WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S/A v. Gilberto Costa Case No. D2009-0148 1. The Parties
The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
The Respondent is Gilberto Costa of Rio de Janeiro, Rio de Janeiro, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2009. On February 4, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On February 4, 2009, eNom, Inc. 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 on February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 13, 2009. 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.
Due to a problem with the e-mail notification of the Complaint the Panel instructed the Center to re-send the e-mail notification of the Complaint to the Respondent, using the Respondent's contact information provided by the Registrar. The second notification was made on March 26, 2006 and the due date for Response was, therefore, April 14, 2009. The Respondent did not submit any response. Accordingly, the Center re-notified the Respondent's default on April 15, 2009. 4. Factual Background
The Complainant (Banco Bradesco S.A.) is a bank, considered to be one of Brazil's largest corporations.
The Complainant's trademark “BRADESCO” (which derives from its initial name Banco BRAsileiro de DESCOntos S.A.) is registered in many countries and has been used for more than sixty years. The trademark was also declared to be notorious by the Brazilian Patent and Trademark Office in 1984.
The Complainant has also many domain names incorporating the word “BRADESCO”, including the domain name , registered in 1996.
The Respondent (Gilberto Costa) registered the domain name on February 14, 2008. The Respondent uses the disputed domain name in connection with a pay-per-click (“PPC”) parking page.
When the Panel accessed the website at the disputed domain name, it showed a list of links for insurance, credit cards, education online and others. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The domain name is identical and equivalent to the BRADESCO trademark over which the Complainant has prior rights.
The domain name is also confusingly similar to the domain name registered on January 1, 1996. The BRADESCO trademark is so well known and so unique that the expression that springs out from both domain names is the “bradesco” word. The expression “24hs” only means that the bank can be accessed twenty-four hours a day, as most Brazilian banks are, and therefore meaningless. The “.” or “.com” suffixes only indicate a Brazilian domain name and a top level domain, therefore irrelevant.
(ii) The Respondent lacks rights and legitimate interest in the disputed domain name.
“Bradesco” is not a generic term, nor descriptive of the Complainant's services, and is not a dictionary word either in the Portuguese, English, French or Italian languages.
The Respondent does not have a trademark application, much less a registration, or any indication that the use of the BRADESCO trademark and domain name is lawful and legitimate.
The Respondent knew or should have known of the existence of the Complainant's trademark registration and domain name registration, which were matters of public record, before the Respondent registered the disputed domain name.
The Complainant has constantly and extensively used the BRADESCO trademark in Brazil since 1979. On the other hand, the Respondent registered the disputed domain name only last year.
No consent or license has been granted to the Respondent.
(iii) The disputed domain name was registered and used in bad faith.
The use and registration of the domain name has been proved to be a counterfeit, used to defraud Banco Bradesco's clients in a phishing scheme, attempting to obtain bank account and other confidential information through the use of a domain name reproducing a notorious trademark and trade name of a Brazilian traditional financial institution. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, the Complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Regardless of the fact the Respondent failed to submit a response, the Panel shall consider whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
The Complaint Annexes I to K prove that the Complainant has had rights in the BRADESCO trademark since at least 1979.
The trademark is wholly encompassed within the disputed domain name.
The domain name also contains the descriptive expression “24hs”, which is commonly used by Brazilian banks to indicate that their operation is available during the whole period of a day (mainly on the Internet). However, this circumstance is not sufficient to refute the confusingly similar requirement under Paragraph 4(a)(i).
In a previous UDRP case, concerning the domain names and , the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, ltd.,WIPO Case No. D2008-0954).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 trademark at issue.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the disputed domain name. The use of the domain name can not be considered to be noncommercial or fair. Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent 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 its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Panel has had little difficulty in concluding that the circumstances referred on Paragraph 4(b)(iv) are present in the instant case.
The disputed domain name encompasses the Complainant's trademark BRADESCO (together with the expression “24hs”) and is being used as a pay-per-click landing page, displaying sponsored links for third party websites.
Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant's trademark and with the Complainant's operation on the Internet;
(ii) obtains clickthrough revenue from this practice; and
(iii) promotes products and services offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Furthermore, the Complainant has also shown that at the time of the filing of the Complaint the Respondent used the corresponding website for “phishing”. “Phishing” is a fraudulent process of attempting to acquire sensitive information such as usernames and passwords by masquerading as a trustworthy website. Under “phishing” activities, users are usually directed to enter their personal data at a fake website whose look and feel are almost identical to the legitimate website of a bank such as the Complainant. Such practice does not constitute a bona fide use of the domain name (see Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa, WIPO Case No. D2006-0614; Halifax plc v. Sontaja Sanducl, WIPO Case No. D2004-0237; CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; Finter Bank Zürich v. N/A, Charles Osabor, WIPO Case No. D2005-0871; and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228).
Accordingly, the Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain name in bad faith, satisfying the third element 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.
Rodrigo Azevedo
Sole Panelist
Dated: April 19, 2009
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