WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S/A. v. Orlando Sodré Case No. D2009-0092 1. The Parties
The Complainant is Banco Bradesco S/A. of Osasco, Brazil, represented by Wilson Pinheiro Jabur, Brazil.
The Respondent is Orlando Sodré of Hollywood, Florida, United States of America, represented by Stephen H. Sturgeon, Esquire, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2009. On January 23, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 23, 2009, Network Solutions, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response February 18, 2009. The Response was filed with the Center February 18, 2009.
The Center appointed Dr. Clive N.A. Trotman, Alvaro Loureiro Oliveira and G. Gervaise Davis III as panelists in this matter on March 18, 2009. The Panel finds that it was properly constituted. Each member of 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 Center forwarded to the Panel an unsolicited Supplemental Filing from the Complainant dated February 27, 2009, being a reply to the Response. By Panel Order dated March 19, 2009 the Respondent was invited to reply by March 26, 2009 strictly to the substance of the Complainant's Supplemental Filing. The Respondent's reply was received by the Center on March 26, 2009. 4. Factual Background
According to the Complainant, it is known in Brazil and other countries as Brazil's largest private bank, having been in business since 1943. Its name is derived from Banco BRAsileiro de DESCOntos S/A. It is now part of the BRADESCO Group of companies. The Complainant's trademark is registered in about 30 countries or groupings including Brazil, where the Complainant is domiciled, and the United States of America, where the Respondent's address is located.
Specimen trademark registrations in the Complainant's name include:
BRADESCO, Brazil Ministry of Industry and Commerce, filed June 13, 1979, registered June 10, 1980, number 007170424, officially annotated “notorious” under Brazilian law by the Director of Marks.
BRADESCO service mark, United States Patent and Trademark Office, filed April 17, 1997, registered May 4, 1999, number 2243427, classes 100, 101 and 102.
The Complainant is also the owner of more than 100 domain names incorporating the expression “Bradesco” including and .
The disputed domain name was apparently first registered by the Respondent on March 19, 1997.
According to the Respondent, he is the proprietor of Brazilian Design Company (Bradesco). 5. Parties' Contentions A. Complainant
The Complainant submits an affidavit sworn by two Vice-Presidents of the company outlining its history and status.
All significant contentions were accompanied by detailed documentation appended.
The Complainant contends, on the facts that it has been in business since 1943 and is now well known internationally as a Brazilian bank with about 1000 agencies. Company accounts are submitted in substantiation. The company has been highly rated in The Banker and Brand Finance magazines.
The Complainant's name, derived from Banco BRAsileiro de DESCOntos S/A., has been used for more than sixty years. Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO has been declared “notorious” and has special protection under Brazilian law. The Complainant has submitted an extensive list of its trademark registrations world wide for BRADESCO. In the United States of America (where the Respondent is domiciled) the Complainant is the owner of the trademark registrations BRADESCO, BRADESCO BANK OF PLANET and BRADESCO PLANET BANKING.
The Complainant says that it has studied the history of the disputed domain name since its first registration with the aid of and the Wayback Machine web archive. For several years no web page was available. Recently the website has been dedicated to those with the name Sodré, which is a very well known family name in Brazil, and is written partly in the Brazilian dialect of Portuguese.
The Complainant sent a warning letter, in Portuguese, to the Respondent and its website hosting company on September 11, 2003, repeated on later occasions, requesting transfer of the disputed domain name. After various promises and replies, there was no conclusion.
The Complainant contends in the terms of the Policy and the law that the disputed domain name is identical to the trademark BRADESCO in which the Complainant has rights. The disputed domain name is also confusingly similar to domain names owned by the Complainant, including registered on January 1, 1996 and registered on July 2, 1996.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has never had any relationship with the Respondent. The trademark word BRADESCO is not a generic term, nor descriptive of the Complainant's services, and is not a dictionary word in Portuguese, English, French or Italian. BRADESCO is a coined word created by the Complainant, derived from Banco BRAsileiro de DESCOntos S/A.
There are no known records of the Respondent having applied for or registered the trademark BRADESCO or anything similar.
The Respondent knew or should have known of the existence of the Complainant's trademark, being a matter of public record. Thus, the Respondent must be deemed to have had knowledge of the Complainant's pre-existing rights in BRADESCO as a trademark. This can also be inferred from the Respondent's other domain name registrations including , , , and . If the Respondent was not aware of the Complainant's rights, then it did not fulfill its responsibility under the UDRP to ensure that it did.
There is no connection between the BRADESCO trademark and the “Sodre” name to which the Respondent's website related.
The Complainant further contends that the disputed domain name was registered and used in bad faith. The registrant could only be seeking an undue advantage either by attempting to sell it or to divert the legitimate owner's clientele. The Complainant cites Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, to the effect that the possession of a domain name obviously connected with a complainant or its product suggests that its use by another is opportunistic bad faith.
