WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. Guowei Hai Gui

Case No. D2010-1991

1. The Parties

The Complainant is Barclays Bank PLC of London, the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, the United Kingdom.

The Respondent is Guowei Hai Gui of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <barclaysresidential.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

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 the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010.

The Center appointed James Bridgeman as the sole panelist in this matter on December 28, 2010. 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 services and has provided evidence that it has traded as Barclays PLC since 1985 (Company number 00048839), prior to which it has traded through its predecessors in title as Barclays Bank Limited and Barclay & Company Limited since 1896.

The Complainant is the registered owner of a large portfolio of United Kingdom registered trademarks and CTM registrations consisting of or incorporating the word “Barclays” as a dominant element in various classes, including United Kingdom trademark registration number 1314306, BARCLAYS filed on June 24, 1987 in class 36 and CTM registration number 55236, BARCLAYS, registered on January 26, 1999 in classes 9, 16, 35, 36, 42.

According to the WhoIs print-outs supplied with the Complaint, the gTLD domain name <barclays.com> owned by the Complainant was created on November 23, 1993 and the ccTLD <barclays.co.uk> owned by the Complainant was registered before August 1996.

In the absence of a Response, there is no information available about the Respondent except for that furnished in the Complaint and the registration details in the WhoIs.

The disputed domain name was created on August 13, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the disputed domain name be transferred to the Complainant.

The Complainant submits that it has carried on a banking business since 1896 having formerly traded as Barclays Bank Limited and Barclay & Company Limited and has built an extensive international business in Europe, the Americas, Africa and Asia. The Complainant claims to currently operate in over 50 countries and to employ approximately 144,000 people with more than 48 million customers and clients worldwide.

The Complainant submits that it has received several awards including in 2009 the Lender of the Year during the Bankhall Annual Conference in London; the Best Leadership Team in Global Private Banking accolade at the Global Private Banking Awards in Geneva; the Best Credit Card Provider (Standard Rate) at the Moneyfacts Awards 2009; Best Local Bank in the United Kingdom at the Euromoney Private Banking Awards; and in 2008 the Complainant was awarded the Business Superbrands status in recognition of quality, reliability and distinction by the Business Superbrands Council and individual business professionals.

The Complainant submits that it has rights in the BARCLAYS trade mark and service mark through its abovementioned portfolio of registered trademarks incorporating the BARCLAYS name and at common law through long use in the financial services industry for over 114 years. In support of its claim to such rights the Complainant has furnished details of the abovementioned large portfolio of UK registered trade marks and CTM registrations incorporating the name BARCLAYS in a range of classes including in relation to financial services.

The Complainant submits that through its long use of the name BARCLAYS in the banking industry over the last 114 years the Complainant has acquired goodwill and a significant reputation in the areas in which it specialises. As such, the name BARCLAYS has become a distinctive identifier associated with the Complainant and the services it provides.

The Complainant submits that the goodwill associated with the name BARCLAYS is the property of the Complainant and cannot pass to any third party without a formal assignation. No such assignation in favour of the Respondent has taken place.

Furthermore the Complainant submits that it is the registrant of the above referenced Internet domains <barclays.co.uk> and <barclays.com> which are used by the Complainant to promote and offer its banking and financial related goods and services on the Internet.

The Complainant submits that the disputed domain name is identical or confusingly similar to the BARCLAYS trade mark and service mark in which the Complainant has rights.

The Complainant submits that the disputed domain name <barclaysresidential.com> contains the word “Barclays” which is identical and therefore confusingly similar to the Complainant’s BARCLAYS name and mark.

The Complainant submits that given the worldwide fame, reputation and notoriety of the name BARCLAYS, no trader would choose the disputed domain <barclaysresidential.com> unless with the intention 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 Respondent.

The Complainant further submits that the addition of the generic word “residential” does not avoid confusion or distinguish the disputed domain name <barclaysresidential.com> from the name BARCLAYS in which the Complainant has rights. The Complainant argues that in fact, because the Complainant operates business named Barclays Wealth, Capital and Barclays Corporate the term “residential” could be taken to relate to residential mortgages. The Complainant argues that it is foreseeable that “Barclays Residential” could be perceived as a residential mortgage division of the Complainant’s business, the addition of “residential” is therefore more likely to increase confusion, citing the decision of the panel in Quixtar Investments, Inc v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant submits that the disputed domain name is being used as the address for a pay-per-click website that displays finance related sponsored links, including online banking, mortgages and loans, all of which relate to products and services in competition with those of the Complainant. The Complainant submits that the disputed domain name is being used to redirect Internet traffic intended for the Complainant away from the Complainant and to the products and services of competitors, with an intention to generate income for the Respondent. The Complainant further submits that the Respondent has registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. The content on the website at the disputed domain name is tailored to match the Complainant’s core goods and services. This means that when Internet users view the content displayed at the website to which the disputed domain name resolves and click one of the sponsored links on the website the Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAYS in the disputed domain name.

