The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland., represented by Gillian Smullen, Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is “Barclays Bank s.a.”, Alfonso Arias of Madrid, Spain.
The disputed domain name <barclaysespana.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2011, 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 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 18, 2011.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 26, 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 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, it operates in over 50 countries, with approximately 144,000 employees. The Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide. It has traded as Barclays PLC since 1985. Prior to this, the Complainant has traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.
The Complainant 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; the “Best Local Bank in the UK “ 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 is the owner of the following trademarks (the “BARCLAYS trademarks”):
The word trademark BARCLAY/BARCLAYS No.1286579, registered with priority from October 1, 1986 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
The word trademark BARCLAYS No.1314306, registered with priority from June 24, 1987 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
The word trademark BARCLAY/BARCLAYS No.1380658, registered with priority from April 19, 1989 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 35;
The word trademark BARCLAY/BARCLAYS No.1393351, registered with priority from July 27, 1989 for the territory of the United Kingdom of Great Britain and Northern Ireland, for goods in International Class 16;
The word trademark BARCLAYS No. 2461096, registered on January 11, 2008 for the territory of the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36;
The word trademark BARCLAYS No.000055236, registered on January 26, 1999 as a Community trademark for goods and services in International Classes 9, 16, 35, 36 and 42; and
The word trademark BARCLAYS No.002315554, registered on February 13, 2003 as a Community trademark for goods and services in International Classes 9, 16, 35, 36, 38 and 42.
The Complainant is also the registrant of the domain name,<barclays.co.uk>, registered prior to August 1996, and of the domain name <barclays.com>, registered on November 23, 1993. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Domain Name was registered on January 26, 2011.
The Complainant submits that the Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name contains the word “barclays” which is identical to BARCLAYS trademarks.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. It is not known by the Domain Name, and is not making a legitimate noncommercial or fair use of the latter. 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 BARCLAYS trademarks. The goodwill associated with the name “Barclays” is the property of the Complainant and cannot pass to any third party without a formal assignation. At the same time, the Domain Name is linked to a holding page containing a number of finance-related sponsored links which relate to products and services of the Complainant’s competitors.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. Given the widespread use, reputation and notoriety of the BARCLAYS trademarks, the Respondent must have been aware of it in registering the Domain Name, 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 trademarks. When Internet users view the content displayed on the website at the Domain Name and click on one of the sponsored links therein, the Respondent generates revenue directly from the initial interest arising out of the use of the name “Barclays” in the Domain Name. The Complainant also alleges that the Domain Name will divert potential customers from the Complainant's business due to the presence of links of its competitors on the website associated to the Domain Name.
The Complainant's representatives, Pinsent Masons LLP, wrote to the Respondent on March 25, 2011 in relation to the Domain Name, advising that the registration and use of the Domain Name was infringing the Complainant's BARCLAYS trademarks, and therefore, asking the Respondent to transfer the Domain Name to the Complainant. No response was received to this letter or to the Complainant’s further letters of May 6, 2011 and June 21, 2011.
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its Response.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In the present case, the Respondent has chosen not to submit a Response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to decide on the basis of the statements and documents provided by the parties and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The Complainant has provided evidence and has thus established its rights in the word trademark BARCLAYS, registered for the territories of the European Union and of the United Kingdom of Great Britain and Northern Ireland.
It is a common practice under the Policy to disregard the gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is the term “barclaysespana”. The term “barclays” is identical to the Complainant’s trademark, and the word “espana” is a geographic name, meaning “Spain” in the Spanish language. It is likely that the Internet users would regard it as a supplementary element, indicating the location of the business activities to which the Domain Name refers. Therefore, the attention of an average Internet user would be mainly attracted by the term “barclays” in the Domain Name.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, and has provided arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to put forward to the Panel any allegations or documents in its Response despite the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Name, it could have provided it. In particular, the Respondent has failed to provide convincing circumstances and evidence that could demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or legitimate interests in the Domain Name.
Furthermore, the only information available about the Respondent is the publicly available WhoIs information, provided by the Registrar. According to the WhoIs information, the name of the registrant of the Domain Name is “Barclays Bank s.a.”. However, as evident from the case file, the Center has unsuccessfully tried to send the documents for the case to the postal address indicated by the Respondent. It appears that no entity named “Barclays Bank s.a.” exists on the stated mailing address, and indeed, the Respondent has provided no evidence for the existence of such entity. In these circumstances, and noting that banks are strictly regulated and controlled entities, the existence of such entity appears as questionable to the Panel. Therefore, the mere indication of the name “Barclays Bank s.a.” for the purposes of the registration of the Domain Name is not sufficient to accept that Respondent is known by a name similar to the Domain Name.
At the same time, the Domain Name is confusingly similar to the BARCLAYS trademarks of the Complainant. The Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for its registration and use. As submitted by the Complainant and not denied by the Respondent, the Domain Name has been associated to a website which contains links to products and services of the Complainant’s competitors, and this has taken place without the consent of the Complainant. As submitted by the Complainant, when Internet users view the content displayed on the website at the Domain Name and click on one of the sponsored links, the Respondent may generate revenue directly from the initial interest arising out of the use of the name “Barclays” in the Domain Name.
In the Panel’s view, such a conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the Domain Name. Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
For the purposes of Policy, 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:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s BARCLAYS trademarks. As submitted by the Complainant, the website associated to the Domain Name contains links to products and services of the Complainant and of its competitors. This is sufficient for the Panel to decide that at the time of the registration of the Domain Name, Respondent must have been aware of Complainant and of its goodwill. As contended by the Complainant, it may be expected that the Domain Name will divert potential customers from the Complainant's business due to the presence of links to competitor websites on the website associated to the Domain Name.
On the basis of the above, and in the lack of any contrary evidence or even allegation of any actual or contemplated good faith use of the Domain Name, the Panel is prepared to accept that the Respondent has registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of this website.
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 <barclaysespana.com> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Dated: November 11, 2011