The Complainant is Barclays Bank PLC, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is DNS Admin, Domain Privacy Ltd, United States of America (“United States”).
The disputed domain name <barclaysbank.com> (the “Domain Name”) is registered with The Domains LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2020 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 August 7, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 14, 2020. 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 one of the largest financial institutions in the world. It was established in London, England in 1690 through one of its founding banks and has operated continuously under the name “Barclays” since 1896. Today, the Complainant provides financial services throughout Europe, the Americas, Middle East, and Asia Pacific, offering products and services across personal, business, corporate, and investment banking, credit cards, and wealth management. In 2018, the Complainant had 24 million customers and clients in United Kingdom alone.
The Complainant owns numerous trademark registrations in over 50 countries and it has over 500 registrations globally for marks that incorporate the word “Barclays” for a broad range of goods and services, for example European Union Trade Mark number 000055236 for the wordmark BARCLAYS, registered since April 1, 1996. Further, the Complainant has four active registrations for BARCLAYS BANK. The Complainant operates under various domain names that contain the word “Barclays” including <barclays.com>, which was first registered in 1993. The Complainant’s websites generate significant web traffic.
The Domain Name was registered on May 12, 2020. At the time of the Complaint and the time of drafting the Decision, the Domain Name was used to redirect to third party advertising sites.
The Complainant provides evidence of trademark registrations and goodwill in its trademarks. The Complainant argues that the Domain Name is deliberately similar and almost identical to the Complainant’s domain name <barclays.com>. The only difference is the inclusion of the word “bank” that is merely descriptive of the services for which the Complainant is famous.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent has obtained the Domain Name in an auction for a price understood to be above GBP 2,000. The Complainant argues that this indicates the Respondent will not simply use the Domain Name as up today, to generate revenue from third party advertisements, as the intention must have been to resell the Domain Name or use it for potential fraudulent and illegal activity.
The Complainant believes the Respondent has registered and used the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion, due to the well-known character and reputation of the Complainant’s trademark. The Complainant further argues that it is highly probable that the Respondent intends to resell the Domain Name. The Respondent’s use of a privacy or proxy service to hide its identity is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established that it has rights in the trademarks BARCLAYS BANK and BARCLAYS.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark BARCLAYS BANK, and confusingly similar to the Complainant’s trademark BARCLAYS. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical and confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name to redirect to third party advertising sites is not bona fide.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Domain Name is identical to the Complainant’s well-known trademark. The Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel agrees with the Complainant that it is likely that the Respondent has registered the Domain Name to resell it, and/or to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. The Respondent’s use of a privacy or proxy service to hide its identity is in our context further evidence of bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name <barclaysbank.com> be transferred to the Complainant.
Date: September 17, 2020
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