The Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Maria Angela Hella of Rio de Janeiro, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2014. On January 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2014, 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 January 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2014.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 14, 2014. 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 (Banco Bradesco S/A) is a bank, considered to be one of Brazil’s largest corporations.
The Complainant’s trademark BRADESCO (which derives from its initial name Banco BRAsileiro de DESCOntos S.A.) is registered in many countries and was filed in Brazil in June 13, 1979, achieving registration on June 10, 1980. The trademark was also declared to be notorious by the Brazilian Patent and Trademark Office in 1984.
The Complainant has also many domain names incorporating the word “bradesco”, including the domain name , registered in 1996.
The Respondent registered the disputed domain name on July 16, 2013.
When the Panel tried to access the disputed domain name on February 17, 2014, there was no active website linked to it. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
The disputed domain name is confusingly similar to the trademark BRADESCO. The disputed domain name reproduces the Complainant’s trademark BRADESCO, registered in Brazil under No. 007.170.424, and is confusingly similar to domain names previously registered by the Complainant. The disputed domain name is composed by the letter “v” repeated four times and the Complainant’s trademark BRADESCO, simulating the real Complainant’s domain name, , which most of times is preceded by “www” (meaning World Wide Web). It’s evident the similarity between “www.” and . This leads to the conclusion that the disputed domain name is confusingly similar to the Complainant’s trademarks. The possibility of confusion is evident given that consumers will immediately identify the domain name registered by the Respondent with the Complainant’s notorious trademark, believing that the disputed domain name identifies the same company, and that the products/services offered under that domain name originate from the same source - what is not true given the undue registration made by the Respondent.
The Respondent lacks rights and legitimate interests in the disputed domain name . The Complainant’s highly renowned trademark BRADESCO is registered since 1980 in Brazil, at least 33 years before Respondent registered the disputed domain name. On the other hand, there is no trademark registered, in the name of the Respondent, that consists of, or contains, the word “bradesco”, nor it has any right on an unregistered basis in such a mark. The Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the word “bradesco”. “Bradesco” is not a generic term, nor descriptive of 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). 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 the said mark. The word “bradesco” is not included in the Respondent’s denomination, or in any other identification.
The disputed domain name was registered and used in bad faith. The Respondent seems to have no legitimate interest in the domain name, since the webpage related to the domain name shows the site of certain company called “OnlyD”, which slogan is “Your universal domain name provider”, but there is no reference to the Respondent’s activities or services. If there is no reference to the Respondent’s activities or services, 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. The bad faith requirement 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
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, complainant must prove the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Regardless of the fact that the Respondent failed to submit a formal reply, the Panel must consider whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
The Complaint’s Annex F proves that the Complainant has rights in the BRADESCO Trademark since at least 1979.
The trademark BRADESCO is wholly encompassed within the disputed domain name. The only difference between the Complainant’s mark and the disputed domain name is the addition of “vvvv”, and the generic Top-Level Domain (gTLD) “.com”.
Previous UDRP panels have held that the addition of “www” (commonly used to refer to the World Wide Web) does not negate confusing similarity. This Panel is satisfied that the same conclusion applies to “vvvv”, which is not a dictionary term and may look very similar to the World Wide Web acronym, mainly used for phishing schemes that are often targetting the financial market. The addition of such non-distinctive letters to the trademark does not distinguish the disputed domain name from the Complainant’s trademark. See, e.g., Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Société Air France v. Vladimir Federov,WIPO Case No. D2003-0639; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816; Public Service Electric & Gas Company and its affiliates and subsidiaries v. The Whois Privacy Service/ Adjaele Global Internet Ltd,WIPO Case No. D2011-1799. Furthermore, numerous UDRP panels have found that the addition of the gTLD “.com” does not distinguish a domain name from a complainant’s mark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following circumstances:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the domain name. Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is 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; or
(ii) the Respondent 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; or
(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 web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
When the disputed domain name was registered by the Respondent (in 2013) the trademark BRADESCO was already tightly connected to the Complainant’s activities in Brazil for decades.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – who is from Brazil too - could not have been aware of the Complainant’s trademark, as well as that the use of the expression “vvvvbradesco” could be a mere coincidence.
The Respondent had the opportunity to justify why she has chosen the peculiar term “vvvvbradesco” to register as the disputed domain name, but she preferred to keep silent.
It is true that at least presently the disputed domain name does not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark that is wellknown in Brazil and registered in several countries, certainly cannot be used in benefit of the Respondent in this Panel’s opinion.
Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the expression “vvvvbradesco” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain name in bad faith, satisfying the third element 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 name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: February 26, 2014
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