WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barclays Bank Plc and Barclays Bank UK Plc v. IP Legal, Barclays Wealth Ltd

Case No. D2019-2715

1. The Parties

The Complainants are Barclays Bank Plc and Barclays Bank UK Plc, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is IP Legal, Barclays Wealth Ltd, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <barclaysw.com> (“the Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. A third party sent email communications on November 22, 2019 and on December 7, 2019. The Center notified the Commencement of Panel Appointment Process on December 4, 2019.

The Center appointed Michael D. Cover as the sole panelist in this matter on December 12, 2019. 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.

4. Factual Background

Barclays Plc, is the group holding company for the Barclays Group, with over 200 entities in the United Kingdom. The Complainants, Barclays Bank UK Plc and Barclays Plc are the operating entities of Barclays Plc and are the exclusive trademark licensees of Barclays Plc. Barclays is a multinational investment bank and financial services company, offering retail banking services to individuals and businesses via branches and on-line and telephone banking, as well as wealth management services. These services are all provided under the BARCLAYS and BARCLAYS WEALTH trademarks. Barclays has been using the BARCLAYS trademark since 1736. Barclays operates in 40 countries, with over 4,500 retail bank branches and employs more than 80,000 people worldwide.

Barclays Wealth Management serves high net worth individuals and the BARCLAYS WEALTH trademark has been used since October 2006. Barclays is the proprietor of over 40 BARCLAYS WEALTH trademark registrations. As of December 2018, Barclays annual turnover was over GBP 21 billion, with the United Kingdom business turned over GBP 7.4 billion and the international business had a turnover of more than GBP 14 billion.

Barclays is the proprietor of over 1,000 trademark registrations around the world which include the element BARCLAYS. Barclays has owned the domain name <barclays.co.uk> since August 1996. Barclays also is the owner of over 1,700 Top-Level domain names.

The Respondent is IP Legal, Barclays Wealth Ltd.

The Disputed Domain Name was registered on May 5, 2019, and redirects to “www.barclays.co.uk”.

5. Parties’ Contentions

A. Complainants

Identical or confusingly similar to a trademark in which the Complainant has rights

The Complainants submit that Barclays has built an extensive reputation and goodwill in the BARCLAYS and BARCLAYS WEALTH trademarks through the extensive use made of the trademarks in relation to the banking and financial services already set out in this Decision. They go on to state that the trademark registrations for BARCLAYS and BARCLAYS WEALTH and the extensive reputation and goodwill attached to them clearly demonstrate that the Complainants have rights in the BARCLAYS trademark.

The Complainants submit that the generic Top-Level Domain (“gTLD”) suffix “.com”, which is an integral and technical part of the Disputed Domain Name, should be disregarded in the determination of confusingly similarity under the Policy. The Complainants submit that the assessment should be between “Barclaysw” and “Barclays”. The Complainants continue that the Disputed Domain Name is clearly confusingly similar with Barclays’ rights. The Complainants submit that the Disputed Domain Name incorporates the BARCLAYS trademark in full, with the additional letter “w” at the end, which the Complainants state is insignificant and likely to go unnoticed by an Internet user.

The Complainants conclude that they clearly have extensive earlier registered and unregistered rights in the BARCLAYS trademark, which are confusingly similar to the Disputed Domain Name.

Rights or Legitimate Interests

The Complainants submit that the Respondent has never, to the best of the Complainants’ knowledge, been known by the Disputed Domain Name and is not using the Disputed Domain Name in connection with a bona fide offering of goods and services. The Complainants note that a screenshot of the website at the Disputed Domain Name shows that the Disputed Domain Name directs to the Barclays website “ www.barclays.co.uk”.

The Complainants state that the Respondent clearly has no rights or legitimate interests in respect of the Disputed Domain Name and is not making legitimate, noncommercial or fair use of the Disputed Domain Name but instead is using it with the sole purpose of commercial gain and mislead consumers to believe that the Disputed Domain Name is associated with the Complainants’ trademark. The Complainants submit that it would not be possible for the Respondent to claim to have been unaware of Barclays and the BARCLAYS trademark when registering the Disputed Domain Name, bearing in mind the massive reputation of the BARCLAYS trademark and Barclays operations. In noting that the Complainants have not given the Respondent permission to use the BARCLAYS trademark in any manner, the Complainants conclude that the Respondent cannot be said to have had any rights in registering the Disputed Domain Name.

