WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S.A. v. Marciano Martins Case No. D2010-0201 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 Marciano Martins of Caracas, Venezuela. 2. The Domain Name and Registrar
The disputed domain names and are registered with Tucows, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2010. On February 11, 2010, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the disputed domain name(s). On February 11, 2010, Tucows, 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 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2010.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on March 23, 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.
On April 7, 2010, the Panel issued Procedural Order No. 1, in which the Complainant was requested to provide certain documents set out in the Annexes to the Complaint by no later than April 12, 2010. The Complaint responded in a timely fashion to this request. 4. Factual Background
The domain name registrations at issue are , registered on August 18, 2009, and , registered on August 25, 2009 (the “Domain Names”). Both domain names are registered in the name of Marciano Martins.
The Complainant states in its Complaint that it is the owner of the mark BRADESCO in International Class 36 (hereinafter: BRADESCO or the “Mark”), no. 007170424, which was registered in Brazil with the National Institute of Industrial Property (hereinafter: the “BNIIP”) on June 10, 1980 (Annex M to the Complaint), and which was last renewed for a ten-year period on June 10, 2000 (Annex K to the Complaint). The Mark has been recognized by the BNIIP as a “notorious” mark. The Complainant is also the owner of Brazilian trademark registrations for BRADESCO INTERNET BANKING and BRADESCO NET INTERNET BANKING.
The Complainant is the registered owner of the Mark in countries other than Brazil as follows: Argentina, Aruba, Barbados, Bolivia, British Virgin Islands, Canada, Chile, China, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, European Community, Guatemala, Honduras, Hong Kong, India, Indonesia, Israel, Jamaica, Japan, Mexico, Netherlands Antilles, Nicaragua, Panama, Paraguay, Peru, Puerto Rico, Russia, Singapore, South Africa, United Kingdom of Great Britain and Northern Ireland, Trinidad and Tobago, Turkey, United States of America, Uruguay and Venezuela (unnumbered Annex to the Complaint).
The Complainant is the owner, inter alia, of the domain names (unnumbered Annex to the Complaint) and (unnumbered Annex to the Complaint). 5. Parties' Contentions A. Complainant
The Complainant is the principal company of the second largest privately-owned enterprise in Brazil, the BRADESCO Group of companies. The Complainant began its operations in 1943 in the State of São Paulo (Marilia) under the name of Banco Brasileiro de Descontos S/A. Since that time, its activities have expanded and it acquired numerous other banks, reaching over 1000 agencies by the end of the 1980's. For the year 2006, the total net worth of the Complainant and its affiliates was valued at R$24,636 billion, with total assets in the range of R$265 billion.
The Banker Magazine (unnumbered Annex to the Complaint), and Brand Finance Global Banking 500 (unnumbered Annex to the Complaint), two leading financial magazines, rated Bradesco as the most valuable branding segment in Latin America. Euromoney Awards for Excellence 2009 named Bradesco the top bank in Brazil (unnumbered Annex to the Complaint). Bradesco was included for the first time in 2009 among the BrandZ Top100 Most Valuable Global Brands (unnumbered Annex to the Complaint).
The Mark (BRADESCO) was derived from the initial name of the bank, Banco BRAsileiro de DESCOntos S/A over 60 years ago. The Mark is the subject of a large number of registrations and applications both in Brazil and in numerous countries throughout the world. As such, the Mark is well-known both in Brazil and abroad.
The Respondent registered the Domain Names on August 18, 2009 and August 25, 2009, respectively. From the moment of their registration, the sole purpose for the registration has been to profit unjustly from the reputation of the Mark and the activities of the Complainant. It has done so by using the Domain Names to lure surfers and clients of the Complainant to input their banking data by means of use of a phishing scam. “Phishing” has been described by one Panel as follows:
“Phishing' is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used to identify theft or other nefarious activities.” Sanofi Aventis, Société anonyme v. B Ltd.,WIPO Case No. DNL2008-0014)
More particularly, the Respondent has used the Domain Names to direct Complaint's customers to false pages that give the impression that they are connected with the Respondent. It does so by reproducing the Complainant's website. Other than this, no webpage for either of the Domain Names was found. The purpose of so doing is to entice clients of the Respondent to disclose private confidential data about themselves.
Shortly after registration of the Domain Names, on August 21, 2009, and September 14, 2009, respectively, the Respondent sent warning letters to the host server identified for the respective IP addresses, advising that the Domain Names were being used for unlawful phishing activities (unnumbered Annex to the Complaint). On the same respective dates, email communications were sent to the registrar, requesting that it block the Domain Names (unnumbered Annex to the Complaint).
Knowledge of the Complainant's rights may be presumed because the Mark is a registered mark that has been designated as notorious by the BNIIP. The Mark is identified with one of the best-known banking organizations in Latin America. The very use of the Domain Names to exploit the Marks in order to enable the Respondent to carry out its unlawful activities shows that the Respondent had knowledge of the Marks. Moreover, the Respondent does not have any registration or application, including on either the Argentine PTO or the BPTO for BRADESCO ALTERAS, or BRADESCO INTERNET BANKING, or any other registered mark or application containing the word “BRADESCO”.
