The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Compevo of Vancouver, British Columbia, Canada, represented by Areeb Yasir, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 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 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”).
On June 17, 2013, the Complainant sent the Center a copy of “Without Prejudice” communications from the Respondent. On June 29, 2013 the Respondent emailed the Center, complaining that the communications had been illegally forwarded to the Center and asking that they be destroyed and not sent to the Panel. The Center replied to the Respondent on July 1, 2013, advising that all communications received by the Center from the Parties would be forwarded to the Panel and that the Panel would determine what steps to take in respect of the material.
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 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2013. The Response was filed with the Center on July 1, 2013.
The Center appointed John Swinson as the sole panelist in this matter on July 11, 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 is a Brazilian banking corporation established in 1943. It is the owner of the BRADESCO trade mark, registered in Brazil and in other countries (first registered in Brazil on June 10, 1980). The Complainant also owns numerous trade marks which incorporate BRADESCO.
The Respondent is Compevo, a Canadian Internet service provider (ISP).
The Disputed Domain Name was registered by a customer of the Respondent and subsequently seized by the Respondent on April 25, 2013 because the customer did not pay fees owed to the Respondent. The website at the Disputed Domain Name displays links to various goods and services. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the BRADESCO trade mark, as it reproduces the trade mark in its entirety. The additional terms “ativacoes tabela” (“activations table” in English), refer to the code table that is used to access Internet banking services. This adds to customer confusion. Rights or Legitimate Interests
The Respondent does not own any trade marks incorporating BRADESCO, and does not have any unregistered trade mark rights. The Complainant has not authorized or licensed the Respondent to use the BRADESCO trade mark.
BRADESCO is not a generic or dictionary term, nor is it descriptive of the Complainant’s products. Registered and Used in Bad Faith
The Respondent is not making use of the website at the Disputed Domain Name. The Respondent is using the Disputed Domain Name to exploit the reputation and goodwill of the Complainant and its trade marks.
BRADESCO is so widely known that it would be almost impossible for a registrant to claim that a domain name incorporating the trade mark had not been registered in bad faith. B. Respondent
The Respondent’s contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Name is not confusingly similar to the BRADESCO trade mark. BRADESCO is a series of random letters at the end of a 27 letter domain name. Rights or Legitimate Interests
The Disputed Domain Name was unwillingly acquired by the Respondent (outlined below). The Disputed Domain Name is not being used commercially (it is parked). The Disputed Domain Name does not misdirect, confuse or mislead users. Registered and Used in Bad Faith
The Disputed Domain Name was not registered by the Respondent, but acquired through a customer (when the customer “performed fraud by doing an illegal chargeback” for the Respondent’s services and the Respondent seized the Disputed Domain Name and transferred it into the Respondent’s name to stop the customer receiving it for free).
The Complainant has not provided any evidence that the Respondent was aware of the Complainant, or its trade marks (as the Respondent is a Canadian company and knows nothing about the Brazilian banking industry).
The Respondent has never attempted to sell, rent or transfer the Disputed Domain Name to the Complainant or one of the Complainant’s competitors. The Respondent has never used the Disputed Domain Name for financial gain. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. Procedural Matters
The Policy contemplates prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.
The supplementary material provided by the Complainant is clearly marked as “Without Prejudice”. There have been diverging views as to whether panels should consider such communications in UDRP proceedings. In the Panel’s view, in the absence of any guidance in the Rules there should be no inflexible rule excluding consideration of settlement communications. However, in this dispute the “Without Prejudice” communications that have been provided by the Complainant were provided in an additional supplementary filing and do not offer any evidence that was previously unavailable to the Panel. Accordingly, the Panel declines to accept this material as part of the record in this proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the BRADESCO trade mark.
The Complainant asserts that it owns the BRADESCO trade mark, and provided evidence of ownership. The Panel accepts that the Complainant owns the trade mark.
The addition of generic Top Level Domains (e.g. the “.com” suffix) can be disregarded when comparing the similarities between a domain name and a trade mark (see Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485 and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429). Therefore, the Disputed Domain Name consists of a combination of the BRADESCO trade mark and the descriptive and/or non-distinctive terms, “ativacoes tabela” (“activations table”).
The Panel finds that the Complainant’s trade mark remains the dominant element in the Disputed Domain Name. 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 trade mark.
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Respondent has no connection or affiliation with the Complainant;
- the Complainant has not consented to the Respondent’s use of the BRADESCO trade mark;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name;
- the website that the Disputed Domain Name resolves to appears to be commercial in nature. It is a “link farm” website which directs Internet users to various goods and services (including a link titled “Bradesco” which links to a page which provides links to the Complainant’s competitors). The Disputed Domain Name is not a dictionary or common word and is not being used in a descriptive sense (i.e. to describe the sponsored links hosted). Accordingly, the Panel infers that it is being used to misleadingly divert consumers. This is not a fair commercial use of the BRADESCO trade mark, nor does it constitute a bona fide offering of goods or services.
The Respondent has not provided sufficient evidence to rebut the Complainant’s prima facie case, and states that it has not used the Disputed Domain Name. There is no evidence that the Respondent plans to use the Disputed Domain Name in a bona fide way. It is the Panel’s view that an ISP confiscating a domain name where a customer of the ISP did not pay for the ISP’s services does not, of itself, give the ISP rights or legitimate interests in the Disputed Domain Name.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The transfer of a domain name can amount to a new registration (see paragraph 3.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). It appears that the Disputed Domain Name was registered or acquired by the Respondent on April 25, 2013.
The Respondent argues that “It was our customer and not us who registered this domain and thus makes it impossible to prove ‘bad faith’.” The Panel disagrees.
In these circumstances, it may be appropriate that the bad faith of the customer at the time of registration may be imputed to the Respondent. However, the Panel does not need to reach a conclusion on this issue, as paragraph 4(b)(iv) of the Policy deems that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your web site 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 your web site or location of a product or service on your web site or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) of the Policy is sufficient to demonstrate bad faith for the purposes of the third element of the Policy.
As discussed in relation to the second element, the website at the Disputed Domain Name is a parking page, featuring links to competitors of the Complainant. The Panel infers that Disputed Domain Name is being used to misleadingly divert Internet users to this website, presumably to generate profit from click-through revenue. The Respondent states that it receives “no commercial gain from this website”. The Panel notes that paragraph 4(b)(iv) of the Policy does not require that the Respondent is the party that receives the commercial gain. In any event, it would be surprising if a sophisticated party such as the Respondent owned a domain name and allowed a third party to use the domain name for a PPC website without any compensation.
In light of the above, and despite the Respondent’s contention that the Respondent was not aware of the Complainant, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied. 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.
John Swinson
Sole Panelist
Date: July 16, 2013
Full & Egal Universal Law Academy