The Complainant is Barclays Bank PLC of London, United Kingdom of great Britain and Northern Ireland (the “United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is InvestHead Ltd of Tel Aviv, Israel.
The disputed domain name <barclaysshares.net> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2011, GoDaddy.com, Inc. 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 September 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2011. After notification of Respondent’s default two emails were received from the Respondent regarding possible settlement. On October 26, 2011 the Center issued an email requesting; “the Complainant confirm whether the proceedings shall be suspended for the parties to reach a settlement or whether the Center shall proceed with panel appointment”. No response was received and the Center proceeded with panel appointment.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 4, 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 disputed domain name was registered July 5, 2010.
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 with an extensive international presence in Europe, the Americas, Africa and Asia. Currently the Complainant operates in over 50 countries, employs approximately 144 000 people and has got more than 48 million customers and clients worldwide.
The Complainant has traded as Barclays PLC since 1985 and under different names including the name “Barclay” since 1896. The Complainant is the owner of a variety of UK and Community registered trade marks in classes related to financial services with the names BARCLAY and BARCLAYS. Through the use of the name BARCLAYS the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. The name “Barclays” has become a distinctive identifier associated with the Complainant and the services it provides. In addition to the registered trade marks, the Complainant has common law rights to BARCLAYS. The Complainant is the registrant of a portfolio of domain names including <barclays.co.uk> and <barclays.com>. These domain names are used to promote and offer the Complainants banking and financial related goods and services.
The disputed domain name contains the name “Barclays”. The Respondent is not known by the disputed domain name, nor is it making a legitimate noncommercial or fair use of it. The Respondent has not been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark. The addition of the generic word “shares” does not avoid confusion with the Complainant’s trade mark, but rather increases the likelihood of confusion since the Complainant’s core services are banking and finance related.
The Respondent’s registration has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks contrary to paragraph 4(b)(iv) of the Policy.
Given the worldwide fame, reputation and notoriety of BARCLAYS, no trader would choose the disputed domain name 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 Respondent. The Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. Further, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the Complainant. The Respondent will never be able to use the disputed domain name for a legitimate purpose as the notoriety of BARCLAYS is such that members of the public always will assume that there is an association between the Respondent and the Complainant and/or between the Respondent and the BARCLAYS trade mark.
Previously, the disputed domain name was being used as a holding page and contained a number of finance related sponsored links, which related to products and services offered by Complainant’s competitors. The Internet traffic was redirected to the Complainant’s competitors with the intention to generate income for the Respondent. After an update of the web site at the disputed domain name it now contains general information on shares together with finance related sponsored links. When Internet users view the content of the web site and click on a sponsored link the Respondent generates revenue directly from the initial interest arising from the use of the name BARCLAYS. The disputed domain name will divert potential customs from the Complainant’s business due to the links to competitor’s web sites.
During 2010 and 2011 the Complainant’s agent contacted the Respondent on several occasions asking for the transfer of the disputed domain name. On September 15, 2010, the Respondent sent an email advising that he was willing to transfer the disputed domain name to the Complainant. The following four emails sent by the Complainant’s agent asking for the transfer was not answered and the transfer was not made.
A part from the two informal emails received, the Respondent did not reply to the Complainant’s contentions.
The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Complainant has relied on UK and Community trade mark registrations of the BARCLAYS trade mark together with common law rights. The Complainant’s schedule of trade marks submitted in this case shows that the Complainant owns more than fifty UK and Community registered trade marks containing the words BARCLAY and/or BARCLAYS. These registrations have been made between October 1, 1986 and May 10, 2010. The Panel finds that the submitted schedule containing several trade mark registrations in the European union is sufficient to establish rights in the mark BARCLAYS within the meaning of Policy paragraph 4(a)(i).
In accordance with the consensus view, the Panel does not regard the top-level suffix “.net” when deciding if the disputed domain name is identical or confusingly similar to Complainant’s trade mark. In accordance with this, the disputed domain name and the BARCLAYS trade mark only differ by the generic word “shares”. The Panel finds that the incorporated BARCLAYS trade mark constitutes the most distinctive element of the domain name and that the addition of the generic word to the trade mark in the disputed domain name is insufficient to avoid a finding of confusing similarity under the first element of the UDRP (See Lime Wire LLC v. David Da Silva/Contractprivacy.com, WIPO Case No. D2007-1168).
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to Complainant’s BARCLAYS trade mark in the meaning of Policy paragraph 4(a)(i) and the first element of the Policy is thus fulfilled.
The Complainant must make a prima facie case that the Respondent lacks right and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii) and then the burden shifts to the Respondent to prove its rights or legitimate interest.
The Complainant has stated that there are no business relations between the Complainant and the Respondent. Further, the print outs from web site linked to the disputed domain name prove that it contains financial information and links to the Complainant’s competitors.
The Panel finds, based on the submitted WhoIs information on record, that the Respondent is not commonly known by the disputed domain name. Also, there are no indications that the Respondent is making a legitimate noncommercial or fair use of the domain name.
In the light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.
As to what is relevant in this case, Policy paragraph 4(b) states that the following circumstances, in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 the 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 its 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 its web site or location or of a product or service on its web site or location.
The Complainant has stated that the Respondent has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade mark contrary to paragraph 4(b)(ii) of the Policy. The criteria of paragraph 4(b)(ii) are cumulative. Although the Complainant is prevented to reflect its trade mark BARCLAYS through the registration of the disputed domain name, no evidence submitted shows a previous pattern of the conduct by the Respondent. In fact, the Panel cannot find the Respondent in other WIPO disputes. Therefore, the Panel finds that paragraph 4(b)(ii) is not applicable in this case.
However, the Panel finds the fact that the registration of the disputed domain name was made after the trade mark registrations and the Complainant’s established common law rights of the name BARCLAYS as an indication of bad faith. Also, the Panel finds it highly improbable that the Respondent has selected arbitrarily the domain name’s word combination without having prior knowledge of the Complainant’s rights and business. In accordance therewith, it is the Panel’s firm view that the Respondent has registered the disputed domain names in awareness of the Complainant’s rights.
By the print outs from web site linked to the disputed domain name it is proven that the Respondent is using the domain name to present financial information and provide links to Complainant’s competitors. The Panel finds that the Respondent’s registration and use of the domain name has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of its web sites.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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, <barclaysshares.net> be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Dated: November 17, 2011