The Respondent also had actual knowledge of the Complainant's rights. Counsel for the Respondent sent email communications to the Respondent on September 11, 2009 (unnumbered Annex to the Complaint) and January 6, 2010 (unnumbered Annex to the Complaint). These communications set out the Complainant's ownership of the Mark and the applicable law that grants to the Complainant exclusive rights therein. The Respondent was requested to immediate stop all use of the Mark in the Domain Names. No response to these communications was received by the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In view of the Respondent's failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant's undisputed representations and shall draw inferences that it deems appropriate. In this connection, most, but not all of the factual allegations set out in the Complaint, are supported by appropriate documentary evidence in the Annexes.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) The domain name registered by the Respondent 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. A. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. In this light, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. Accordingly, with a view to section 4 above, the Panel finds that the Complainant has rights in the name and mark BRADESCO and that the Domain Names registered by the Respondent are confusingly similar thereto.
The Complainant has established that it has registered rights in the mark BRADESCO, both as a word mark and as the dominant part of compound word marks, in Brazil. It has also provided a list of registrations in various other countries throughout Latin America and elsewhere. The Mark is also alleged to have been recognized as a notorious mark by the BNIIP. The registered rights of the Complainant in the Mark date back to the year 1980.
The domain name , while not identical to the Complainant's name or the Mark, differing by the addition of the formative “alteras” to the domain name, is confusingly similar to the Mark within the meaning of paragraph 4(a)(1) of the Policy. It is a well-established principle that in comparing two marks, or a mark and a domain name, with respect to a likelihood of confusion, special attention should be paid to the dominant part of the mark as compared to the dominant part of the Domain Names. Here, the first part of the domain name is identical to the Mark. More generally, in Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin,WIPO Case No. D2003-0888, the Panel noted that it “[i]t has been held that a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP.” That is the situation in our case.
The Panel reaches a similar conclusion regarding the domain name . In addition to the conclusions reached above in connection with the mark BRADESCO, this domain name is similar to the registered marks BRADESCO INTERNET and BRADESCO NET INTERNET BANKING, both of which are allegedly owned by the Complainant.
Further, when a generic or highly descriptive term is added to a mark or name in which the Complainant has rights, the addition of the generic or highly descriptive term does not necessarily serve to distinguish between the Mark of the Complainant and the domain name of the Respondent. As the Panel noted in the case of Dr. Ing. H.c.F. Porsche AG, supra, “[t]he fact that the word “auto parts” is added to the Complainant's trademark does not eliminate the identity, or at least the similarity, between Complainant's trademark and the disputed name, as “auto parts” is a descriptive component of the disputed domain name.” Here, the formative “Internet banking” is highly descriptive, if not generic, such that the observation made by that Panel applies as well to the instant matter.
For all of the foregoing reasons, the Panel rules that the domain names and are confusingly similar to the Complainant's name and mark BRADESCO. B. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
There is no evidence that the Respondent has registered any mark that consists of, or contains, the word BRADESCO, or that it has any right on an unregistered basis in such a mark. As well, there is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the word BRADESCO. The only “use” by the Respondent of the word BRADESCO is in connection with its registration of the Domain Names in August 2009. Moreover, having regard to the three suggested grounds set out in Paragraph 4(c) of the Policy, whereby a Respondent may support a claim that it has rights or legitimate interest in the Domain Name, the Respondent has not submitted any response to support such a claim.
Based on the foregoing, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name. C. Registered and Used in Bad Faith
Here, as well, it is noted that the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
The Respondent's use of the fanciful mark BRADESCO in its entirety as the major component of the Domain Name, in circumstances in which the Respondent has no rights or legitimate interest in the Mark, raises in this Panel's view a likely presumption that the Respondent has acted in bad faith. Based on the uncontroverted allegations of the Complainant, there appears to be no other plausible explanation for the Respondent's selection of the Domain Names, except to exploit in an unauthorized fashion the reputation and goodwill of the Complainant in the Mark to carry out phishing activities aimed primarily at obtaining valuable private information about the Complainant's customers.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) The circumstances indicate that the Respondent has registered the domain name primarily to sell or otherwise to transfer it to the Respondent for valuable consideration to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant.
(ii) The domain name has been registered to prevent the Complainant from reflecting its mark in a corresponding domain name.
(iii) The domain name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the domain name indicates an intention to attract Internet users to the Respondent's website, for commercial gain, by creating a likelihood of confusion.
The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply and support the conclusion that the Respondent has acted in bad faith. The Complainant has described a pattern of conduct, a phishing scheme if you will, carried out by the Respondent with respect to its adoption and use of the Domain Name. The sole intention of the Respondent in so doing is to create a likelihood of confusion among Internet users in order to the attract them to the Respondent's website and to reap commercial gain from the personal information obtained from customers of the Complainant.
The Respondent makes no other use of the Domain. As well, the Respondent has presumed knowledge of the rights of the Complainant in the Mark. There is no other plausible explanation for the Respondent's selection of the Domain Names, except to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its name and marks, including the Mark. As noted by one Panel, “… bad faith will be found when a domain name is so obviously connected with the complainant or its product that its use by anyone other than the complainant suggests opportunistic bad faith.” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. In particular, a “domain name is registered in bad faith … [when] The Respondent appears to be engaged in Phishing.” Banca Intesa S.p.A. v. Moshe Tal,WIPO Case No. D2006-0228. That is the case here.
Based on the foregoing, the Panel is of the view that the Respondent has registered and used the Domain Name in bad faith. 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 names, and , be transferred to the Complainant.
Neil J. Wilkof
Sole Panelist
Dated: April 19, 2010
Full & Egal Universal Law Academy