WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S.A. v. Rebeca Gurgel Case No. D2009-1786 1. The Parties
Complainant is Banco Bradesco S.A. of Osasco, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is Rebeca Gurgel of Fortaleza, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2009. On December 28, 2009, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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 January 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 4, 2010. 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
Complainant was founded in 1943 in the city of Marília, state of São Paulo, Brazil, under the company name Banco Brasileiro de Descontos S/A.
During the 1990's, Complainant established its Insurance Group, offering, among other products, private retirement and pension plans. Complainant is nowadays the main company in the centre of one of the largest private owned Brazilian groups, to which is part “Bradesco Seguros S/A”, the Complainant's Insurance company. On the basis of accounts and records, Bradesco (and/or its affiliates) maintained in the regular course of business, in the year 2006, a total net worth of R$ 24,636 billion with total assets in the range of R$ 265 billion.
A research published by The Banker Magazine and also by Brand Finance, two of the largest financial magazines of the world, rated Bradesco as the most valuable banking segment brand in Latin America, receiving an AA rate.
Bradesco was also named the Best Bank in Brazil in the Euromoney Awards for Excellence 2009 as well as it was included for the first time by the BrandZ Top 100 Most Valueable Global Brands, in the 2009 edition.
The BRADESCO trade name and trademark, which derives from its first company name, Banco BRAsileiro de DESCOntos S/A., has been used for more than sixty years and are now well known within the Brazilian territory and abroad.
The importance of this mark was also recognized by the Brazilian Patents and Trademarks Office which declared the Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO “notorious” under the Brazilian Law No. 5,772/71 which foresees special protection to highly renowned marks.
BRADESCO'S trademark is the object of a large number of trademark registrations and trademark applications throughout the world.
Complainant is also the owner of approximately 108 trademark registrations/applications in Brazil, comprising the expressions BRADESCO and SEGURO, reflecting most of the insurance areas where the company operates.
Complainant is the title holder of, among others, domain names , registered on December 19, 2001, , registered on December 11, 1996 and registered on January 1, 1996
Respondent registered the domain name on July 11, 2009. 5. Parties' Contentions A. Complainant
Complainant asserts that it is evident that the disputed domain name is identical and equivalent to its BRADESCO trademark. Complainant also asserts that the disputed domain name is confusingly similar to the domain names , and .
Complainant contends that the “” or “net” suffixes only indicate a Brazilian domain name and the net top level domain, and is, therefore, irrelevant, as constantly reiterated in many decisions rendered in UDRP procedures, such as in Sanofi Aventis, Société Anonyme vs. B Ltd.,WIPO Case No. 2008-0014.
Complainant claims that the possibility of confusion is evident given that Internet users will immediately identify the disputed domain name with the Complainant's trademark and domain name, believing that both registrations identify the same company (which is not true given the undue registration and use made by the Respondent).
Complainant argues that “bradesco” is not a generic term, nor descriptive of Complainant's services, and is not a dictionary word either in the Portuguese, English, French or Italian languages. Complainant contends that “bradesco” is a coined word created by the Complainant decades ago, with a direct relation to its initial company name, Banco BRAsileiro de DESCOntos S/A.
Moreover, Complainant informs that a search conducted at the Brazilian Industrial Property Institute database demonstrates that the Respondent is not enrolled as titleholder of any trademark application or registration, for the “bradesco” expression or any other expression whatsoever.
Complainant argues that Respondent used pages which reproduced the Complainant's original website, which would be evidence that Respondent knew about the existence of Complainant's trademark registrations and domain names, which were matters of public record, before registering the domain name “”. Thus, Complainant argues that Respondent must be deemed to have had knowledge of Complainant's pre-existing rights in the BRADESCO trademark, as well as a domain name.
Furthermore, Complainant alleges that Respondent lives in Brazil, in Fortaleza, a city that counts with approximately 18 of Complainant's branches, and at least 45 independent ATM's. Also, Complainant alleges that it is the only Brazilian financial institution present in 100% of the Brazilian municipalities with approximately 53.5 million clients. In light of this expressive number of localities, agencies and clients, Complainant alleges that it is not unlikely that Respondent had no knowledge or never saw the BRADESCO trademark or trade name.
Complainant alleges that the registration of the disputed domain name was made with full knowledge of Complainant's rights over the BRADESCO trademark and that the disputed domain name was intentionally registered with the purpose of gaining profit from the fame and renown of the BRADESCO trademark and trade name, as it was used in connection with fraudulent scams.
Complainant alleges that the disputed domain name was registered in bad faith because whoever might have registered the BRADESCO trademark as a domain name could only be seeking an undue advantage (either by attempting to sell it or to divert the legitimate owner's clientele).
Complainant also asserts that Respondent does not have any relation with the BRADESCO trademark, as it is not a part of Respondent's name, nor is it the name, surname or nickname of Respondent.
Complainant finally contends that bad faith is demonstrated when domain name owner registered it with the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name, perhaps with the intention of selling it for a profit to Respondent. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant's BRADESCO and BRADESCO SEGUROS trademarks.
The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At around the time this decision was issued, the disputed domain name did not resolve to any webpage.
The Panel finds that the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent is deemed to have used and registered a disputed domain name in bad faith if, inter alia, the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant (Policy, paragraph 4(b)(i)) or if the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (Policy, paragraph 4(b)(ii)).
Complainant's allegations of bad faith are not contested. The trademark registrations of record confirm Complainant's allegations that it had long been using its BRADESCO and BRADESCO SEGUROS trademarks when the disputed domain name subjected to this Complaint was registered. The Panel finds that the Respondent must have been aware of the Complainant's rights in the trademarks BRADESCO and BRADESCO SEGUROS and, further, that Respondent knowingly infringed the Complainant's trademark when it registered the disputed domain name, with the intention to sell to the Complainant the disputed domain name, to attract internet traffic to its website or to divert Complainant's clients.
Complainant alleges that the disputed domain name has been used in connection with phishing scams. However, Complainant did not provide any evidence of phishing scams. Complainant has only provided e-mails sent by Complainant reporting the alleged scams. Even though Complainant's allegations regarding phishing scam associated with the disputed domain name have not been proved, the other evidence presented with Complaint are sufficient for the Panel to find that Respondent registered the disputed domain name in bad faith.
The Panel finds that Complainant has established 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 Complainant .
Eduardo Machado
Sole Panelist
Dated: March 6, 2010
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