Complainant is Banco Bradesco S.A. of Osasco, São Paulo, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is Angela Oster of São Paulo, São Paulo, 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 July 20, 2010. On July 21, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On July 23, 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 Respondent of the Complaint, and the proceedings commenced on July 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2010.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 20, 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 is one of the largest Brazilian banks with activities that date back to 1943. The term “bradesco” is a fanciful one and it was formed as an acronym of the first business name of Complainant, “Banco Brasileiro de Descontos S/A”. Complainant currently has total assets of R$ 265 billion.
Bradesco is one of the most valuable brands in the banking business and Complainant owns registrations worldwide for trademarks containing the fanciful term “bradesco”, including, among others, the Brazilian registration No. 007170424, for the word mark BRADESCO, filed on June 13, 1979.
Complainant also owns several domain names, among which are (since September 8, 2003) and (since January 1, 1996). Complainant’s web page may be accessed under both such domain names.
Respondent registered the disputed domain name on January 23, 2010. The term “recadastramento” that is part thereof belongs to the Portuguese language and it means in English “re-enrollment”, or “re-registration”. 5. Parties’ Contentions A. Complainant
Complainant holds that the disputed domain name is identical or confusingly similar to its registered trademark BRADESCO and to its domain name . Complainant claims that Respondent only registered the disputed domain name in order to send to Complainant’s customer’s so-called “phishing” emails with false information in order to lure such customers to access Respondent’s web page hosted under the disputed domain name. Once Complainant’s customers had accessed Respondent’s web page there was a computer program to be downloaded (commonly known as “crimeware”) which would steal the customers confidential data which could then be used for Respondent to obtain illicit profits. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
The trademark BRADESCO is a widely known trademark. When a respondent merely adds generic or descriptive terms to an otherwise distinctive and widely known trademark, the domain name is in appropriate circumstances to be considered confusingly similar to the registered trademark. In this case, Respondent added to Complainant’s trademark the generic term “recadastramento“, which means in English “re-enrollment”, or “re-registration”.
There are numerous UDRP decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BRADESCO trademark and, thus, the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The disputed domain name was registered on January 22, 2010, that is, several years after Complainant’s registrations for the trademark BRADESCO. Therefore, considering that Complainant’s trademark is widely known in Brazil, the same country of residence of Respondent, the Panel finds that the latter must have been aware of Complainant’s trademark at the time of registration.
In addition, according to Complainant, Respondent does not run any legitimate business activity in connection with the disputed domain name. On the contrary, on the website associated with the domain name, Respondent apparently tried to upload a damaging computer program (“crimeware”) into the computers of Complainant’s customers. Given the circumstances of this case, and considering that the website associated with the disputed domain name is now inactive, the Panel concludes that the disputed domain name is not used by Respondent in connection with any bona fide offering of goods and services.
Accordingly, Complainant established a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no right or legitimate interest in respect to the domain name (Policy, Paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
According to Complainant, Respondent registered the disputed domain name in order to engage in activities of “phishing” and of uploading into the computers of Complainant’s customers damaging computer programs (“crimeware”) which would steal such customers’ confidential information.
The choosing of the term “recadastramento” by Respondent had the obvious purpose of making Complainant’s customers believe that they were downloading a legitimate program required by Complainant, in order for such customers to be re-registered in Complainant’s web site.
The illegitimate use of confidential information of Complainant’s customers constitutes bad faith registration and use, as decided among others in Halifax Plc. v. Sontaja Sanduci,WIPO Case No. D2004-0237: “In particular, the availability of the online registration pages, and the apparent potential for ‘phishing’ and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith.”
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark and that Complainant has proven that Respondent’s registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under 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.
Gabriel F. Leonardos
Sole Panelist
Dated: October 4, 2010
Full & Egal Universal Law Academy