Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Pinsent Masons LLP, U.K.
Respondent is Lafayatte Smith of Can Lan, Madagascar.
The disputed domain name <barclaysmortgages.org> is registered with Name.com, LLC (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on April 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 16, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 16, 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.
Complainant is a global financial institution, providing retail, corporate and investment banking as well as credit cards and wealth management services.
Complainant is the owner of various domain names relating to the designation “Barclays”, inter alia: <barclays.com> as well as <barclays.co.uk>.
The disputed domain name <barclaysmortgages.org> was registered on September 15, 2010; it redirects to a website at “www.barclaysmortgages.org” which is a typical PPC website with, inter alia, hyperlinks to commercially active websites of numerous third parties relating to financial services.
Complainant requests the disputed domain name to be transferred to Complainant.
Complainant contends to be a major global financial services provider with an extensive international presence in over 50 countries and approximately 144,000 employees.
Furthermore, Complainant purports to be the registered proprietor of a variety of U.K. and Community registered trademarks relating to the designation “Barclays” in a range of classes in relation to financial services. Complainant has submitted as Annex 4 to its Complaint a list of roughly 100 trademarks in which Complainant claims to have rights. Complainant, however, did not submit any further evidence such as excerpts from the official trademark registers of e.g., the U.K. Intellectual Property Office or the Office for Harmonization in the Internal Market (OHIM).
Complainant asserts that by using the trademark BARCLAYS over the last 114 years, it has acquired goodwill and a significant reputation in the area in which it specializes, thus the name “Barclays” has become a distinctive identifier associated with Complainant and the services it provides.
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s BARCLAYS trademark because (1) the disputed domain name contains a word which is confusingly similar to the name “Barclays” and (2) since the additional term “mortgages” describes one of Complainant’s core services, the addition of this generic word is more likely to increase than to avoid confusion.
Moreover, Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the disputed domain name is being used to run a holding page with the intention to generate income for Respondent by redirecting Internet traffic intended for Complainant to websites relating to products and services in competition with those offered by Complainant, (2) Respondent is not known by the disputed domain name and (3) Respondent has never asked for and has never been given any permission by Complainant to register or use any domain name(s) incorporating Complainant’s BARCLAYS trademark.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith since (1) given the widespread use, reputation and notoriety of the BARCLAYS trademark, Respondent must have been aware that in registering the disputed domain name it was misappropriating Complainant’s valuable intellectual property, (2) Respondent’s registration of the disputed domain name prevented Complainant from registering a domain name which corresponds to its BARCLAYS trademark and (3) Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BARCLAYS trademark.
Respondent did not reply to Complainant’s contentions, neither those included in the Complaint nor those in the pre-procedural communication of Complainant by means of various letters sent to Respondent by Complainant’s authorized representatives on December 7, 2011, January 6, 2012 as well as February 9, 2012.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant; however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
Since Respondent did not question any of Complainant’s contentions, the Panel finds that Complainant owns numerous U.K. and community registered trademarks in the designation “Barclays”.
The Panel further concludes that the disputed domain name <barclaysmortgages.org> is confusingly similar to Complainant’s BARCLAYS trademark.
The disputed domain name not only incorporates the BARCLAYS trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “mortgages”, which even describes one of Complainant’s core services, is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s BARCLAYS trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
The disputed domain name redirects to a website, the content of which is not only tailored to match Complainant’s core groups and services, but also contains a number of finance related sponsored links which redirect to products and services in competition with those offered by Complainant. The Panel, therefore, concludes that Respondent – irrespective of the alleged notoriety of the BARCLAYS trademark throughout the world – apparently was aware of Complainant’s BARCLAYS trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s BARCLAYS trademark and financial services. Such use of the disputed domain name to seek “Pay-Per-Clicks” from those diverted Internet users who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s BARCLAYS trademark end up with Respondent’s Internet presence at “www.barclaysmortgages.org” is neither “noncommercial” because it was predominantly for the purpose of generating advertising revenues, nor it is “fair” because Internet users by confusion are brought to a general website with information about a variety of (financial) matters that are not specifically tailored to Complainant.
Moreover, such use of the disputed domain name is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has neither been authorized to use Complainant’s BARCLAYS trademark in a domain name nor on Respondent’s website or in any other way and (2) Respondent’s name apparently does not correspond to Complainant’s trademark BARCLAYS nor is any other reasonable explanation apparent why Respondent should rely on the said designation.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply at all to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on April 23, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s BARCLAYS trademark, to a typical PPC website in order to generate “Pay-Per-Click” commissions without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s BARCLAYS trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a Privacy Service in order to conceal its true identity but that Respondent neither reacted to Complainant’s pre-procedural attempts to contact Respondent on December 7, 2011 as well as January 6, 2012 and February 9, 2012, nor did Respondent reply to Complainant’s contentions as they were included in the Complaint duly notified to Respondent on April 23, 2012. All of these circumstances may well be legitimate if viewed upon isolated, but taken all together shed light on Respondent’s behavior, in this Panel’s opinion, which at least supports the finding of a registration and use of the latter in bad faith in the specific circumstances of this case.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of 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 <barclaysmortgages.org> be transferred to Complainant.
Stephanie G. Hartung
Dated: May 24, 2012
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