The Complainant is Barclays Bank PLC, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird LLP, United Kingdom.
The Respondents are Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America.
The disputed domain name <barclaycardsus.com> is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On October 23, 2012, an email communication and annexes was sent on behalf of the Respondents to the Center, giving notice of a claim that the disputed domain name is the subject of a receivership action in the United States District Court for the Northern District of Texas. On November 1, 2012, the Center acknowledged receipt of the Respondents’ email communication and invited the Complainant to provide any comments it might wish to make or if it wished to request the discontinuation of the UDRP proceedings in light of the Respondent’s email communication and documents therein. On November 30, 2012, the Complainant requested the suspension of the proceedings. On the same date, the Center notified to the Parties and Registrar the suspension of proceedings. Further to the Complainant’s request, the proceedings were reinstituted on December 21, 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 Respondents of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondents did not submit any formal response. However, on January 15, 2013, the Respondents submitted to the Center a further email drawing attention to the apparent appointment of a receiver over its assets. Accordingly, the Center notified to the Parties the commencement of panel appointment process on January 14, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 22, 2013. 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 major global financial services provider engaged in retail banking, investment banking and wealth management throughout Europe, the Americas, Africa and Asia.
It has traded as Barclays PLC since 1985. Before that it was known as Barclays Bank PLC, Barclays Bank Limited and, from 1896, Barclay & Company Limited.
The Complainant currently operates in over 50 countries and employs approximately 144,000 people. It deals with more than 48 million customers worldwide.
The Annexes to the Complaint provide evidence that the Complainant owns a number of registered trade marks in the United Kingdom and the European community for BARCLAYS and BARCLAYCARD in a range of services including in particular in relation to financial services. Its trade marks also include the United States Trade Mark Registration No. 3049848 for BARCLAYS for a range of goods and services in international classes 16 and 35. This trade mark was registered on January 24, 2006.
The disputed domain name was registered on July 13, 2006.
According to the Complainant, at the time the Complaint was submitted the disputed domain name was resolved to a web site which featured sponsored links to competitors’ offerings of goods and services rivaling the Complainant’s core goods and services.
Paragraph 4(a) of the Policy provides that in order to divest the Respondents of the disputed domain name, the Complainant must demonstrate each of the following:
(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 Respondents have 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
As noted above, on October 23, 2012, the Center received an email communication from one Mr. Cox.
According to the attachments to the email, Mr. Cox is or claims to be an attorney acting on behalf of one of one of the Respondents, Quantec, LLC.
Mr. Cox states that, in proceedings styled as Netsphere v. Baron Case No. 3: 09CV988 US District Court for the Northern District of Texas, a receiver has been appointed over the assets of, amongst others, Quantec, LLC. Mr. Cox’s letter includes copies of documents purporting to be copies of the Court’s Order appointing a Receiver dated November 24, 2010 (Receiver Order) and an Order granting the Receiver’s Motion to Clarify the Receiver Order with respect to Novo, LLC and Quantec, LLC dated December 17, 2010.
Mr. Cox’s letter also states that he writes with the authority of one Mr. Vogel, the person identified as the Receiver appointed by the Court in the Receiver Order.
Following receipt of these communications the proceeding was stayed at the Complainant’s request. The Complainant’s then lawyers then wrote to the Receiver by letter dated November 21 and November 30. However, no response was received.
Paragraph 18 of the Rules records the Panel a discretion whether to suspend, terminate or continue with a proceeding where court proceedings are on foot involving the disputed domain name.
The Panel is prepared to assume that the Respondent Quantec LLC’s contractual rights to the disputed domain name could be receivership assets for the purposes of the Receiver Order as extended by Clarifying Order. Notwithstanding this assumption, the Panel is minded for the reasons detailed below to proceed to issue its Decision in accordance with paragraphs 10 and 18 of the Rules.
First, although the receivership was put in place in November and December 2010, the disputed domain name still remains registered in the name of the Respondents and, according to the Registrar, has not been transferred to the control of the Receiver as required by the Receiver Order and despite the passage of some two years.
Secondly, if the disputed domain name is in fact part of the Receivership Assets, the appropriate person to be responding on behalf of the Respondent is the Receiver. While Mr. Cox states that he has authorization from the Receiver, Mr. Cox makes clear that he is retained by Quantec LLC and not the receiver and no documents from the Receiver authorising Mr. Cox to act on his behalf have been submitted.
Thirdly, the Complainant’s then lawyers have put the Receiver on notice of the proceeding and sought his response. The Receiver has not sought to assert any rights over the disputed domain name, however, even though the Complainant’s lawyers wrote to him on two occasions. Accordingly, it appears that the Receiver has been put on notice of the dispute and has chosen not to intervene.
Fourthly, according to the Complainant, the disputed domain name was being used to divert traffic to the providers of services competitive with those of the Complainant. Neither Mr. Cox nor the Receiver have sought to dispute this.
These considerations raise serious doubt about whether the disputed domain name is in fact subject to the Receiver Order (as modified by the Clarifying Order). Certainly, one would expect the Receiver to have asserted his claim when contacted by the Complainant’s lawyers or to contact the Center formally.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trade marks for BARCLAY, BARCLAYCARD and BARCLAYS referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Apart from the addition of the generic top-level domain (gTLD) “.com” the disputed domain name differs from the proven trade marks by the addition of “cards US” or “sus”. As the Complainant contends, the addition of these descriptive and geographic elements will generally convey to Internet users that the domain name relates to the United States version of Barclays or the Barclaycard. The Panel therefore has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant’s trade marks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant states that it has never authorized either of the Respondents to use or register the disputed domain name. The disputed domain name is plainly not derived from either of the Respondents’ own names. Nor is there any evidence that either of the Respondents are otherwise known as or by any name resembling “Barclay”. Furthermore, it appears that the disputed domain name is being used to divert people looking for “Barclay” financial services or Barclaycards to similar goods and services provided by competitors of the Complainant, presumably with a view to generating pay-per-click revenues or similar. The use of the Complainant’s trade marks to divert Internet users to rival goods and services to those of the Complainant’s in this fashion does not constitute a bona fide offering of goods and services for the purposes of the Policy. Accordingly, the Panel finds that the Complainant has established a clear prima facie case that the Respondents do not have any rights or legitimate interests or to the disputed domain name, The Respondents have not sought to rebut that prima facie case.
Therefore, the Panel finds that the Complainant has established this requirement under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondents.
Given the length of the Complainant’s use of its trade marks and the global extent of that usage, the Panel accepts the Complainant’s submission that the disputed domain name is being used to take advantage for commercial gain of the trade mark’s significance of the word “Barclay” as an identifier of the Complainant’s goods and services only. Such use is a classic case of use in bad faith under the Policy. Moreover the range and scope of the Complainant activities long pre-date the registration of the disputed domain name. Accordingly, the Panel infers that the Respondents registered the disputed domain name solely to take advantage of its confusing resemblance to the Complainant’s trade marks. Therefore, the Panel finds that the disputed domain name was registered in bad faith. As a result, the Complainant has made out this element under the Policy.
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 <barclaycardsus.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: February 5, 2013