The Complainant is Barclays Bank PLC, London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland (the “UK”).
The Respondent is collins nana joe, Accra, Ghana / Privacy Protect.org, Domain Admin, Queensland, Australia.
The disputed domain name <barclaysgain-funds.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 19, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 22, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center 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 April 24, 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 amendment to the Complaint on May 4, 2012.
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 May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2012.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on June 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.
The Complainant in these proceedings is Barclays Bank PLC, a company organized under the laws of the UK. The Complainant has a worldwide reputation in, inter alia, retail banking, credit cards, corporate banking, investment banking, wealth management and investment management services, with an international presence in Europe, the Americas, Africa and Asia according also to its uncontested allegations.
The Complainant is the owner of many UK registered trademarks containing or consisting of the name BARCLAYS in many classes including financial services. Such trademarks are, for example:
- BARCLAY / BARCLAYS (Series of 2) No. 1286579, registered on September 1, 1986, in class 36.
- BARCLAYBANK No. 1336098, registered on February 19, 1988, in class 36.
- BARCLAYS and eagle device, No. 2486139 , registered on October 10, 2008, in classes 9 and 36.
Further the Complainant is the owner of many Community trademarks such as:
- BARCLAYCARD No. 55277, registered on January 26, 1999, in classes 9, 16, 36 and 42.
- BARCLAYS No. 2315554, registered on February 13, 2003, in classes 9, 16, 35, 36, 38, 42.
In addition to these trademarks, the Complainant is the owner of several domain names incorporating the trademark BARCLAYS, according to his uncontested allegations and proof submitted, such as:
“www.barclays.co.uk”registered prior to August 1996 and “www.barclays.com” registered on November 23, 1993.
The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.
The disputed domain name ‘barclaysgain-funds.com’ was registered by the Respondent on October 31, 2011. The disputed domain name resolves to a website that offers multiple investment plans in competition with those products and services offered by the Complainant.
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
The Complainant has presented sufficient evidence that it owns the rights in the trademark BARCLAYS. He is also the owner of the domain names “www.barclays.co.uk”, “www.barclays.com” and numerous others.
The mere fact that the Respondent has added to the mark BARCLAYS the words gain and funds and the suffix “com” does not affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and in the circumstances of this case is by itself sufficient to establish criterion of identity or confusing similarity for purposes of the Policy, as many Panels have found in the past, see e.g. Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Limited WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir, Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <barclaysgain-funds.com> is identical or confusingly similar to the Complainant’s trademark BARCLAYS.
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services.
(II) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Further the Respondent does not seem to have any trademark registrations including the word BARCLAYS.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in order to attract, for commercial gain, internet users to the website, by creating a likelihood of confusion with the Complainant’ s trademarks, according also to the uncontested allegations of the Complainant.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be reinforced through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name, that is identical or confusingly similar to the Complainant’s BARCLAYS trademark. Rather, it seems to this Panel more likely that such registration and use would be motivated by hoped-for capitalization, i.e commercial gain from the Complainant’s reputation , as mentioned above.
As a consequence to the above, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <barclaysgain-funds.com> be transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Dated: June 15, 2012