The Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud e Scatamburlo Advogados, Brazil.
The Respondent is Maria Lopes of Texas, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On January 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 27, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 28, 2014.
The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 26, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is providing private banking services in Brazil and was established in 1943. It is running more than 25 million bank accounts and more than 45 million savings accounts and has 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 than 12,900 shared ATMs known as “Banco24horas” (in English, “Bank24hours”) in Brazil. Furthermore, it has branches and affiliates all over Brazil and also in New York (USA), Buenos Aires (Argentina), Grand Cayman (Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland), Luxembourg (Luxembourg) and Tokyo (Japan).
The Complainant owns registered trademark rights in over 300 trademarks including the word “Bradesco” in 38 countries, inter alia Brazilian trademark registration No. 007.170.424 BRADESCO, filed on June 13, 1979 and registered on June 10, 1980, and US trademark registration No. 2243427 BRADESCO, filed on April 17, 1997 and registered on April 21, 1998 (hereinafter referred to as the “BRADESCO Marks”). Furthermore, the Complainant owns several domain names including the word “Bradesco”, inter alia and , since 1995 and 1996 respectively..
The BRADESCO Marks have already been found to be well-known in Banco Bradesco S/A v. Javenaldo,WIPO Case No. D2013-1056 ().
The disputed domain name was registered on July 15, 2013 and is not used in connection with an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the highly renowned and notorious BRADESCO Marks as it fully includes such marks and as the additional term “24horas” is the translation of “24 hours”, which refers to the fact that the Complainant’s customers can use the Complainant’s services at any time and is therefore merely descriptive.
(2) The Respondent lacks rights and legitimate interest in the disputed domain name as she neither owns registered trademark rights consisting of or containing the word “Bradesco” nor has any unregistered rights in such mark, as the Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the BRADESCO Marks, as “Bradesco” is neither a generic nor dictionary word nor descriptive of the Complainant’s products but a coined word created by the joining of the first letters of the Complainant’s previous commercial name (Banco BRAsileiro de DESCOntos), as the Respondent’s activities do not relate to the products commercialized under the BRADESCO Marks, and as the Respondent has never been known to be related or associated to said mark.
(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that 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, its name and its marks. With regard to the use in bad faith, the Complainant argues that the Respondent’s passive holding of the disputed domain name equals bad faith use in the present case as 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 disputed domain name, had it not been in absolute bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; 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. Identical or Confusingly Similar
The disputed domain name fully incorporates the BRADESCO Marks in which the Complainant has exclusive rights.
In the view of the Panel, the mere addition of the term “24horas” following the Complainant’s trademark does not eliminate the similarity between the BRADESCO Marks and the disputed domain name, as the word “Bradesco” is the predominant part of the disputed domain name and the additional term “24horas” merely describes the regular availability of the Complainant’s services and is therefore generic and insufficient to hinder a finding of confusing similarity (cf. Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313 ( et al.); Cash Converters Pty Ltd. v. Richard Abbott,WIPO Case No. D2012-1012 (); Wal-Mart Stores, Inc. v. Domain Park Limited, NAF Claim No. 1076255 ( et al.)).
Furthermore, it is well established that the generic Top-Level Domain Name (“gTLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production shifts to the respondent to come forward with evidence demonstrating rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, there is no indication that the Respondent’s use of the disputed domain name does meet any of the criteria set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The BRADESCO Marks are highly distinctive and, to the Panel’s best knowledge, do not correspond to any dictionary word.
Furthermore, the Respondent, who is located in the USA, included the term “24horas” in Portuguese, the official language in Brazil, where the Complainant is located, into the disputed domain name and therefore appears to be targeting the Complainant’s business. Finally, as the Respondent’s email address registered in the WhoIs database is registered under the country code Top Level Domain name of Brazil (“.”) it seems likely that the Respondent is somehow connected with Brazil. It is therefore almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.
As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith under the Policy. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, respondent’s concealment of identity and the impossibility of conceiving a good faith use of the domain name (cf Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
The Panel is convinced that the Complainant’s BRADESCO Marks are highly distinctive and well-established. Furthermore, the Respondent failed to file a Response and therefore did not provide evidence of any actual or contemplated good faith use of the disputed domain name. In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name equals to use in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant 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 name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: March 5, 2014
Full & Egal Universal Law Academy