The Complainant contends that the diversion of Internet users to the Respondent's website represents bad faith. The Respondent profits from sponsored advertisements and links to the Complainant's competitors, including Banco do Brasil and Unibanco.
The Complainant cited a number of prior UDRP decisions for consideration as possible precedent. B. Respondent
The Respondent denies the Complaint. His contentions are directed essentially at the Policy and law, commencing with an assertion that the UDRP is directed towards the abuse of the domain name registration process. In all aspects of it Response the Respondent helpfully cites numerous previous UDRP decisions and abstracts in support of its contentions. The Respondent's contentions include, but are not limited to, the following.
The Respondent contends that the Complainant must prove that the Respondent has no rights or legitimate interest in the disputed domain name but has failed to do so. The Respondent says that he has a legitimate interest in respect of the disputed domain name, and has not registered and used it in bad faith. He is not a malicious cybersquatter. The Respondent is in the business of hosting and designing websites and planned to utilize the disputed domain name for that purpose.
In the terms of Paragraph 4(c) of the Policy, the Respondent says that he has engaged in demonstrable preparations to utilize the disputed domain name for the marketing of products and services that are unrelated to any product or service for which the Complainant alleges to have trademark rights. UDRP decisions have emphasized that an important point in determining legitimate interest is that Respondent's plan for, or use of, the domain name is more than “mere passive holding”. The Complainant has not offered any proof that the Respondent is trying to attract Internet users by confusion. The Respondent says this is confirmed by his Affidavit.
The Respondent argues that the threshold is very low for the determination of whether a Respondent has a legitimate right to a domain name. Panelists have determined that there is a right and legitimate interest in respect of a domain name when the preparation to utilize a domain name is much less extensive than the preparation by the present Respondent.
The Respondent contends that the disputed domain name was purchased for the purpose of website design under the company name Brazilian Design Company, abbreviated Bradesco (submitted Affidavit refers). The business does not infringe any trademark and is bona fide.
The Respondent replies to a number of the Complainant's individual points as follows.
The Complainant alleges that since the term “bradesco” is not a generic term, is not descriptive of the Complainant's services and is not a dictionary word, then Respondent somehow cannot have any rights to use the term. The Respondent replies that this is erroneous. Anyone can use the term “bradesco” provided it is not utilized for the very narrow services for which a trademark has been obtained. He says the Complainant did not obtain a trademark for the services of website hosting or design, therefore the term can be utilized to describe these or other types of goods or services.
The Complainant alleges that because the Respondent does not have a trademark for the term, he has no right to use it. The Respondent replies that anyone has the right to use the term as long as it is being utilized for a product or service that is not trademarked.
The Complainant alleges that the Respondent “must be deemed” to have had knowledge of Complainant's pre-existing rights. The Respondent replies that he or anyone can utilize a term or a domain name as long as it does not infringe on trademark rights. This does not prove that the Respondent did not have a right to use the term for something unrelated to banking services. Furthermore, the domain name was registered in 1997 when the Complainant did not have a trademark in the United States of America. Also 1997 was before the enactment of the UDRP which contains statements about a respondent's search to determine whether a domain name term is trademarked. The Respondent did not intend to utilize the domain name in an infringing manner and did not do so.
The Complainant alleges that the Respondent somehow did not fulfill its responsibility [that “registration of the domain name will not infringe upon the rights of any third party.”]. The Respondent replies that the registration did not infringe on the trademark rights of Complainant since it was intended and planned to be used for a completely different service from banking. The Complainant did not have a trademark in the United States in 1997 and this was prior to enactment of the UDRP.
The Complainant alleges that the term “bradesco” does not have any connection to the Respondent's family name of Sodre. The Respondent's replies that any domain name can be redirected to any other website, provided that there is not trademark infringement. There is obviously no trademark infringement in this situation. The family name Sodre does not infringe on the Complainant's trademark for banking services. The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in respect of the domain name and has failed to do so.
The Respondent says that although the Respondent does not have the burden of proving that it does have rights or legitimate interests in the domain name, it has done so.
The Respondent contends that the Complainant has not proven either use or registration in bad faith, and is required to prove both.
The Respondent replies to a number of the Complainant's individual points relating to bad faith as follows.
The Complainant alleges that the registrant could only be seeking an undue advantage (either by attempting to sell the disputed domain name or divert the legitimate owner's clientele). The Respondent replies that he has never attempted to sell the disputed domain name or attempted to divert clientele. No money was ever made by the Respondent from any information or advertisements placed by the registrar.
The Complainant alleges that Respondent does not have any relation to the term “Bradesco”. The Respondent replies, with reference to the affidavit submitted, that it is an abbreviation for his company name.
