Barclays Bank UK Plc v Jack Williams, Jack Web Media

WIPO Case No. D2023-4784

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Barclays Bank UK PLC v. Jack Williams, Jack Web Media

Case No. D2023-4784

1. The Parties

The Complainant is Barclays Bank UK PLC, United Kingdom (“UK”), represented by Bird & Bird LLP, UK.

The Respondent is Jack Williams, Jack Web Media, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <barclaysfcu.com> is registered with DNS Africa Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17,
2023. On November 17, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 4, 2023, 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 sent an email communication to the Complainant on December 4,
2023, 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

December 6, 2023.

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 December 7, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2024.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 15, 2024.
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.

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4. Factual Background

The following facts are undisputed.

The Complainant is a wholly owned subsidiary of Barclays PLC, a British multinational banking and financial services company headquartered in London, UK, and one of the world’s largest financial services providers with operations in retail, wholesale and investment banking, as well as wealth management, mortgage

lending and credit cards. The Complainant is responsible for Barclays PLC’s investment banking, corporate,
private and overseas services operations (amongst others), providing products and services for large
corporate, wholesale and international banking clients. The Complainant has operations in over 50 countries
and territories and has approximately 48 million customers. The Complainant therefore has a substantial
worldwide reputation for banking and financial services including corporate banking and investment services
(both overseas and in the UK).

The Complainant is the licensee of numerous registered trademarks in a range of classes throughout the world containing or incorporating the name BARCLAYS including the following:

- UK Trademark for BARCLAYS, registered on March 3, 1989 (No. UK00001286579);
- UK Trademark for BARCLAYS, registered on January 11, 2008 (No. UK00002461096);
- European Union Trademark for BARCLAYS, registered on February 13, 2003 (No. 002315554)
(the “Complainant’s Trademarks”). All of the Complainant’s Trademarks cover a variety of financial services.

All the Complainant’s Trademarks were registered before the disputed domain name, which was registered on May 25, 2023.

At the time of filing the Complaint, the disputed domain name resolves to a website which purportedly offers banking services by “Ba Clay”, named “Best Offshore Private Bank in LATAM”. To a large extent, this website seems to be a copy of the website of private bank Caye International Bank.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends the following:

The disputed domain name uses the Complainant’s Trademarks to create a domain name that is very similar to the Complainant’s official domain name <barclays.co.uk>. Such use of the Complainant’s Trademarks in the disputed domain name increases the likelihood that visitors will infer that the disputed domain name is owned by the Complainant. The addition of “fcu” does nothing to distinguish the disputed domain name from the Complainant’s Trademarks. In fact, it could be said that the addition enhances the inference likely to be drawn, as “fcu” is commonly understood to be an acronym of “Federal Credit Union”, a type of financial cooperative that provides banking services. This acronym is likely to be associated with the Complainant and the services covered by the Complainant’s Trademarks. The disputed domain name must therefore be considered confusingly similar to the Complainant’s Trademarks.

To the best of the Complainant’s knowledge, the Respondent does not hold any trademarks or other intellectual property rights in any of the Complainant’s Trademarks.

The website to which the disputed domain name resolves is a page that purportedly offers international private banking, lending and global investment services. Even if the content of the site was not related to banking and financial investment services, the disputed domain name would, at the very least, cause initial

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interest confusion because a user of the website will, based on the disputed domain name alone, be visiting
the website in the expectation that it is an official website of the Complainant and likely be a potential
customer looking for banking or investment services. There is clearly no intention to make use of the
disputed domain name for a legitimate purpose.

Furthermore, the content on the website to which disputed domain name resolves contains further infringements of the Complainant’s Trademarks and the Complainant is highly concerned that the Respondent may be using the website for potentially fraudulent purposes by seeking to appear connected with the Complainant’s business.

It is clear that the Respondent acquired the disputed domain name for the purpose of unfairly disrupting the business of the Complainant by deceiving customers into believing that the disputed domain name is one of the Complainant’s official websites. The fact that the website associated with the disputed domain name

purportedly offers banking, lending and investment services to customers is highly likely to confuse
consumers into thinking that the disputed domain name is registered to, operated or authorized by, or

otherwise connected with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s Trademarks is reproduced within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here the abbreviation “fcu”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with

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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Certainly, lacking a response and the facts of the record before it, the Panel agrees with the Complainant
that it is more likely than not that the Respondent will be using the website for potentially fraudulent purposes
by seeking to appear connected with the Complainant’s business. Therefore there is no (i) use of the
disputed domain name (or demonstrable plans for such use) with a bona fide offering; (ii) the Respondent is
not being commonly known by the disputed domain name and there is (iii) no legitimate noncommercial or
fair use.

Panels have held that the use of a domain name for illegal activity as described above can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel refers to its consideration under section 6B.

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Trademarks.

Panels have held that the use of a domain name for illegal activity as described above constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 <barclaysfcu.com> be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: January 18, 2024