The Complainant is Banco Bradesco S/A. of Vila Yara, Osasco - SP, Brazil, represented by Salusse Marangoni Advogados, Brazil.
The Respondent is Joony Climber of New York City, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Abacus America Inc. d/b/a Names4Ever. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to Abacus America Inc. d/b/a Names4Ever a request for registrar verification in connection with the disputed domain name. On November 19, 2010, Abacus America Inc. d/b/a Names4Ever 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 November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 21, 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 engaged in bank business which started its activities in 1943. The BRADESCO trademark is the object of a large number of trademark registrations and trademark applications throughout the world including trademark registrations and applications in the following countries: Argentina, Aruba, Barbados, Bolivia, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Canada, Chile, People’s Republic of China, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, European Community, Guatemala, Honduras, Hong Kong SAR of China, India, Indonesia, Israel, Jamaica, Japan, Maldives, Mexico, The Netherlands Antilles, Nicaragua, Panama, Paraguay, Peru, Porto Rico, Russian Federation, Singapore, South Africa, Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States of America, Uruguay and Bolivarian Republic of Venezuela according to Annex 20 of the Complaint.
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) and a registration for the word mark BRADESCOMPLETO (Brazilian trademark registration certificate nº 827266090, filed on March 30, 2005 and valid until April 08, 2018). The Brazilian Patent and Trademark 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.
Furthermore, in Brazil, the Complainant is the owner of more than 100 domain names incorporating the “bradesco” expression in the ccTLD for Brazil, besides dozens of others throughout the world.
The Respondent registered the disputed domain name on November 21, 2008. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical to the Complainant’s trademark BRADESCOMPLETO;
(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 and the United States;
(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 a well-known and prestigious trademark.
The Complainant asserts that it is evident that the disputed domain name entirely reproduces its BRADESCOMPLETO trademark. The Complainant also asserts that the disputed domain name is confusingly similar to its domain names and (Annexes 25 and 26 of the Complaint). The Complainant further contends that the BRADESCOMPLETO trademark is so well-known and unique that the expression that springs out from both domain names is the “bradesco” word and that the “.org” particles, are irrelevant, as constantly reiterated in many decisions rendered in UDRP procedures.
The 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 - what is not true given the undue registration and use made by the Respondent.
The Complainant argues that “bradesco” is not a generic term, nor descriptive of the Complainant’s services, and is not a dictionary word either in the Portuguese, English, French or Italian languages. The 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 (emphasis added).
Moreover, the Complainant informs that a search conducted at the United States Patent and Trademark Office and at the Brazilian Industrial Property Institute databases demonstrated that the Respondent is not enrolled as titleholder of any trademark application or registration, for the “bradesco” expression or any other expression whatsoever.
The Complainant argues that the Respondent knew or should have known of the existence of the Complainant’s trademark registration and domain name registration, which were matters of public record, before the Respondent registered the domain name . Thus, the Respondent must be deemed to have had knowledge of the Complainant’s pre-existing rights in BRADESCO as a trademark, as well as a domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. 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. In addition, the Complainant has trademark rights over the trademark BRADESCOMPLETO. These trademark registrations predate the registration of the disputed domain name as evidenced by the copy of the Complainant’s trademark registrations.
In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the “.org” suffix can be ignored. In addition the “-” sign in the disputed domain name does not help to diminish confusion. Finally the dominant element of the trademarks and the disputed domain name is the term “bradesco”.
Thus the disputed domain name is confusingly similar with respect to the trademarks BRADESCO and BRADESCOMPLETO.
The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 a 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.
In the present case, there is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain name or to use the trademarks.
The Complainant has prior rights in the trademarks, including trademarks registered in the Respondent’s jurisdiction, which precede the Respondent’s registration of the disputed domain name by several years. The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name. Annex 34 and 35 to the Complaint shows that the Respondent does not appear to own trademarks in Brazil nor in the United States.
The Respondent has also failed to show that the disputed domain name is used in connection with a bona fide offering of goods or services. At the time of the filing of the Complaint the disputed domain names was on sale, and currently the Respondent is not making use of the disputed domain name.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). As indicated above, the Respondent has not provided the Panel with such evidence.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. 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 and 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;
(iii) 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.
It is not necessary for the Panel to deduce the Respondent’s motives when registering the disputed domain name. Having regard to all the circumstances the Panel finds that the Respondent’s registration and use of a domain name comprising in its entirety the widely known trademark of a bank, of which on the balance of probabilities he must reasonably have been aware, without any rights or legitimate interests, is evidence of bad faith on the part of the Respondent (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
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 the Panel is of the opinion that there can be a prima face presumption in this case 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 (see Banco Bradesco S.A. v. Noori net,WIPO Case No. D2010-1553; Banco Bradesco S/A. v. Afonso Miranda,WIPO Case No. D2010-0645).
The Respondent has provided false contact information when registering the domain name, namely an address that was “All Street” in New York City. No number for a street was given, and according to the Complainant the zip code is also incorrect (See annexes 30 and 31). In appropriate circumstances, this is further evidence of bad faith under the Policy (Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111 and Molinos Río De La Plata S.A., Molinos IP S.A. v. Ipecsa,WIPO Case No. D2009-1384).
At the time of the filing of this Complaint, the domain name was for sale according to the screen shot in Annex 33 of the Complaint. Currently, it must be noted that the Respondent is not making use of the disputed domain name, constituting a passive holding. Since some of the earliest UDRP decisions it has generally been held that non-use of a disputed domain name, corresponding to another’s trademark, may fall within the meaning of bad faith use (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the 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 the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: January 3, 2011
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