WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S/A. v. Afonso Miranda Case No. D2010-0645 1. The Parties
The Complainant is Banco Bradesco S. A. of Osasco, Sao Paolo, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
The Respondent is Afonso Miranda of Sunnyvale, California, United States of America. 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 April 23, 2010. On April 23, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On April 29, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant and providing the relevant registration details for the disputed domain name. 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 May 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Cherise M. Valles as the sole panelist in this matter on June 7, 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
The Complainant is the second largest Brazilian economic group, concentrating primarily in the banking sector. The Brazilian trademark registration for “Bradesco” was filed on June 13, 1979, was granted on June 10, 1980 and remained valid until June 10, 2010. The Complainant registered the domain name on September 8, 2003 and the domain name on January 1, 1996.
The Respondent registered the domain name on January 11, 2010. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on April 23, 2010, the Complainant asserts that: The disputed domain name is identical to the trademark, Bradesco, in which the Complainant has rights.
The Complainant is the registered owner of the BRADESCO trademark in Brazil and in other countries. It also has several trademark applications pending in many countries. Copies of the Complainant's current and pending trade mark registration certificates were provided as Annexes 14 – 19 to the Complaint. As submitted in Annex 20, the Complainant is the registrant of more than a hundred domain names incorporating the term . In the first heading of Part V.4, the Complainant asserts that the disputed domain name, is identical to the trademark, Bradesco, owned by the Complainant. In the text, the Complainant asserts that the domain name at issue is “very similar” and “confusingly similar” to the Complainant's trademarks in the light of the fact that it incorporates its trademark in its entirety. The Respondent lacks rights or legitimate interests in the domain name
The Complainant states that BRADESCO is not a generic term and is not a word that is found in a Portuguese, English, French, or Italian dictionary. The term is a coined one which was derived from the first few letters of its name; Banco Brasilero de Descontos. The Bradesco trademark is so pervasive in Brazil and internationally that other persons would not legitimately choose identical or confusingly similar names unless they were seeking to profit from the fame and renown of the Bradesco trademark and trade name. Moreover, the Respondent does not have any rights or legitimate interests in the domain name . The domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on January 11, 2011, the Respondent undoubtedly had knowledge of the Complainant's well-known trademark. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with those well-known marks. Bad faith may be found where the Respondent tarnishes the trademark of the Complainant by associating the Complainant's trademark with the Respondent's misleading activities. In particular, the Complainant has submitted Annex 27 that illustrates the “phishing” scheme associated with the Respondent's domain name. As noted in Banca Intesa S.p.A. v Moshe Tal,WIPO Case No. D2006-0228
“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 for identity theft and other nefarious activities.
The Complainant asserts that the Respondent is, therefore, using the Complainant's mark in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and,
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent, having failed to respond in these proceedings, is in default and the Panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark “Bradesco”. The Complainant has submitted evidence of its trademark registrations in Brazil in Annex 14 – 16 of the Complaint. It has also submitted evidence in Annex 22 of the registration in Brazil of the domain name . The disputed domain name differs from the Complainant's trademark with the addition of the word “cadastro” and a hyphen before “bradesco”. Thus, the disputed domain name incorporates the Complainant's mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it will tend to be confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. The addition of the word “cadastro” does not detract from the confusing similarity to the trademark as that word means enrolment or registration in Portuguese. The Complainant has also registered the domain name . The trademark “bradesco” is so pervasive in Brazil and other countries that most internet users would associate the disputed domain name with the Complainant's trademark. It is also well-established that the top level of a domain name such as “.com”, “org”, or “biz” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, F. Hoffmann-LaRoche AG v. Digi Real Estate Foundation,WIPO Case No. D2005-1286. Therefore, the difference between the “.com” in the disputed domain name and the “.” in the Complainant's domain name is not germane.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's well-known “Bradesco” trademark. In the light of the widespread knowledge of “Bradesco” mark in Brazil and other countries, in the Panel's view it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who has registered the trademark “Bradesco”, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark “bradesco” in the disputed domain name.
The Respondent has not attempted to make any bona fide or legitimate non-commercial or fair use of the disputed domain name. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant's well known mark, and for the purposes of attracting internet users to its site for fraudulent purposes.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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;
(ii) the respondent has 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;
(ii) 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 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 the respondent's web site or location or of a product or service on its website or location.
“Bradesco” is a coined term, and not a generic or descriptive one. As the Panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain name in order to direct traffic to a website to be used for phishing purposes. This Panel is of the view that the Respondent registered the disputed domain name with full knowledge and for the express purpose of re-directing Internet users to its site in order to entice clients to input their banking details through the use of a phishing scam. Thus, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website in order to create a likelihood of confusion with the Complainant's well-known trademark.
The evidence in this dispute, in the Panel's view, supports the conclusion that the Respondent sought to profit from, or exploit the “Bradesco” trademark of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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.
Cherise M. Valles
Sole Panelist
Dated: June 18, 2010
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