The Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is José Silva Park Hacer of Curitiba, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 June 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2013.
The Center appointed Gonçalo M.C. Da Cunha Ferreira as the sole panelist in this matter on July 18, 2013. 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 was constituted under the denomination “Banco Brasileiro De Descontos”, in 1943. Nowadays, its denomination is Banco Bradesco S/A (Annex B-1 to the Complaint).
The Complainant is one of the leaders in the Brazilian private banking services, running more than 25 million bank accounts and more than 45 million savings accounts. Furthermore, the Complainant has distributed throughout the entire Brazilian territory more than 8,400 service points, 4,600 branches, over 3,700 service posts, more than 1,400 automated teller machines (“ATMs”), more than 43,000 “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, over 34,800 “Bradesco Dia & Noite” (in English, “Bradesco Day & Night”) ATMs, and more than12,900 shared ATMs known as “Banco24horas” (in English, “Bank24hours”). Finally, the Complainant has branches and affiliates all over Brazil and also in New York (United States of America), Buenos Aires (Argentina), Grand Cayman (Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland), Luxembourg and Tokyo (Japan) (Annex E to the Complaint).
The Complainant’s trademark No. 007170424 BRADESCO was filed in Brazil in June 13, 1979, and registered on June 10, 1980. It has been successively renewed and is currently valid to identify bank services in International Class 36, (Annex F to the Complaint).
Due to the great recognition in the Brazilian market of this mark, it was declared notorious by the “Instituto Nacional da Propriedade Industrial” (the Brazilian Patents and Trademarks Office).
The Complainant is also the owner, in Brazil, of other 333 trademarks registrations incorporating the expression “bradesco”, all of which are currently valid (Annex F-1 to the Complaint).
The Complainant is the owner of several BRADESCO trademarks around the world comprising Aruba, Barbados, Bolivia, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Chile, China, Colombia, Costa Rica, Cuba, Curaçao, Dominican Republic, Republic of Ecuador, Republic of El Salvador, Republic of Guatemala, Republic of Honduras, Hong Kong, India, Indonesia, Israel, Jamaica, Japan, Mexico, Republic of Nicaragua, Republic of Panama, Republic of Paraguay, Republic of Peru, Russian Federation, Singapore, South Africa, Republic of Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States and Eastern Republic of Uruguay. (Annex F-2 to the Complaint)
The Complainant owns the domain names and , among other domain names containing the expression “bradesco”. (Annex G to the Complaint)
The Complainant has used and extensively marketed the BRADESCO mark in connection with bank services for more than 20 years.
On March 24, 2013, more than 20 years after the first registration of the Complainant’s mark - which has been extensively used-, the disputed domain name was registered. (Annex D to the Complaint) 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s mark BRADESCO and that 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 the trade mark or name BRADESCO.
The Complainant states that “If the domain name is of the free choice of the interested party, it must necessarily be found among expressions which are free for adoption, and not among trade names and registered trademarks belonging to third parties, and insofar as those distinctive signs constitute absolute rights, are opposable to undue use, as is determined by the rules of 8 “ICANN - Internet Corporation for Assigned Names and Numbers”, which regulates the “.com” domain names”
It is evident for the Complainant that the disputed domain name is confusingly similar to the BRADESCO trademark, to which the Complainant has prior and unencumbered rights.
The Complainant claims that the possibility of confusion is evident, saying that the disputed domain name is composed of the Complainant’s trademark BRADESCO and the terms “recadtramento”, which is the Portuguese misspelled translation of “re-registration”. The correct Portuguese word should be “recadastramento”. The Complainant argues that this leads to the conclusion that the disputed domain name is confusingly similar to the Complainant’s marks, making it possible for customers to believe that the disputed domain name is the real and current Complainant’s domain name, which is not true.
The Complainant argues that “bradesco” is not a generic term nor descriptive of the Complainant’s products, and is not a dictionary word either in the Portuguese, English, French or Italian languages.
“Bradesco” is a coined word created by the joining of the first letters of the Complainant’s previous commercial name (“Banco BRAsileiro de DESCOntos”) and as far as it is known, the Respondent’s activities do not relate to the products commercialized under the BRADESCO trademark and the Respondent has never been known to be related or associated to said mark.
Finally, the Complainant argues that the Respondent seems to have no interest in the disputed domain name, since it there is no webpage related to this domain name.
If there is no webpage related to the disputed domain name, it is possible to ensure that the only plausible explanation for the Respondent’s selection of the disputed domain name is to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its names and marks, and conclude that the bad faith of the Respondent can be deduced also by the fact that the Respondent has used the notorious mark BRADESCO as the major component of the disputed domain name in circumstances in which the Respondent has no rights or legitimate interests in the mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether a respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (Policy, paragraph 4(a)(i)). The second element is that a complainant must prove is that a respondent has “no rights or legitimate interests in respect of the domain name” (Policy, paragraph 4(a)(ii)). The third element is for a complainant to establish is that the “domain name has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The disputed domain name is composed of two words: the first one “recadtramento” appears to be the Portuguese word “recadastramento”, misspelled, and means “re-registration”, the second word is the well-known mark BRADESCO, owned by the Complainant.
The addition of descriptive and/or non-distinctive terms does nothing to prevent the confusing similarity of the disputed domain name with the Complainant’s BRADESCO mark, but in this case also adds to the confusing similarity because, despite that the word “recadtramento” was misspelled and could be considered generic, this word together with the Complainant’s mark BRADESCO in the disputed domain name can be understood as a domain name used by the Complainant to do re-registrations with its clients.
Therefore, the degree of confusing similarity is higher than other situations where the term included in a domain name together with the Complainant’s mark makes no sense or it is not evident that the term could describe a normal activity of the Complainant.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and therefore, the first element of the Policy has been met. B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666, “In order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel.”
In this case, the Panel finds that the Complainant has made its prima facie case. The Respondent did not reply to the Complainant’s contentions to demonstrate its rights or legitimate interests in the disputed domain name. The Panel further finds that in this case that since the word “bradesco” is a fantasy term created by the Complainant and BRADESCO is a well-known mark, it is difficult to conceive any legitimate reason for anyone to use this word in a domain name unless having acquired rights or legitimate interests through an authorization or license from the Complainant, which is not the case here.
For the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of the Policy is therefore met. C. Registered and Used in Bad Faith
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)”).
Although the disputed domain name does not appear to resolve to an active website, in the circumstances of this case, the passive holding of the disputed domain name also amounts to the Respondent acting in bad faith.
Under these circumstances, it is clear to the Panel that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the third element of the Policy has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Gonçalo M.C. Da Cunha Ferreira
Sole Panelist
Date: August 1, 2013
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