The Complainant alleges that the disputed domain name is so connected with the Complainant that its use by anyone other than the Complainant suggests opportunistic bad faith. The Respondent replies that there is no indication of opportunistic bad faith. The Respondent registered the disputed domain name for his company. He has never made any profit from it or attempted to make any profit from it.
The Complainant alleges that bad faith is indicated by some type of “redirection” (apparently referring to some information or advertisement that the registrar may have placed on the disputed domain name website). The Respondent replies, with reference to his affidavit, that he did not cause any “redirection” and did not make any money whatsoever from any information that the registrar may have placed.
The Complainant cites Telstra Corporation Limited vs. Nuclear Marshmallows (WIPO Case No. D2000-0003) as precedent. The Respondent replies that none of the references to indicators of bad faith therein are present in this case. Specifically, several paragraphs of the Respondent's Affidavit specifically prove that the indicators were not present. C. Complainant's Supplemental Filing
In so far as the Supplemental filing adds new evidence or assertions, the Complainant contends that the Respondent's claimed Brazilian Design Company has never existed. A search conducted before the Florida State commercial registry, where Respondent is domiciled, disclosed no record of such a company, past or present. The enterprises Sodrenet, Sodre & Rocha and Genesis Computer & Electronics are the only companies ever owned by the Respondent, according to the Florida registry of companies, all of them inactive due to non compliance with Florida State legal requirements (lack of annual report filing).
The non-existence of Brazilian Design Company (Bradesco) or a similar trademark application by the Respondent, coupled with the Complainant's ownership of the trademark, points to an abusive registration.
The Complainant contends that the Respondent has registered the domain names ; ; ; and , and submits documentary evidence in respect of the last three. These have nothing to do with the Respondent's design company but are linked to banking. This is an indication of cybersquatting (cyberpiracy).
The Complainant contends in effect that the Respondent's defense consists of a made-up story, not plausible and not evidenced by proof but on a single affidavit, not sworn, and which contains further false allegations. The Respondent has the burden of proof of rights or legitimate interests in reply to the Complainant's prima facie case to the contrary.
The Complainant contends that the Respondent has not developed a website around his claimed business, that his excuses for not doing so are implausible, that the disputed domain name links to other of the Respondent's websites, and that a purpose is to derive revenue by means of click-through links to advertisers including competitors of the Complainant. When the Respondent's website operated as a generic search portal, viewers were sometimes redirected to adult material. The Complainant does not accept that this was done by the registrar without influence from the Respondent.
The Complainant rejects the Respondent's statement that “Bradesco” would be a descriptive name. It was coined out of the Bank's former trade name. The Complainant rejects the Respondent's statement that the “Bradesco” trade name and trademark can be used by anyone, given its trademark status even outside of banking.
The Complainant contests the implications of the Respondent's statement that the BRADESCO trademark was not registered in the United States at the relevant time. Under common law, use is more important that the registration and the BRADESCO trademark has been in use in the United States of America since 1981, with trademark applications filed in 1993 and 1996. D. Respondent's Supplemental Filing
In essence the Respondent reasserts the existence of the Brazilian Design Company and says that the Complainant did not provide evidence that the records searched for that company contain a listing of all existing companies. The Complainant did not provide any evidence that all businesses must be included in the searched records and in fact many businesses are not so registered. The Respondent had no need to keep business records for 12 years in case proof were needed.
Numerous decisions have confirmed that the UDRP process is limited to abusive
registrations of domain names and not trademark disputes (more than 20 decisions cited). 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ”complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The Respondent asserts that this dispute is not about abusive registration but is a trademark dispute outside the aegis of the UDRP. The Panel finds that the Complainant has sufficiently stated a Complaint of abusive registration for the matter to be heard. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of
the Parties.” The Complainant submitted an unsolicited Supplemental Filing in reply to the Response. Whilst not welcoming supplementary material that could have been provided in the first instance, the Panel, having read it, decided that in the interests of natural justice and equal treatment of the Parties in this case, the Respondent should be invited to reply strictly to the Complainant's Supplemental Filing. In the event much of the Supplemental Filings were repetitive and reiterative of what was previously filed. A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark to which the disputed domain name is identical or confusingly similar. On ample evidence the Complainant has rights in the trademark BRADESCO in Brazil, the United States of America and world wide. The disputed domain name is , of which the gTLD descriptor “.net” is disregarded in the determination of confusing similarity under the UDRP. What remains is “bradesco” which is identical to the Complainant's trademark and the Panel so finds in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name. Since this requires the proving of a negative, conventionally the Complainant is expected to make out a prima facie case that the Respondent may refute in the terms of paragraph 4(c) of the Policy or in any other way that satisfies the Panel.