Registered and Being Used in Bad Faith

The Complainants submit that the registration of the Disputed Domain Name is a classic example of a bad faith registration in accordance with paragraph 4(b) of the Policy. The Complainants reiterate their arguments set forth in the section of the Complaint relating to rights and legitimate interests. The Complainants submit that the activities being carried out by the Respondent clearly amount to evidence of a bad faith registration.

The Complainants continue that, in order to give the impression of a legitimate connection between the Respondent and the Complainants, the Respondent set up its company at United Kingdom Companies House using the following information, referencing the relevant Certificate of Incorporation at Annex 16 to the Complaint:

- The registered office address provided was “1 Churchill Place, London”, which is the same address as that of the Complainants.

- The information in relation to the director of the Respondent’s companyI seem to be the same as the current Chief Executive of the Barclays group. However this person has at no point agreed to serve as a director of the Respondent’s company and has not authorized any party to give such authorization on his behalf.

- The sole shareholder of the Respondent’s company was stated to be “Barclays Limited, a company incorporated in Belize”. The Complainants submit that this company is not associated with the wider Barclays group.

The Complainants repeat the submission they have already made and, in particular, the redirection of the Disputed Domain Name to “www.barclays.co.uk”.

The Complainants submit that the Disputed Domain Name has been registered to create a likelihood of confusion with Barclays as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and that the Respondent’s activities fall foul of the Policy.

The Complainants conclude that the Respondent registered the Disputed Domain Name to enhance the Respondent’s business opportunities. The Complainants also submit that is likely that the Respondent registered the Disputed Domain Name with the intention of selling it to the Complainants for a sum that exceeds the Respondent’s out-of-pocket expenses. The Complainants also conclude that there is a possibility that the Respondent registered the Disputed Domain Name to refer to the Complainants or to interrupt or block the business of the Complainants. An Internet user, the Complainants state, would have suggested to him or her a connection to Barclays due to the Complainants’ high profile within the financial industry.

The Complainants finally submit that the Disputed Domain Name is likely to have been registered in bad faith.

The Complainants request that the Panel decide that the Disputed Domain Name be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions. However, on November 22, 2019 and on December 7, 2019 the Center received two email communications from a third party Hurricane Electric Internet Services (which according to the WhoIs appears to be the technical contact of Disputed Domain Name) and stating that they “have killed the DNS entry”. After that, the Disputed Domain Name resolves to an inactive page.

6. Discussion and Findings

The Complainants must demonstrate that, on the balance of probabilities, the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights; the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s BARCLAYS trademark, in which they have rights. The Panel is satisfied that the Complainants have established registered and unregistered rights in the BARCLAYS trademark, as exclusive licensees of that trademark. The Panel also accepts that the addition of gTLD “.com” does not affect that conclusion and that it is well-established in previous UDRP decisions that this is the case. The Panel also notes that the Disputed Domain Name incorporates the Complainants’ trademark BARCLAYS in full and is satisfied that the addition of the letter “w” is not sufficient to avoid a finding of confusing similarity.

The Panel decides that the requirements of paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Respondent has not been licensed by the Complainants or Barclays group to use the BARCLAYS trademark. The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services; that it has not been commonly-known by the Disputed Domain Name nor has the Respondent been making legitimate noncommercial use of the Disputed Domain Name without intent for commercial gain or to misleadingly divert consumers or to tarnish the BARCLAYS trademark. The Panel accepts that such use as has been made of the Disputed Domain Name has been to provide an unauthorized link to the “www.barclays.co.uk” website of the Complainants.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel accepts that the Complainants’ trademark BARCLAYS is well-known and that it is inconceivable that the Respondent was unaware of the Barclays group and its BARCLAYS trademark. The details of the company registration of the Respondent’s company also point to a deliberate attempt to create confusion with the Complainants’ business. It is a reasonable inference that that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, the Complainants. It is also a reasonable inference that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ BARCLAYS trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This means that two of the circumstances in paragraph 4(b) of the Policy, registration and use in bad faith, are established.

The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met.

7. Decision

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, <barclaysw.com>, be transferred to the Complainants.

Michael D. Cover
Sole Panelist
Date: December 21, 2019