The Complainant is Banco Bradesco S.A. of Vila Yara, Osasco, Brazil, represented by Salusse Marangoni Advogados, Brazil.
The Respondent is Noori net of Gyeongju Si, Gyeongsangbuk-Do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 15, 2010, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the disputed domain name. On September 16, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 17, 2010.
On September 17, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding on September 17, 2010. The Respondent did not respond to the Center’s Language of Proceeding notification. On September 23, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
The Center verified that the Complaint together with the amended 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 September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2010.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on October 28, 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 a Brazilian corporation which started its activities in 1943 and has been engaged in bank business. The Complainant has a trademark registration for the mark BRADESCO No. 007170424 registered on June 10, 1980 in respect of “bank services” in class 36 of goods and services which remain in force. The Brazilian Patents and Trademarks Office declared the Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO under the Brazilian Law No. 5,772/71 which foresaw special protection to highly renowned marks (Annexes 14, 15 and 16 to the Complaint). The Complainant owns trademark or service mark registrations in respect of bank, financial services in many other countries (Annex 19 to the Complaint).
The disputed domain name was registered on September 13, 2007. 5. Parties’ Contentions A. Complainant
i) The disputed domain name is identical to the Complainant’s trademark BRADESCO,
ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because it does not own any registration for mark or name ‘BRADESCO as a result of conducting a search at the Brazilian Industrial Property Institute database (Annex 28 to the Complaint), and
iii) The disputed domain name should be considered as having been registered and used in bad faith by the Respondent because its use of the disputed domain name appears to be merely intended to sell the disputed domain name for a profit and BRADESCO is well-known and prestigious trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. The language of the proceeding
The registrar of the disputed domain name Korea Information Certificate Authority Inc. d/b/a DomainCa.com informed the Center that the language of the relevant registration agreement was Korean. On September 17, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding on September 17, 2010 on the ground that: i) the Respondent speaks English for it announces the disputed domain name for sale in English; ii) the Respondent is a party to several past UDRP proceedings, having been in default in all of them; iii) the unnecessary costs for the Complainant if the translation of the Complaint and Annexes be required given the circumstances of the present proceedings what would constitute an undue burden on the Complainant (as has already been decided in several UDRP decisions such as Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679 and Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004); iv) the time would be consumed for the translation of all mentioned documents, which goes against the spirit of the UDRP and violates paragraph 10(b) and 10(c); v) the spirit of the UDRP that parties are to be treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition; and vi) the registration agreement found on the registrar’s website is written in the English language, which makes English acceptable as the language of the proceedings under paragraph 11(a) of the Rules.
The Respondent did not respond to the Center’s Language of Proceeding notification even in Korean even though the Respondent was able given the opportunity to contest the issue of Language of Proceeding in Korean. The Respondent did not contest the Complainant’s request that the Language of Proceeding be English either. Nor the Respondent submitted any Response to the Complaint. Given the circumstances above, the requirement for the translation of the documents will put unnecessary burden on the Complainant.
As such, the Panel finds that the principles of paragraph 11 of the Rules would be best served by accepting the filings in the preferred language of the parties, and rendering the decision in the English language (see Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001 ; L.M.X. Holding v. admin, Han-Jin, Ko,WIPO Case No. D2009-1514 ). B. The Respondent’s default
The Respondent did not submit any Response by the due date notwithstanding the Center gave it the opportunity to file the Response even in Korean by notifying it of the Center’s preliminary decision to accept a Response in either Korean or English.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy, paragraph 4(a).
Rules, paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules, paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply. C. Identical or Confusingly Similar
The Complainant has a trademark registration for the mark BRADESCO No. 007170424 in respect of “bank services” in class 36 of goods and services which remain in force. This trademark registration predates the registration of the disputed domain name as evidenced by the copy of the Complainant’s trademark registration.
In determining similarity of the disputed domain name and the Complainant’s trademark, non-distinctive elements “bank” being descriptive in relation to bank services and a gTLD common suffix “.com” in the disputed domain name should be excluded. The remaining portion “bradesco” in the disputed domain name is identical with the word mark BRADESCO of the Complainant, and the Panel finds that the first element of the Policy has been established. D. Rights or Legitimate Interests
On the record on the present case, it is found that the Respondent has never been commonly known under the name “bradesco” and that no license or authorization was granted to the Respondent by the Complainant to register or use the disputed domain name. No trademark registration for the mark BRADESCO is registered in the name of the Respondent according to the outcome of the search conducted by the Complainant. The outcome of the Internet search, using Google, conducted by the Complainant has not referred a single one to the Respondent (Annex 27 to the Complaint). The Respondent does not appear to use the disputed domain name in legitimate way. There is no demonstrable use or preparation for use of the disputed domain name in connection with a bona fide offering of goods and services. As such, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. E. Registered and Used in Bad Faith
The Complainant’s trade name and trademark BRADESCO has been used for more than sixty years. The Brazilian Patents and Trademarks Office declared the Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO under the Brazilian Law No. 5,772/71 which foresaw special protection to highly renowned marks (Annexes 14, 15 and 16 to the Complaint). Researches published by ‘The Banker Magazine and ‘Brand Finance’ which are financial magazines rated BRADESCO as the most valuable banking segment brand in Latin America (Annexes 9 and 10 to the Complaint). The Complainant was also named ‘Best Bank in Brazil’ in the Euromoney Awards for Excellence 2009 as well as it was included on the Top 100 Most Valuable Global Brands (Annexes 11-13 to the Complaint). The Complainant is the owner of more than 100 domain names incorporating the BRADESCO expression (Annex 21 to the Complaint).
In light of the fact and the circumstances above, it is recognized that the Complainant’s mark BRADESCO is widely-known in respect of banking and financial services in Brazil and internationally. The notoriety of the Complainant’s trademark in respect of banking and financial services is such that a prima face presumption is raised that the Respondent registered the disputed domain name for the purpose of using it in some way to take undue profits. In light of the widely-known status of the Complainant’s trademark BRADESCO, it is highly unlikely that the Respondent would have registered the disputed domain name without having knowledge of the Complainant’s trademark BRADESCO at the time of registering the disputed domain name.
It is also found that the disputed domain name remains unused since its registration date September 13, 2007. It does not appear to have been used for any licit activities of the Respondent. The results of searching at the Internet for the webpage under the disputed domain name were: “This Domain is for Sale now! (buy now). Sorry to announce that this website is closed and decided to sell this domain displayed in URL window. Contact us via [the Respondent’s email address and phone number]” (Annex 25 to the Complaint).
Policy, paragraph 4(b) provides that the following circumstance is deemed to be evidence that a registrant has registered and used a domain name in bad faith:
“circumstances indicating that [the registrant has] registered or [has] 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 [its] documented out-of-pocket costs directly related to the domain name.”
This offer for sale to the public constitutes bad faith in registering the disputed domain name. As previous UDRP panels have held, an offer to sell the domain name at issue is strong evidence of bad faith. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding “offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy”); Parfums Christian Dior S.A. v. QTR Corp.,WIPO Case No. D2000-0023 (finding bad faith where WhoIs information included the phrase “this domain name is for sale”); Microsoft Corporation v. Amit Mehrotra,WIPO Case No. D2000-0053 (finding that the WhoIs legend “if you want this name please contact me” was uncontested evidence of bad faith).
All of the aforementioned facts lead to the conclusion that the third element of the Policy has been established. 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.
Ho-Hyun Nahm
Sole Panelist
Dated: November 8, 2010
Full & Egal Universal Law Academy