The Complainant asserts that it has never had business dealings with the Respondent and has not authorised him to use the trademark BRADESCO in any way. In anticipation of the Respondent's replies under paragraph 4(c) of the Policy the Complainant says that having made reasonable enquiries it finds no evidence that the Respondent has made demonstrable preparations to use the disputed domain name or a similar name in connection with a bona fide offering of goods or services, or been commonly known by the disputed domain name, or made a legitimate noncommercial or fair use of it without intent for commercial gain to divert consumers or tarnish the Complainant's trademark.
The Complainant has made out a prima facie case and the onus shifts to the Respondent to prove his rights or legitimate interests in the disputed domain name. The Respondent states that he is the proprietor of Brazilian Design Company, for which an acronym is “Bradesco”, which is identical to the Complainant's trademark. He says that this business has existed for 12 years and is for web design purposes. A business plan, evidently dating to about 1998 or earlier, is submitted in evidence. The Respondent's claims fall within the terms of paragraphs 4(c)(i) and 4(c)(ii) of the Policy, either of which, depending on the circumstances, may be sufficient for a respondent to succeed.
The Respondent has not submitted any evidence in support of his claims that the Brazilian Design Company has ever existed. In an affidavit the Respondent says that he acquired the disputed domain name in 1997 in relation to his web hosting business and refers the Panel to two attachments (A and B) as providing proof. Document A, page 1 is a screenshot from the Florida Department of State Division of Corporations website for the entity Sodrenet Internet Service Corp. (filed 1996, status inactive). It is filed under the same address as the Respondent but makes no mention of Brazilian Design Company, Bradesco or similar. Document A, page 2 is headed “Proof that for Respondent's hosting company has been registered since 1997 Whois information for ”. It confirms the registration of the domain name in the name and address of the Respondent with a creation date of June 3, 1996 but makes no mention of Brazilian Design Company, Bradesco or similar. Document B is a 15 page “Business Plan for an Internet Service Provider”, evidently dating from about 1998. It makes no mention of Brazilian Design Company, Bradesco or similar. Thus none of the proof of his company activities advanced by the Respondent makes any reference to a Brazilian Design Company.
Notwithstanding the Respondent's plea that he has not retained any records of the Brazilian Design Company, the fact remains that there is no evidence whatsoever that a company called Brazilian Design Company ever had any real substance in the hands of the Respondent. Even if it had, it would not necessarily have given the Respondent the right to create an acronym that conflicted with the invented, special and non-dictionary word that is the Complainant's trademark. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
The above four circumstances are not exclusive and bad faith may be found alternatively. Taking an overview of the evidence, the Respondent is in possession of a domain name identical to the Complainant's trademark. The Respondent ought to have known of the trademark and in fact does not deny in the Response or affidavit that he did, rather asserting that he was entitled to use it for the Brazilian Design Company.
This assertion is comprehensively negated by evidence proving the Respondent to be the registrant of the domain names and , all created on October 30, 2001. This evidence makes it practically impossible for the Respondent to refute that the connection between the acronym “bradesco” and the business of banking has long been in his mind. Further evidence supports the inference that the Respondent has at least a partial Brazilian presence or connections and therefore a likely knowledge of the Complainant. For example the Complainant says that the Respondent's family website as of February 6, 2008 is written partly in Portuguese of the Brazilian dialect. The Respondent personally has conversed with the Complainant's counsel in Portuguese. The Respondent's business plan at section 7, referring to an employee of his ISP business, says “... he is located in San Paulo, Brazil”.
It may reasonably be deduced that the Respondent holds domain names including for a purpose different from what he says, and that he is aware that the authentic holder of the trademark BRADESCO is a Brazilian bank. In the light of the well-exercised models prevailing on the Internet, the intention may be to await a profitable offer from the legitimate trademark owner or a competitor, or to collect revenue from the diversion of Internet users to advertised links for a commission, relying on attracting the visitors in the first place by their confusion over the source or origin of a website called “”.
It is also noted that the Respondent has made minimal use of the disputed domain name over many years, constituting a passive holding. Since some of the earliest UDRP decisions it has generally been held that non-use of a disputed domain name, corresponding to another's trademark, may fall within the meaning of bad faith use (Telstra Corporation Limited vs. Nuclear Marshmallows,WIPO Case No. D2000-0003).
It is not necessary for the Panel to deduce the Respondent's motives. Having regard to all the circumstances the Panel finds that the Respondent's registration and holding of a domain name comprising in its entirety the widely known trademark of a bank, of which on the balance of probabilities he must reasonably have been aware and without any rights or legitimate interests, in and of itself, is sufficient in this case for a finding of bad faith (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). The Panel finds bad faith registration and use proven within the meaning of paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Dr. Clive N. A. Trotman
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
G. Gervaise Davis III
Panelist (Concurring)
Dated: April 22, 2009
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