ADMINISTRATIVE PANEL DECISION

Barclays Bank PLC v. Robert Cutler

Case No. D2004-0519

1. The Parties

The Complainant is Barclays Bank PLC of London, United Kingdom. It is represented by Nicola Dear of the same city.

The Respondent is Robert Cutler of Northampton, United Kingdom, who acts for himself.

2. The Domain Name and Registrar

The disputed domain name <barclaycardbusiness.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2004. On July 14, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On July 16, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 20, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2004. The Response was filed with the Center on August 9, 2004.

The Center appointed John Lambert as the sole panelist in this matter on August 17, 2004. 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

The Complainant is a public company incorporated in England and Wales with limited liability under the provisions of the Companies Act 1985. It is the holding company of a group of companies that supply banking and other financial services. According to the “Key Facts” page of its website, the Complainant and its subsidiaries employ nearly 75,000 persons in 2,070 branches in the UK and 846 overseas to serve 4.5 million customers.

One of the services offered by those companies is a range of electronic payment services known collectively as “Barclaycard”. The “Barclaycard” was one of the first bank credit cards in the UK. According to the “Key Facts” page of its website, there are some 11 million “Barclaycards” around the world of which about 9.7 million are in the UK. The “Barclaycard” brand is projected to an even wider audience by the Complainant’s sponsorship of association football. An important championship between the top football clubs of England and Wales is called “the Barclaycard Premiership”. This championship attracts considerable interest throughout the football season with the result that radio and television stations, newspapers and magazines and individuals refer to the “Barclaycard” brand almost every time they mention that championship.

The Complainant is the registered proprietor of several British and Community trademarks, including “BARCLAYCARD”, “BARCLAY” and “BARCLAYS” in various classes and has used those marks for many years.

The Complainant and other companies in its group have registered <barclaycard.com> and <barclays.com>, <barclaycard.co.uk> and <barclays.co.uk> as domain names for their websites.

The only information that either party has supplied on the Respondent is his name, postal and email addresses and telephone number. He lives in Northampton which happens to be where “Barclaycard” is based. The Complainant says that the Respondent has no association or connection with it and the Respondent does not contradict that allegation. However, as the Complainant is a major employer in Northampton, it would be surprising for the Respondent not to rub shoulders with at least some of the Complainant’s staff occasionally.

The Respondent has also registered < barlcycardbusiness.co.uk> as a domain name. He does not appear to have used that name or indeed the disputed domain name as a URL for a website.

5. Parties’ Contentions

A. Complainant

In support of its contention that the disputed domain name is identical or confusingly similar to trademarks in which it has rights, the Complainant says that it enjoys a worldwide reputation as do its services. It refers to the British and Community trademark registrations mentioned above. It says that those marks have been used for many years in several aspects of its business. It invites attention to its domain name registrations and refers to the websites for which they are URLs.

In support of its contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant says that the Respondent infringes its rights in its trademarks, though it does not make clear whether those “rights” are its British or Community trademark registrations or rights of action at common law, and in neither case does it particularize the alleged infringements. It asserts that the “Domain Names” (sic) consist of its trademark “BARCLAYCARD” and it relies on the administrative panel decision in Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102, April 18, 2000) for the proposition that the disputed domain name is therefore confusingly similar to that mark. It is assumed that the point that the Complainant wishes to make is that the disputed domain name incorporates the “BARCLAYCARD” word mark. The Complainant concludes that the Respondent does not have any legitimate interest in the sign “BARCLAYCARD”, that he is not commonly known by that sign or by the disputed domain name and that he is not associated, connected or authorized by the Complainant in any way.

In support of the contention that the disputed domain name was registered and is being used in bad faith, the Complainant submits that the disputed domain name amounts to as “Abusive Registration”.

To understand that submission, it is necessary to explain that the Nominet UK (“Nominet”), the registrar for the “.uk” country code top level domain (“ccTLD”) operates an alternative dispute resolution service for resolving certain domain name disputes within the “.uk” domain space without the need for litigation known as the Dispute Resolution Service (“DRS”). The DRS Policy is published on the Internet at “http://www.nic.uk/ref/drs-policy.html”. Paragraph 1 of the DRS Policy defines an “Abusive Registration” as “a domain name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

“Rights” includes, but is not limited to, rights enforceable under English law. The first reason that the Complainant gives for its submission that the disputed domain name is an “Abusive Registration” is that the Respondent registered the disputed domain name “as a blocking registration against a name or mark in which the Complainant has Rights”. It is also necessary to explain that paragraph 3 (i) (B) of the DRS policy includes registration of a domain name “as a blocking registration against a name or mark in which the Complainant has Rights” as one of the circumstances to be taken into account in determining a complaint under the DRS.

The Complainant repeats that the Respondent has no legitimate connection with the Complainant or its “Barclaycard” division and adds that he is not making legitimate or fair use of the disputed domain name.

