The Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Pedro Souza of Paraná, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (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 15, 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”).
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 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.
The Center appointed Gonçalo M.C. Da Cunha Ferreira as the sole panelist in this matter on July 17, 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, it is known under the denomination 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 4,300 “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, over 34,800 “Bradesco Dia & Noite” (in English, “Bradesco Day & Night”) ATMs, and more than 12,900 shared ATMs known as “Banco24horas” (in English, “Bank24hours”). Finally, the Complainant has branches and affiliates all over Brazil and also in New York – USA, Buenos Aires – Argentina, Grand Cayman – Cayman Islands, Luxembourg – Luxembourg and Tokyo – Japan (Annex E to the Complaint).
The Complainant’s trademark BRADESCO was filed in Brazil in June 13, 1979, achieving registration on June 10, 1980, and numbered No. 007.170.424. It has been successively renewed and is currently valid to identify, in international class NCL (7) 36, “bank services.” (Annex F to the Complaint).
Due to the great recognition in the Brazilian Market this mark 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 Argentina, Aruba, Barbados, Republic of Bolivia, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Chile, China, Colombia, Costa Rica, Republic of Cuba, Curaçao, Dominican Republic, Republic of Ecuador, Republic of El Salvador, Republic of Guatemala, Republic of Honduras, Hong Kong, China, 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, United States of America 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), since 1995 and 1996, respectively.
For more than 20 years, the Complainant has used and extensive marketing the BRADESCO mark in connection with bank services.
On May 4, 2013, more than twenty years after the first registration of the Complainant’s mark that is extensively used, the Respondent registered the disputed domain name (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 trademark BRADESCO and the Respondent should not be considered as having rights or legitimate interests with respect to the disputed domain name, because it does not own a registration for any mark or name containing the term “Bradesco”;
The Complainant further 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 it 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, adding the descriptive terms “atualizaçao” and “obrigatoria”, which are the Portuguese words for “update” and “mandatory”. According to the Complainant this can lead to the conclusion that the disputed domain name is confusingly similar to the Complainant’s trademarks, 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 language.
“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 the disputed 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’s, name 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 the 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 a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The third element 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 by three words: the first is “atualização” which means “update” in English, the second is “obrigatoria” which means “mandatory” in English and the third 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 trademark, but in this case it also adds to the confusing similarity because, despite that the words “update” and “mandatory” could be considered as generic, in this case ,together with the mark BRADESCO in the disputed domain name it can be understood as a domain name used by the Complainant to do mandatory updates with its clients.
Therefore the degree of confusing similarity is higher than other situations where the meaning of the term added makes no sense or it is not evident that could be a normal activity of the mark owner .
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, 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. First of all the Respondent did not reply to the Complainant’s contentions to demonstrate its rights or legitimate interests. The Panel further finds in this case that since the word “Bradesco” is a term created by the Complainant and is a well-known mark it is difficult to conceive any legitimate reasons for anyone to use this word in a domain name, unless they have acquired that right through an authorization or license from the owner, which is not the case here.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 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 well-known trademark BRADESCO 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 doesn’t 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 the circumstances, it is clear to the Panel that the Respondent has registered and is using the disputed domain name in bad faith. 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: July 31, 2013
Full & Egal Universal Law Academy