Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
Respondent is Zhongshan Banks Electric Marketing Co. Ltd (中山市比克斯电器营销有限公司) of Zhongshan, Guangdong, China.
The disputed domain name <barclaystec.com> (the “Domain Name”) is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 1, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 1, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 2, 2011, Complainant confirmed its request that English be the language of proceeding. On November 29, 2011, prior to the Center’s email regarding the language of proceedings, the Center received an email communication in Chinese from Respondent, however, Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. Apart from its email communication of November 29, 2011, Respondent did not submit any response. Accordingly, the Center notified the Parties that no further communication had been received from Respondent.
The Center appointed Yijun Tian as the sole panelist in this matter on January 13, 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.
Complainant, Barclays Bank PLC, is a company incorporated in London, United Kingdom of Great Britain and Northern Ireland (U.K.). It is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services, and it currently operates in over 50 countries and employs approximately 144,000 people.
Complainant is the registered owner of a variety of U.K. registered and Community registered trade marks in the name BARCLAYS in a range of classes including in relation to financial services. (See Annex 4 to the Complaint). The mark BARCLAYS (e.g. mark BARCLAY/BARCLAYS was registered in the U.K. since 1986) was registered long before the registration of the Domain Name (2011). Complainant has also registered numerous domain names incorporating the BARCLAYS marks, such as <barclays.com> (since 1993), and <barclays.co.uk> (since 1996). (See Annex 5 to the Complaint).
Respondent, Zhongshan Banks Electric Marketing Co. Ltd, is a company incorporated in Zhongshan, Guangdong, China. Respondent registered the disputed domain name <barclaystec.com> on May 23, 2011, which is long after Complainant operated web sites with URL which contain the BARCLAYS mark (i.e. <barclays.com> was registered on November 23, 1993).
(a) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights.
Complainant is a major global financial services provider engaged in retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services.
Complainant has traded as Barclays PLC since 1985 (see Annex 3 to the Complaint). Prior to this Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896.
Complainant is the registered proprietor of a variety of U.K. registered and Community registered trade marks in BARCLAYS in a range of classes including in relation to financial services. (see Annex 4 to the Complaint). Through its use of the name BARCLAYS over the last 114 years Complainant has acquired goodwill and a significant reputation in the areas in which it specialises.
The goodwill associated with BARCLAYS is the property of Complainant and cannot pass to any third party without a formal assignation. No such assignation in favour of Respondent has taken place.
The Domain Name contains a word which is identical and therefore confusingly similar to the name BARCLAYS in which the Complainant has common law rights and for which Complainant has registered trade marks.
Given the worldwide fame reputation and notoriety of BARCLAYS, no trader would choose the domain unless with the intention to create a false impression of association with Complainant in order to attract business from Complainant or misleadingly to divert the public from Complainant to Respondent.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
“Respondent registered the Domain Name on May 22, 2011”.
The Domain Name is being used as a duplicate site and displays branded content from Complainant's own website, and is being used to redirect internet traffic away from Complainant's own website.
Respondent is not known by the Domain Name.
Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The content found at the Domain Name is a duplicate of Complainant own websites.
Respondent has never asked for, and has never been given any permission by Complainant to register or use any domain name incorporating Complainant's trade mark.
(c) The Domain Name was registered and is being used in bad faith.
Complainant's agent wrote to Respondent in relation to the Domain Name advising Respondent of Complainant's registered trade marks in BARCLAYS and to ask for the Domain Names to be transferred to Complainant (Annexes 7 and 8 to the Complaint). No response was received from Complainant.
Given the widespread use, reputation and notoriety of the famous BARCLAYS mark, Respondent must have been aware that in registering the Domain Name he was misappropriating the valuable intellectual property of the owner of the BARCLAYS trade marks.
Respondent's registration of the Domain Name has also prevented Complainant from registering a domain name which corresponds to Complainant's trade marks.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant's trade marks.
Respondent will never be capable of using the 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 Respondent and Complainant, and/or between Respondent and the BARCLAYS trade mark.
The Domain Name will divert potential custom from Complainant's business due to the presence of links to competitor websites at the Domain Name.
Respondent did not reply to Complainant’s contentions.
The language of the registration agreement for the Domain Name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant contends that conducting the proceedings in English would not be disadvantageous to Respondent as Respondent has demonstrated an ability to understand and communicate in English. A large part of Respondent’s website is in English. Complainant infers from the use of English on the website together with the selection of an English domain name that Respondent is able to understand and communicate in English.
