domain name. See Complaint, Annexes 7 and 8. No response to any of these letters was received.
Complainant asserts that the disputed domain name contains a word that is identical and, therefore, confusingly similar to the BARCLAYS mark, in which Complainant has common law rights and for which Complainant has registered trademarks.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name. Complainant indicates that the content found at the disputed site is pay per click sponsored links which relate to financial services and maintains that “[s]uch activity does not qualify as noncommercial or fair use.” Complainant also maintains that Respondent has never asked for, or been given, permission by Complainant to register or use any domain name incorporating Complainant’s BARCLAYS mark.
With respect to the issue of “bad faith” registration and use, Complainant contends that “[i]t is reasonably anticipated that Isaac Goldstein used the Privacy Protect Service in order to shield his identity. It is reasonably anticipated that the [Respondents] are the same individual and that Isaac Goldstein transferred the Domain Name to [Respondent Rampe Purda] in order to circumvent the complaint made in correspondence by the Complainant.”
Complainant also points out that Isaac Goldstein is the registrant of 4,766 other domain names, that Goldstein has been the named respondent in three other UDRP decisions, and that Respondent Rampe Purda has been the named respondent in eight reported UDRP proceedings, all of which resulted in a transfer order. “This is highly suggestive that [Purda] is a professional domainer.”
Complainant contends that, given the widespread use, reputation, and notoriety of the BARCLAYS mark, Respondents must have been aware that, in registering the disputed domain name, they were misappropriating the valuable intellectual property of the owner of the BARCLAYS mark.
Complainant asserts that Respondents have intentionally attempted to attract, for commercial gain, internet users to the disputed website by creating a likelihood of confusion with Complainant’s BARCLAYS mark, in violation of paragraph 4(b)(iv) of the Policy.
Respondent did not reply to the Complainant’s contentions.
The Panel finds that the disputed domain name, <barclaysonline.com>, is confusingly similar to the BARLCAYS mark. The addition of the descriptive term “online” and of the generic top-level domain “.com” does not avoid a determination of confusing similarity. The term “BARCLAYS” clearly is the most distinctive component of the domain name, and such term is identical to the BARCLAYS mark.
The evidence also establishes that Complainant has rights in the BARCLAYS mark. The evidence indicates that Complainant owns a number of registrations for the BARCLAYS mark and has used such mark for over 100 years.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
The Panel concludes that Complainant has met its burden of proof in establishing that Respondents have no rights or legitimate interests in the disputed domain name. The use of the domain name in connection with a pay per click site does not constitute bona fide use of a domain name. Nor does it constitute either noncommercial or fair use of the domain name. It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests. See, e.g., Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010-1185; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
The Panel holds that the disputed domain name was registered and is being used in bad faith. The evidence establishes that Respondents are using the domain name in an intentional attempt to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant’s BARCLAYS mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products or services on such site, within the meaning of paragraph 4(b)(iv) of the Policy. As noted and found above, Respondents are using the <barclaysonline.com> domain name in connection with a pay per click site that provides sponsored links to financial services offered by Complainant’s competitors and the disputed domain name is confusingly similar to the BARLCAYS mark. As such, Internet users are likely to believe that Respondents’ site and the services offered at such site are owned and/or sponsored by Complainant.
Further evidence of the requisite bad faith is found in the fact that Complainant’s counsel’s letters were never answered, the circumstances surrounding the transfer of the domain name registration from Goldstein to Respondent Rampe Purda, Goldstein’s ownership of thousands of domain names, and the history relating to earlier UDRP decisions relating to Respondent Rampe Purda.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <barclaysonline.com> be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: January 24, 2011
1 The original Complaint named Privacy-Protect.org as the sole Respondent.
2 The Registrar indicated that the registrant of the disputed domain name is Rampe Purda.