The Complainant is Banco Bradesco S/A, Osasco, SP, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington United states of America / Hospedagem, Carlos Eduardo of Saint Charbel, Sao Paulo, Brazil. 2. The Domain Name and Registrar
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 March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 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 April 1, 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 April 3, 2014.
The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2014.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on May 12, 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 was established in 1943 as Banco Brasileiro de Desconto and nowadays is known as BRADESCO S/AS and is one of the leaders in the Brazilian private banking services running millions of bank and saving accounts. Also, there is more then eight thousand four hundred Bradesco Service Points distributed throughout the Brazilian territory as well as four thousand six hundred branches, three-thousand seven hundred service posts, one thousand four hundred automated teller machines, among others. The Complaint has branches and affiliates all over Brazil and also in Argentina, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Luxembourg, Japan and United States of America.
The Complainant is the owner of three hundred and thirty three trademarks incorporating the term BRADESCO before the BPTO (Brazilian Patent and Trademark Office), including the trademark BRADESCO registration nº 007.170.424 filed in 1979 and successively renewed, being currently valid.
The trademark BRADESCO was declared Notorious by the BPTO under the aegis of the former law regarding industrial property in Brazil (Law nº 5.772/1971), therefore, the trademark is now protect by the current Industrial Property Law under the category of Highly Renowned Mark, according to the article 125 (Law 9279/96). Furthermore, the Complainant is the owner of several BRADESCO trademarks in other thirty-six countries, including USA, United Kingdom of Great Britain and Northern Ireland, China and the Russian Federation.
Also, the Complainant is the owner of several domain names including the term “bradesco”. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the trademark BRADESCO and to the other domain names previously registered by the Complainant.
The Complainant asserts that the disputed domain name is the agglutination of the Complainant’s trademark BRADESCO with the word COMPRAS (which means Purchases in English) resulting in consumers believing that the Complainant has a website in place to purchase goods, concluding that the is highly similar to Complainant’s trademark and can mislead customers.
The Complainant affirms that consumers will immediately identify the domain name registered by the Respondent with the Complainant’s trademark, believing that both identify the same company.
The Complainant argues that there is no trademark registered by the Respondent that consists or contains the word BRADESCO or that it has any rights on an unregistered mark.
The Complainant also affirms that he has not entered in any agreement authorization or license with the Respondent with respect to the use of the word BRADESCO.
The Complainant states that “Bradesco” is not a generic or descriptive term and is not a dictionary word either in Portuguese, English, French or Italian. The term is a coined word created by the joining of the first letters of the Complainant’s previous commercial name, i.e.: Banco BRAsileiro de DESCOntos, and, as far as it is known, the Respondent activities do not relate to the product commercialized under the BRADESCO trademark and that the Respondent has never been known to be related or associated to said mark. Also, the term “Bradesco” does not appear in the Respondent denomination or any other identification.
The Complainant states that the Respondent seems to have no rights or legitimate interests in the domain name since there is no webpage related and no reference to the Respondent services. The Complainant concludes that the only plausible explanation for the Respondent selection of the domain name is to exploit in an unauthorized manner the reputation and goodwill of the Complainant and its name and marks.
The Complainant affirms that the bad faith of the Respondent can be deduced since the disputed domain name used the mark BRADESCO as the major component of the disputed domain name, in circumstances in which the Respondent has no rights or legitimate interest in the mark.
The Complainant states that the bad faith can also be given by inaction or “passive holding”.
The Complainant affirms that 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 gives that the Center had already determined many times that different respondents transfer their domain names compounded by the trademark BRADESCO to the Complainant (cases numbers: Banco Bradesco S/A v. Belcanto Investment Group Limited,WIPO Case No. D2013-1048; Banco Bradesco S/A v. CPSTA LTDA, WIPO Case No. D2013-1280; Banco Bradesco S/A v. Antonio Altiere,WIPO Case No. D2013-1278; Banco Bradesco S/A v. Javenaldo, WIPO Case No. D2013-1056; Banco Bradesco S/A v. Pedro Souza, WIPO Case No. D2013-1062; Banco Bradesco S/A v. Erick Reis, WIPO Case No. D2013-1065; Banco Bradesco S/A v. Larisa Sardinha, WIPO Case No.. D2013-1051; Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059 and Banco Bradesco S/A v. Belcanto Investment Group, WIPO Case No. D2013-1279). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant BRADESCO trademark. The Panel finds that the addition of generic words such as “compras” are not enough to escape a finding of confusing similarity.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the BRADESCO mark.
With respect to the paragraph 4 (c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to the paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name,
With respect to the paragraph 4(c)(iii) of the Policy, Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in a connection of a bona fide offering of goods or services.
In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the domain name at issued which reproduces Complainant’s famous trademark BRADESCO. By the time the disputed domain name was registered, it is highly unlikely that Respondent did not have knowledge of the Complainant’s rights on the trademark BRADESCO.
The Complainant’s allegations of bad faith were not contested since the Respondent did not reply the Complaint. The evidence provided by the Complainant confirms that it had long been using its BRADESCO trademark when the disputed domain name was registered.
On the record of this case, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that “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 or your web site or location o a product or service on you web-site or location”, Policy paragraph 4(b)(iv). The Panel notes in this regard that the website at the disputed domain name currently appears to display registrar/hosting – related commercial content. The Panel finds that such use falls under paragraph 4(b)(iv) of the Policy in the circumstances of the case.
Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith and that Complainant has established the third element of the Paragraph 4(a) 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.
Luiz E. Montaury Pimenta
Sole Panelist
Date May 26, 2014
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