(b) The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
(c) Complainant is not able to communicate in Chinese and therefore, if Complainant were to submit all documents in Chinese, the administrative proceeding will be unduly delayed and Complainant would have to incur substantial expenses for translation.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) paragraph 4.3 further states:
“[…] in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Centre as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. See also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in the U.K., and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Domain Name includes the term “tec” – abbreviation of “technology” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Name <barclaystec.com> is registered in Latin characters, rather than Chinese script; (b) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (c) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainant is the registered proprietor of a variety of U.K. registered and Community registered trade marks in the name BARCLAYS in a range of classes including in relation to financial services since 1986.
The Domain Name <barclaystec.com> comprises the BARCLAYS mark in its entirety. It only differs from the BARCLAYS marks by the addition of “tec”. The Panel finds that these do not eliminate the similarity between Complainant’s registered BARCLAYS marks and the Domain Name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).
Mere addition of the descriptive term “tec” or a dash as a suffix to Complainant’s mark fails to distinguish. Thus, the Panel finds that the addition is not sufficient to negate the confusing similarity between the Domain Name and the BARCLAYS Marks in which Complainant has rights.
The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Name:
(i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the Domain Name; or
(iii) legitimate noncommercial or fair use of the Domain Name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the BARCLAYS marks in U.K. and European Community. Complainant has traded as Barclays PLC since 1985, and prior to this Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. Complainant currently operates in over 50 countries and employs approximately 144,000 people.
Moreover, according to Complainant, Respondent is not authorized dealer of Barclays-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Name:
(a) There has been no evidence adduced to show that Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Name or reasons to justify the choice of the word “barclays” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BARCLAYS marks or to apply for or use any domain name incorporating the BARCLAYS marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Name. The Domain Name was registered on May 22, 2011, which is long after Complainant operated web sites with URL which contain the BARCLAYS mark (e.g. “www.barclays.com” was registered on November 23, 1993). The Domain Name is identical or confusingly similar to Complainant’s BARCLAYS marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Name in bad faith.
The Panel finds that Complainant has a widespread reputation in the BARCLAYS marks with regard to its products and services. Based on the information provided by Complainant, Complainant has traded as Barclays PLC since 1985, and prior to this Complainant traded as Barclays Bank PLC, Barclays Bank Limited and Barclay & Company Limited since 1896. Complainant currently operates in over 50 countries and employs approximately 144,000 people. Moreover, according to information on Complainant’s website, ‘Barclays entered the Chinese market in the early 1970s and opened its first office in the country in 1981, in the capital city, Beijing. It now also has an office in Shanghai, China.1
It is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Name (in November 2011). The Panel therefore finds that the Domain Name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”
Thus, the Panel concludes that the Domain Name was registered in bad faith with the intent to create an impression of an association with Complainant’s BARCLAYS mark.
Based on the information provided by Complainant, the Domain Name is currently inactive. In terms of inactive domain name, WIPO Overview 2.0, paragraph 3.2 notes:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.
WIPO Overview 2.0, paragraph 3.2 further states:
“The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, 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 currently operates in over 50 countries and employs approximately 144,000 people. Complainant moves, lends, invests and protects money for more than 48 million customers and clients worldwide, including China (as introduced above). Complainant has registered BARCLAYS mark in the U.K. and European Community since 1986. Complainant has registered and uses the domain name <barclays.com> since 1993 (as introduced above). Moreover, Complainant has received several awards including in 2009 the Lender of the Year during the Bankhall Annual Conference in London; and the Best Leadership Team in Global Private Banking accolade at the Global Private Banking Awards in Geneva. Therefore, Complainant’s BARCLAYS marks, arguably, are well-known trademarks. Further, based on the information provided by the Center, no formal response to the Complaint has been filed by Respondent. Therefore, the inactive Domain Name <barclaystec.com> has arguably been used in bad faith also.
In summary, Respondent, by choosing to register and use the Domain Name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Domain Name and the conduct of Respondent as far as the website on to which the Domain Name resolves is indicative of registration and use of the Domain Name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of 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 <barclaystec.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: February 2, 2012
1 http://group.barclays.com/Barclays-worldwide/Country/1225803078097.html.