The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Transure Enterprise Ltd, Host Master of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <barclayspremierfantasyfootball.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted a request to Above.com, Inc. by email for registrar verification in connection with the disputed domain name. On February 17, 2012, Above.com, Inc. transmitted to the Center by email 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. The Center sent an email communication to the Complainant on February 17, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 20, 2012, additionally naming Transure Enterprise Ltd as Respondent.
The Center verified that the Complaint together with 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 February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2012.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on March 26, 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.
The Panel notes that use of privacy services to mask the identity of domain name registrants is becoming common in the recent past and in such cases it is usual for the Center to confirm who the true owner underlying the registrant is with the Registrar of the disputed domain name (See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886). The Panel further notes that the Registrar has identified “Transure Enterprise Ltd” as the registrant of the disputed domain name and that “Above.com Domain Privacy” is simply a privacy name registration service. Accordingly, and considering the amended Complaint filed by the Complainant, the Panel will treat registrant “Transure Enterprise Ltd ” as the correct Respondent, in line with earlier panel decisions such as Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; Ecoyoga Ltd v. siteleader.com, Siteleader Hosting, WIPO Case No. D2009-1327; Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO Case No. D2008-1179 and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC, WIPO Case No. D2007-0169.
The Complainant is a financial service provider engaged in retail banking, credit card services, corporate banking, investment banking, wealth management and investment management services. Barclays Bank Limited and Barclay and Company have been providing financial services since 1896, and the development of their global business began in the 1920’s. The Complainant itself has traded as Barclays Bank PLC since 1985. The Complaint currently operates in over 50 countries and employs approximately 114,000 people.
The Complainant owns a variety of trademark registrations worldwide containing the element BARCLAYS, among them:
- European Community trademark no. 55236 BARCLAYS (word) filed on April 1, 1996, registered on January 26, 1999, for goods and services in Classes 9, 16, 35, 36, 42, which include in particular financial services and banking services.
- United States trademark no. 3049848 BARCLAYS (word) filed on October 18, 2004, and registered on January 9, 2007.
- United Kingdom trademark no. 1314306 BARCLAYS (word) filed on June 24, 1987, and registered on July 20, 1990.
Further, the Complainant holds registered trademarks concerning the element BARCLAYS PREMIER, among them:
- European Community trademark no. 006514269 BARCLAYS PREMIER (word) filed on November 30, 2007, and registered on June 10, 2010.
- United States trademark no. 3771621 BARCLAYS PREMIER LEAGUE (design and words) filed on November 23, 2007, and registered on January 19, 2010.
- United Kingdom trademark no. 2446264 BARCLAYS PREMIER LEAGUE (word) filed on February 9, 2007, and registered on February 27, 2009.
The Complainant also has registered domain names incorporating BARCLAYS marks, such as <barclays.com> (since 1993) and <barclays.co.uk> (since 1996).
In addition to its registered trademarks and domain names, through the use of the name BARCLAYS over the last 114 years, the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes. As such, the name BARCLAYS and trademark derivatives of the name such as BARCLAYS PREMIER have become distinctive identifiers associated with the Complainant and the services it provides.
The disputed domain name <barclayspremierfantasyfootball.com> was created on August 10, 2011. The disputed domain name is still active and is used as a parking website containing a number of sponsored links which relate to a range of competitor products and services to those offered by the Complainant, as well as to a number of football related sponsored links.
The Complainant sent a cease and desist letter to the Respondent on October 20, 2011. The Respondent did not reply to this letter. The Complainant wrote two other letters on November 11, 2011, and December 6, 2011. The Respondent did not reply to these letters either.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant is of the opinion that the disputed domain name is confusingly similar to the BARCLAYS and BARCLAYS PREMIER trademarks in which it enjoys rights.
In this respect, the addition of the generic words “fantasy” and the word “football” does not dispel the confusion. Given the association the word “football” creates with the well-known BARCLAYS PREMIER LEAGUE mark, which is the primary professional league for associated football clubs in England and Wales sponsored by the Complainant, it is more likely to enhance confusion (see Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138) rather than to distinguish the disputed domain name from the marks BARCLAYS or BARCLAYS PREMIER. Thus, the disputed domain name may evoke the impression that the website is operated or otherwise authorized by the Complainant.
In similar circumstances, panels have consistently recognized that the addition of non-distinctive elements, in this case the words “fantasy” and “football”, is not able to diminish the confusion (see Barclays Bank PLC v. Lafayette Smith, WIPO Case No. D2012-0091; Barclays Bank PLC v. Domain Registrar, WIPO Case No. D2011-2012; Barclays Bank PLC v. Zhongshan Banks Electric Marketing Co. Ltd (中山市比克斯电器营销有限公司), WIPO Case No. D2011-2014).
(2) Further, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As regards this second element, the Complainant contends that the Respondent is not commonly known by the disputed domain name <barclayspremierfantasyfootball.com> and is not licensed or otherwise authorized to register or use the Complainant’s BARCLAYS mark or trademark derivatives of this mark such as BARCLAYS PREMIER.
Furthermore, it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content found at the website to which the disputed domain name resolves is “pay-per-click” sponsored links which relate to financial services. This use of the website designed to obtaining revenue from such links to take unfair monetary advantage from the Complainant’s trademarks, is not a bona fide use of the disputed domain name.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.
Given the widespread use of the famous BARCLAYS mark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of the BARCLAYS trademark and brandextensions such as BARCLAYS PREMIER.
The Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s trademark contrary to paragraph 4(b)(ii).
