The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Whois Privacy Protection Service, Inc., Whois Agent of Washington, United States of America / Domain Privacy, Domain Privacy of Fareham, United Kingdom.
The disputed domain name <offshore-barclaysuk.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 20, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom 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, namely an entity by the name of Domain Privacy of Fareham in the United Kingdom. The Center sent an email communication to the Complainant on April 30, 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 May 1, 2012.
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 May 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2012.
The Center appointed William P. Knight as the sole panelist in this matter on June 6, 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 is an English financial services provider with worldwide operations through its subsidiaries. It is the owner of numerous registered trademarks prominently including the word Barclays in respect of financial services around the world. It and its predecessors in title have operated under the name Barclays for over one hundred years. The Complainant has many domain names, including domain names and sub-domain names designed to attract Internet users interested in international banking services, including <offshore.barclays.com> and <expat.barclays.com>, and also maintains Google AdWords such as “Offshore Barclays” which direct the Internet searcher to <barclayswealth.com/international>.
The Respondent is a well-known domain name privacy service provider based in the State of Washington, in the United States whose client, as disclosed by it, appears to be another privacy service provider of Fareham in the United Kingdom.
The disputed domain name was created on August 3, 2011.
The Complainant asserts that the disputed domain name is confusingly similar to its registered trademarks BARCLAYS and that the Respondent has no demonstrable legitimate interest in it. The Complainant argues that the acquiring of the disputed domain name by the Respondent in the face of the worldwide reputation of its name and registered trademarks and its use as a parking page which attracts Internet users to financial service providers other than the Complainant or any of its subsidiaries must be regarded as registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain name in order to justify its request for transfer:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
It is clear to the Panel that BARCLAYS is the prominent component of the disputed domain name. The addition of the prefix “offshore-“ and the suffix “uk” does nothing to dispel the obvious connection between the disputed domain and the Complainant’s principal trademark and, indeed, given the business of the Complainant in offering financial services to expatriates from any country, only serves to reinforce the confusion that may be created. This is even more clearly so having regard to the Complainant’s own use of sub-domain names and Google Adwords, so that it is quite likely that an Internet user will be initially drawn to the Respondent’s parking page by mistyping “offshore-barclaysuk” instead of “offshore.barclays”. Similarly, the addition of the generic top level domain suffix “.com” does nothing to distinguish the disputed domain name.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Respondent or, in fact, each Respondent, is a domain name privacy services supplier, with no apparent connection of any kind in the name Barclays. Whoever may be the underlying controller of the disputed domain name in fact, no explanation of any kind has been provided which may justify the registration of a domain name so similar to the marks of the Complainant.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the disputed domain name has been registered and used in bad faith.
So far as concerns the first limb of this requirement, registration in bad faith, since this is a case in which:
(a) the Respondent registered the disputed domain name in circumstances where it must have been aware of the pre-existing rights of the Complainant;
(b) there is virtually no commercial use which could be made of the disputed domain name which would not be illegitimate, such as an infringement of the legal rights of the Complainant, and be misleading and deceptive upon the public; and,
(c) if the Respondent had any intention to make some legitimate use of the disputed domain name, it has had ample opportunity either to do so or otherwise to explain its conduct, but has done neither,
the Panel concludes that the Respondent registered the disputed domain name in bad faith, in the sense required by the Policy.
Turning now to the second limb of this requirement, “use in bad faith”:
(a) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its registration as a trademark and use in many countries;
(b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, and its present use is plainly intended to attract Internet users interested in the Complainant’s services to various other suppliers of financial services;
(c) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
The Panel therefore concludes that the Respondent has registered and is using the disputed domain name in bad faith.
In the light of the findings in paragraph 6 above, the Panel concludes that:
- the disputed domain name <offshore-barclaysuk.com> is confusingly similar to the trademark BARCLAYS belonging to the Complainant; and
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the disputed domain name <offshore-barclaysuk.com> be transferred to the Complainant.
William P. Knight
Sole Panelist
Dated: June 11, 2012