In support of its argument that the Respondent has no rights or legitimate interest in the disputed domain name, the Complainant points out that the Respondent is not known by the disputed domain name. Furthermore the Complainant submits that the use of the disputed domain name to generate pay-per-click income from sponsored links which relate to competing financial services does not qualify as noncommercial or fair use for the purpose of the Policy.

The Complainant further points out that the Respondent has never asked for, and has never been given, any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade marks.

The Complainant submits that the disputed domain name was registered and is being used in bad faith.

On August 27, 2010 the Complainant’s agent sent a cease and desist letter to the Respondent in relation to the registration and use of the disputed domain name, advising the Respondent of the Complainant’s registered trade marks in the name BARCLAYS and requesting that the disputed domain name to be transferred to the Complainant. A copy of said letter has been furnished in an annex to the Complaint. The Respondent failed to respond so further letters were sent on September 10, 2010 and September 24, 2010 requesting a response. The Respondent failed to respond to these further letters either.

Despite the correspondence from the Complainant’s representative, the content on the website to which the disputed domain name resolves remained unchanged. The Complainant submits that given the widespread use, reputation and notoriety of the famous BARCLAYS mark the Respondent must have been aware that in registering the disputed domain name he was misappropriating the valuable intellectual property of the Complainant in the BARCLAYS trade mark.

The Complainant submits that it is reasonably anticipated that the Respondent’s use of the disputed domain name will divert potential custom from the Complainant’s business due to the presence of links to competitor websites on the content displayed on the website to which the disputed domain name resolves.

The Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trade marks in breach of paragraph 4(b)(iv) of the Policy.

The Complainant further submits that the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public will always assume that there is an association between the Respondent and the Complainant and/or between the Respondent and the Complainant’s BARCLAYS trade marks.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:

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

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has furnished evidence of its rights in the trade mark and service mark BARCLAYS through a substantial portfolio of trade mark registrations and the goodwill established through long use of the mark in a worldwide trade in banking and financial services.

The disputed domain name <barclaysresidential.com> consists of the distinctive element “barclays” and the descriptive element “residential”. For the purposes of comparison it is well established among panels that the gTLD extension “.com” may be ignored.

This Panel finds that the disputed domain name is confusingly similar to the BARCLAYS trade mark in which the Complainant has rights. The dominant element of the disputed domain name is the word “barclays” that is identical to the Complainant’s trade mark. The addition of the descriptive word “residential” does not serve to distinguish the disputed domain name from the Complainant’s mark and in fact the additional word “residential” may even serve to add to the confusion as the Complainant has argued.

The Complainant has therefore succeeded in establishing the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

It is well established that in complaints brought under the Policy once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in the disputed domain name the burden of proof shifts to the respondent to establish that it has such rights or interest.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. In the absence of a Response that has not been refuted.

It appears from the evidence before this Panel that the Respondent has registered and is using the disputed domain name as the address of a website that consists primarily of links to competing financial services providers and is designed to generate pay-per-click income from visitors to the Respondent’s website selecting those links and clicking through.

There is no evidence of any connection between the Respondent and the Complainant, the Complainant’s BARCLAYS name or trademark or the Complainant’s business.

On the evidence the Respondent has registered the disputed domain name and caused it to resolve to a website, taking advantage of the Complainant’s goodwill in the BARCLAYS name and mark to offer products and services in competition with the Complainant. Such use cannot be legitimate.

In the circumstances this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name and the Respondent has failed to discharge the shifted burden of proof to establish such rights.

The Complainant has therefore succeeded in establishing the second element of the test in paragraph 4 of the Policy also.

C. Registered and Used in Bad Faith

The Complainant’s trade mark BARCLAYS is distinctive. The Complainant has furnished evidence of a long history of its use in banking and financial services since 1896 and a global reputation and goodwill in the world-wide use of the trade mark.

On the balance of probabilities this Panel finds that the Respondent has registered and is using the confusingly similar domain name <barclaysresidential.com> specifically for the purpose of taking predatory advantage of the Complainant’s goodwill and reputation in the BARCLAYS trade mark in order to attract Internet users to the Respondent’s website so as to generate pay-per-click income by providing links to competing products and services in the financial services industry.

This Panel further finds that on the balance of probabilities the Respondent was aware of the Complainant’s reputation when the disputed domain name was chosen and in fact the disputed domain name was specifically created with the intention of using the Complainant’s name and mark to confuse and attract Internet users. This Panel finds that it is improbable that the registrant of the disputed domain name was not aware of the Complainant’s long established world-wide reputation in the use of the BARCLAYS name and mark when the disputed domain name was selected and registered. It is also improbable that the registrant of the disputed domain name was not aware that the Complainant had an established Internet presence and had registered the domain names <barclays.co.uk> and <barclays.com> prior to the date on which the disputed domain name was created. It is also improbable that the registrant of the disputed domain name would not have become aware of the Complainant’s registrations when the disputed domain name was being registered.

The fact that the content of the Respondent’s website contains content and links aimed specifically at the financial services industry allows this Panel to find on the balance of probabilities that the Respondent has specifically targeted the Complainant’s reputation and goodwill and has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BARCLAYS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

This Panel finds therefore on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <barclaysresidential.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: January 11, 2011