The Complainant is Banco Bradesco S/A, Osasco-SP, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Jose Geraldo, Sao Paulo, Brazil. 2. The Domain Names and Registrar
The disputed domain names are: , , and ; all are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 17, 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 July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on September 16, 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 BANCO BRADESCO S/AS, a Brazilian private banking institution, running more than 25 million bank accounts and more than 45 million savings accounts. The Complainant has branches of its business all over Brazil and also in New York – USA, Buenos Aires – Argentina, Grand Cayman – Cayman Islands, Luxembourg – Luxembourg and Tokyo – Japan.
The Complainant is the owner of the trademark “BRADESCO” in Brazil registration No. 007.170.424 in class 36 for “bank services.” The Complainant is also the owner of other 333 trademark registrations incorporating the expression “BRADESCO” (Annex F and F-1). The Complainant is also the owner of several “BRADESCO” trademarks around the world, the following are some territorries where the trademark is registered: Argentina, Aruba, Barbados, Bolivia, Cayman Islands, Chile, China, Colombia, Costa Rica, Cuba, Curaçao, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Hong Kong, India, Indonesia, Israel, Jamaica, Japan, Mexico, Nicaragua, Panama, Paraguay, Peru, Russian Federation, Singapore, South Africa, Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom, United States of America and Uruguay (Annex F-2).
The Complainant is the owner of the domain names and , among other domains containing the term “Bradesco” (Annex G to the Complaint).
The Respondent registered the disputed domain names on the following dates:
- – registered on June 01, 2013
- – registered on June 01, 2013
- – registered on June 02, 2013
- – registered on June 02, 2013 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain names at issue are confusingly similar to the BRADESCO trademark, to which the Complainant has rights. Furthermore, domain names are composed by the Complainant’s trademark “BRADESCO” preceded by a letter “i”, which is not able to distinguish said domain names from the Complainant’s trademark.
The Complainant states that there is no trademark registered, in the name of the Respondent that consists of, or contains, the word “bradesco”. The Complainant has not entered into any agreement, authorization or license with the Respondent with respect to the use of the word “bradesco”.
The Complainant also states that the expression “bradesco” is a coined word created by the joining of the first letters of the Complainant’s previous commercial name (Banco BRAsileiro de DESCOntos).
The Complainant alleges that Respondent’s activities do not relate to the products commercialized under the BRADESCO trademark and Respondent has never been known to be related or associated to said mark.
The Complainant further alleges that there is no active webpage related to the disputed domain names, it is possible to infer that the only plausible explanation for the Respondent’s selection of the disputed domain names is to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its names and marks. The trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim having registered said mark as a domain name, had it not been in absolute bad faith.
The Complainant finally indicates that Complainant has established and proven that the three requirements of paragraphs 4(a)(i)(ii)(iii) of the Policy have been met in the present case, i.e.: that the disputed domain names , , and are confusingly similar to Complainant’s BRADESCO trademark, and domain names; that the Respondent has no rights or legitimate interests in respect of the domain names that are the subject of the Complaint, and that the registration and use of the disputed domain names have been made by the Respondent in clear bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 domain names in question; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
i. The Panel finds that the Complainant has established that it is the exclusive owner of the registered trademarks BRADESCO based on the evidence provided by the Complainant (Annex F to the Complaint).
ii. The disputed domain names consists of the expression “bradesco” preceded by the letter “i”. The Panel considers that the addition of the letter “i”, especially when added to a widely known trademark is not sufficient to grant distinctiveness or to avoid confusion.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainants trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain names in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain names in responding to the Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the name “Bradesco”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark BRADESCO. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the domains names.
In the absence of a Response this Administrative Panel considers that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain names. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (i) the domain name has been registered in bad faith and (ii) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
It is understood that when proceeding to registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights.
One could presume that the Respondent registered the disputed domain names with no exploration of the possibility of third-party rights, and with apparent disregard to whether the domain names he was registering were domain names which corresponded to the distinctive trademark of another. However, it is impossible to conclude the above for the following reasons
- The Complainant is a leading banking institution in Brazil, its country of origin and has over 400 branches operating in such country.
- The Complainant is the owner of a famous and well known trademark, and declared as such by the local Trademark authority of such country.
- The Respondent is a national of Brazil and therefore it is impossible to presume that he did not have previous knowledge of the existence of the Complainant, as a leading banking institution in its own home country, in which according to the Complainant has over 400 branches.
- The term “bradesco” has no meaning in any language and consequently it is clear that it is a coined word created by Complainant.
- All four disputed domain names incorporate the famous trademark BRADESCO registered worldwide and primarily in Brazil.
Consequently it is impossible for this Panel to conclude that the Respondent was acting in good faith when registering and using the disputed domain names, if all domain names include the famous trademark BRADESCO, owned by Complainant.
The Panel further considers that the Respondent’s objective by registering the disputed domain names
, , and was precisely to attract, for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website. The above is applicable even though the website does not resolve to an active site, the confusion has been created and the Internet user will be directed to a website that does not provide the information they are seeking.
Furthermore, the Panel considers that by registering a domain names corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 names, , , and be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Date: September 25, 2013
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