The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Miami Investment Brokers, Inc. of Miami, Florida, United States of America.
The disputed domain names <barclaysbusinesscenter.info>, <barclaysbusinesscenter.net> and <barclaysbusinesscenter.org> are registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2012. On April 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On April 20, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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 GoDaddy.com, LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 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 April 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 25, 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 a banking company incorporated in the United Kingdom and operating in over 50 countries employing approximately 144,000 people. The Complainant is the owner of numerous registrations worldwide for the trademark BARCLAYS. The Complainant is the owner of the websites “www.barclays.co.uk” and “www.barclays.com”.
The disputed domain names were all registered on November 1, 2011.
The Complainant made the following submissions in the Complaint.
The Complainant is a major global financial services provider. The Complainant operates in over 50 countries, employs approximately 144,000 people, and has more than 48 million customers worldwide. In addition to its registrations for the trademark BARCLAYS, the Complainant has used the trademark for over 114 years.
The disputed domain names contain a word which is identical and therefore confusingly similar to the Complainant trademark. Given the worldwide fame and notoriety of the name “Barclays” no trader would choose the disputed domain names unless with the intention to create a false impression of association with the Complainant in order to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known under the disputed domain names and does not have any rights or legitimate interests in respect of the disputed domain names.
The Respondent has not been licensed or authorized by the Complainant to use the trademark or to register the disputed domain names.
The Respondent is not known by the disputed domain names.
The Respondent is not making a bona fide offering of goods or services under the disputed domain names.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant´s trademarks in breach of paragraph 4(b)(iv) of the Policy.
Such conduct amounts to registration and use of the disputed domain names in bad faith.
The Complainant requests as a remedy the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that the Complainant has rights in the trademark BARCLAYS, acquired through use and registration which predate the date of registration of the disputed domain names.
UDRP panels have consistently held that domain names are generally identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
Each of the disputed domain names contains the trademark in its entirety. The Panel finds that the addition of the generic words “business” and “center” does not serve to distinguish this disputed domain names from the trademark in any way.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if you have acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the trademark. The Complainant has prior rights in the trademark, which precede the Respondent's registration of the disputed domain names by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and has thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(ii) that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on the Respondent’s websites or locations.
The Panel is prepared to accept, there being no response from the Respondent, the Complainant’s assertions as to the content of the disputed domain names at the date of the Complaint.
The Complainant’s trademark BARCLAYS is very well known. The Complainant’s banking and financial services are conducted and advertised in many countries and have been so for many years. In this Panel’s view, it is inconceivable that the Respondent was unaware of the Complainant and the goodwill it holds in the trademark BARCLAYS, at the time of registration of the disputed domain names. See Barclays Bank PLC v. herethereandeverywhere, Inc, WIPO Case No. D2011-1851.
Neither the Respondent nor its activities have any legitimate connection with the name or trademark BARCLAYS. In all the circumstances there is plainly no rationale for the Respondent’s registration of the disputed domain names and the Panel can and does infer that they were registered and thereafter used in bad faith.
In the present case, the disputed domain names are confusingly similar to the Complainant’s BARCLAYS trademarks. As submitted by the Complainant, the websites associated to the disputed domain names contain 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 disputed domain names, the Respondent must have been aware of the Complainant and of its goodwill. As contended by the Complainant, it may be expected that the disputed domain names will divert potential customers from the Complainant's business due to the presence of links to competitors on the websites associated to the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 names <barclaysbusinesscenter.info>, <barclaysbusinesscenter.net> and <barclaysbusinesscenter.org> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: June 6, 2012