The Complainant refers to the Respondent’s registration of <barclaycardbusiness.co.uk> as a .uk ccTLD name and argues that the registration of that name together with the registration of the disputed domain name indicates an intention unfairly to disrupt the Complainant’s business.

The Complainant says that there is no legitimate or fair use that the Respondent could make of the disputed domain name without infringing its trademarks or misleading the public.

For all those reasons, the Complainant asks for the disputed domain name to be transferred to it.

B. Respondent

The Response is set out in a short email to the Case Manager dated August 6, 2004.

The Respondent acknowledges the Complaint and adds that he wishes to keep his domain name registrations. Again, it is assumed that the plural refers to the ccTLD as well as the disputed domain name. He says that he purchased the domain names in good faith “from the public domain”.

He denies that he has tried to block or evade the Complainant and says that he has offered to transfer the domain names to the Complainant. He refers to negotiations with the Complainant, mentions an unannounced visit to his home by the Complainant’s representatives and complains that the visit distressed his family.

Nevertheless, he also says that he remains willing to sell the domain names to the Complainant and that if the Complainant wishes to obtain the domain names it should deal directly with him.

He requests the resolution of this dispute in his favor.

6. Discussion and Findings

Paragraph 4 (a) of the UDRP requires a Complainant to prove that:

(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 Respondent has no rights or legitimate interests in respect of that domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Each and every one of those elements has to be present. Since the Complainant has used terms such as “Abusive Registration” and “Rights” that appear in the Nominet DRS Policy it should be stressed that the Nominet DRS Policy is similar to the Policy but not identical to it.

Paragraph 4 (b) of the Policy lists a number of circumstances to indicate that a domain name has been registered and/or used in bad faith:

(i) circumstances indicating that a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trade or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) it has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.

Paragraph 4 (c) lists circumstances in which a respondent can show that he has rights or legitimate interests in a domain name when responding to a complaint. These include, but are not limited to:

(i) 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 before receiving notice of a dispute;

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trade or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade or service mark at issue.

It should be recorded that the Case Manager notified the Panel by an email dated August 17, 2004, that both sides had forwarded considerable correspondence to the Center relating to settlement discussions and that he would forward these e-mails to the Panel. In England and Wales (and no doubt other common law countries), settlement negotiations are usually conducted “without prejudice”, which means that correspondence or records of such discussions are not shown to the tribunal in case they contain matter that could prejudice a party. Because one of the grounds upon which a panel can find that a domain name has been registered in bad faith is that a respondent has registered a domain name primarily for the purpose of selling the registration to the owner of a trade or service mark for valuable consideration in excess of the respondent’s documented out-of-pocket costs (paragraph 4 (b) (i) of the Policy), caution is all the more important in a case such as this. As the Respondent is not legally represented and does not appear to be legally qualified, it would be unfair to admit that correspondence into evidence. Accordingly, that correspondence is excluded under paragraph 10(d) of the Rules.

A. Identical or Confusingly Similar

There can be no serious dispute that the prefix “BARCLAYCARDBUSINESS” is confusingly similar to the word mark “BARCLAYCARD” which the Complainant has registered in the UK and at OHIM. Accordingly, the first hurdle is cleared.

B. Rights or Legitimate Interests

None of the circumstances in paragraph 4(c) of the Policy apply to this case and the Respondent has offered no other reason for finding that he has rights or legitimate interests in respect of the disputed domain name. It follows that the second hurdle is cleared.

C. Registered and Used in Bad Faith

The only issue that causes difficulty in this case is whether the domain name has been registered and is being used in bad faith. The Respondent says that he registered the domain names (by which it is understood that he refers to the “.uk” registration as well as the disputed domain name) in good faith but he does not give any more information.

As the “Barclaycard” brand is so well known in the UK there can be very few reasons why a private individual should wish to register a domain name that incorporates that brand other than those set out in paragraph 4(b) of the Policy. The Respondent has made no use of the disputed domain name or the “.uk” equivalent. In his Response he makes no bones of his desire to sell those registrations to the Complainant. In the second paragraph he says:

“Upon contact by Barclays I have readily offered them the domain names.”

In the next paragraph, he adds:

“I remain willing to sell these domain names to Barclays.”

However, these contradict other statements that he wishes to keep the registrations, that he does not believe that these registrations should be awarded to the Complainant and that if the Complainant wishes to obtain the domain names they should deal directly with himself.

The inference that any reasonable person would draw from the above statements is that the Respondent is very willing to sell the registrations to the Complainant but only at a price that would bring him a profit. In the absence of any explanation as to why he has registered the disputed domain name and any indication of what he intends to do with the registration, the Panel is driven to the conclusion that the Respondent registered and has used the disputed domain name with the intention of ransoming it. As that purpose falls within paragraph 4 (b) (i) of the Policy, the third hurdle has been cleared.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <barclaycardbusiness.com> to be transferred to the Complainant.

John Lambert
Sole Panelist

Dated: September 6, 2004