Furthermore, the Complainant is of the opinion, that the Respondent has registered the disputed domain name solely for commercial gain, in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to endorsement or affiliation in breach of paragraph 4(b)(iv) of the Policy. The purpose behind the registration of the disputed domain name was to exploit Internet traffic destined to the Complainant by diverting potential customers from the Complainant’s business by the presence of links to competitor websites in the content of the website to which the disputed domain name resolves. This use of the disputed domain name enables the Respondent to reap financial benefit and disturb the business of the Complainant. The Respondent need not be a direct competitor of the Complainant, it is sufficient that the use of the disputed domain name provides means for Internet users to access links to businesses that rival the Complainant.
When considering the reputation and notoriety of the BARCLAYS trademarks throughout the world and the nature of the Respondent’s website, the only reason why the Respondent could have wanted to register and use the disputed domain name was that it had actual knowledge of this mark at the time of registration and wanted to use it to profit from the Complainant’s mark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In the following, the Panel will discuss in consecutive order whether each of these requirements are met.
The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark BARCLAYS and BARCLAYS PREMIER which predate the creation date of the disputed domain name. The disputed domain name consists of the term “barclayspremierfantasyfootball” and the generic Top Level Domain “.com”, of which the latter can be disregarded under the confusing similarity test.
The disputed domain name contains the Complainant’s trademarks BARCLAYS and BARCLAYS PREMIER in their entirety and differs from the trademarks by the addition of the words “fantasy” and “football”.
The additional words “fantasy” and “football” do not dispel confusion. On the contrary, the word “football” even enhances the likely confusion. The English primary professional league for associated football clubs is called “Barclays Premier League”. Even though, it is unlikely, that information on this league would be looked for by the Internet user by typing in “barclayspremierfantasyfootball.com”, Internet users may use “barclays” or “barclays premier” or “barclays premier league” as search terms on Google, and by the automatisms of search engines the disputed domain name could appear. The user may either be lead to visit the parking page since he believes, due to the identity of key parts of the disputed domain with the trademarks of the Complainant this is the proper, or may be potentially attracted out of curiosity by the addition of the word “fantasy” which as such is unrelated to “football”. Thus, the visitors of the parking page at <barclayspremierfantasyfootball.com> may have actually wanted to access information about this football league and its sponsor Barclays. Also, it is not excluded that the disputed domain name could easily be a domain name of the Complainant himself.
As already ruled by numerous UDRP panels, the addition of generic or descriptive words like “football” is insufficient in itself to avoid a finding of confusing similarity (see Credit Lyonnais v. Jehovah Technologies Pte LTD, WIPO Case No. D2000-1425; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314). As for the term “fantasy”, which as such does not have any particular meaning in the area of football, its effect is outbalanced by the weight that the well-known marks BARCLAYS, BARCLAYS PREMIER and BARCLAYS PREMIER LEAGUE carry. Even if the user would not actively type in “barclayspremierfantasyfootball”, still the use of “barclays” or “barclays premier” as search terms in a search engine tool may lead the user to the disputed domain name, which is a mentionable aspect when arguing about confusing similarity as already pointed out in other decisions (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259.
For these reasons, the Panel concludes that the addition of the words “fantasy” and “football” does not change the overall impression of the disputed domain name as being dominated by the distinctive trademark BARCLAYS and the trademark derivative BARCLAYS PREMIER, so that the words “fantasy” and “football do not serve to distinguish the disputed domain name from the Complainant’s marks.
Hence, the disputed domain name is confusingly similar to the Complainant’s trademarks BARCLAYS and BARCLAYS PREMIER. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant. Therefore, many Internet users may assume that the disputed domain name refers to a website of or authorized by the Complainant.
In view of the above, the Panel holds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of proof is on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.
Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain.
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the domain name in bad faith.
Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:
- circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name;
- the registrant 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 registrant has engaged in a pattern of such conduct;
- the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;
- by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant has brought evidence that its trademarks are known by more than 48 million customers and clients worldwide, which has not been contested by the Respondent, and is credible due in particular with regard to the international trademark ranking submitted by the Complainant in Annex 4 to the Complaint. Thus, the Panel accepts the Complainant’s contention that the trademark BARCLAYS and trademark derivatives such as BARCLAYS PREMIER can be considered well known for the purposes of this proceeding and has been before the registration of the disputed domain name so that it is inconceivable that the Respondent had not known of the Complainant’s trademark upon registration of the disputed domain name.
Further, the Complainant has brought forward considerable evidence that the Respondent is using the disputed domain name in order to attract Internet users looking for the Complainant’s website to its own website by creating a likelihood of confusion with the Complainant’s BARCLAYS and BARCLAYS PREMIER marks as to the source, sponsorship, affiliation or endorsement of its website for the purposes of monetary gain. The Respondent’s website is a typical parking website, providing links to the websites of the Complainant’s competitors and generating revenues by means of a “pay-per-view” mechanism. The Panel concludes that the Respondent deliberately registered the disputed domain name with the Complainant’s mark in mind, seeking to derive “pay-per-click” revenue from Internet users looking for the Complainant’s website.
In similar circumstances, panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate “pay-per-click” sites, will be considered to be evidence of bad faith (see Credit Industriel et Commercial S.A. v. Richard J., WIPO Case No. D2005-0569; Société Air France v. Bing G Glu, WIPO Case No. D2006-0834; and Société Air France v. WWW Enterprise Inc. (173206), WIPO Case No. D2005-1160), regardless of whether it becomes apparent to the Internet user when having arrived at the “pay-per-click” site, that the website is not necessarily connected with the trademark owner (see Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). At that point, the domain name has already served its purpose to attract the Internet user and generate commercial gain.
For all of the above, the Panel finds that the disputed domain has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <barclayspremierfantasyfootball.com> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: March 28, 2012