Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
Respondent is Anderson Boaventura of Sao Paulo, Brazil / Whois Agent of Kirkland, Washington, United States of America. 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 May 26, 2014. On May 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 Complainant on May 28, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May, 28, 2014.
The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on May 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 20, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on July 2, 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
Complainant was established in 1943 as Banco Brasileiro de Desconto and nowadays is known as BRADESCO S/A. and is one of the leaders in the Brazilian private banking services, running millions of bank and saving accounts. Also, there are more than eight thousand four hundred (8,400) Bradesco Service Points distributed throughout the Brazilian territory as well as four thousand six hundred (4,600) branches, three-thousand seven hundred (3,700) service posts, one thousand four hundred (1,400) automated teller machines, among others. The Complaint has branches and affiliates all over Brazil and also in Argentina, Cayman Islands, Luxembourg, Japan and the United States of America.
Complainant is the owner of three hundred and thirty three (333) trademarks incorporating the term “Bradesco” before the BPTO (Brazilian Patent and Trademark Office), including registration nº 007.170.424 for the trademark BRADESCO 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). Furthermore, the Complainant is the owner of several BRADESCO trademark registrations in thirty-six (36) other countries, including the United States of America, United Kingdom of Great Britain and Northern Ireland, China and Russia.
Also, Complainant is the owner of several domain names including the term “Bradesco”, for instance , , and 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the trademark BRADESCO and to the other domain names previously registered by Complainant.
Complainant asserts that the disputed domain name is composed of Complainant’s trademark BRADESCO with the term “bbi”, which is a registered trademark owned by Complainant used to identify an investment bank part of Complainant’s group. Also, Complainant argues that is the owner of the domain names and resulting in Internet users believing that the disputed domain name is connected to one of Complainant’s websites about its investment bank.
Complainant argues that there is no trademark registered by Respondent that consists or contains the word “bradesco” or that it has any rights in an unregistered mark.
Complainant also affirms that it has not entered into any agreement, authorization or license with Respondent with respect to the use of the trademark BRADESCO.
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 adjunction of the first letters of Complainant’s previous commercial name, i.e: Banco BRAsileiro de DESCOntos, and, as far as it is known, Respondent activities are not related to the services commercialized under the BRADESCO trademark and that Respondent has never been known to be related or associated to said mark. Also, the term “bradesco” does not appear in Respondent’s denomination or any other identification.
Complainant states that Respondent seems to have no legitimate interest in the disputed domain name since there is no webpage related and no reference to the Respondent’s services. Complainant concludes that the only plausible explanation for Respondent’s selection of the disputed domain name is to exploit in an unauthorized manner the reputation and goodwill of the Complainant’s name and mark.
Complainant affirms that the bad faith of Respondent can be deduced since the disputed domain name used the trademark BRADESCO as the major component of the disputed domain name, in circumstances in which Respondent has no rights or legitimate interest in the mark.
Complainant states that bad faith can also be given by inaction or “passive holding”.
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 trademark as a domain name had it not been in absolute bad faith.
Complainant cites the following UDRP cases involving domain names incorporating the trademark BRADESCO: Banco Bradesco S/A v. Belcanto Investment Group LimitedWIPO Case No. D2013-1048; Banco Bradesco S/A v. CPSTA LTDA WIPO Case No. D2013-1280; Banco Bradesco S/A v. Antonio AltiereWIPO Case No. D2013-1278; Banco Bradesco S/A v. JavenaldoWIPO Case No. D2013-1056; Banco Bradesco S/A v. Pedro SouzaWIPO Case No. D2013-1062; Banco Bradesco S/A v. Erick ReisWIPO Case No. D2013-1065; Banco Bradesco S/A v. Jonas SilvaWIPO Case No. D2013-1052; Banco Bradesco S/A v. Larisa SardinhaWIPO Case No. D2013-1051; Banco Bradesco S/A v. CompevoWIPO Case No. D2013-1059; Banco Bradesco S/A v. Belcanto Investment GroupWIPO Case No. D2013-1279. B. Respondent
Respondent did not reply to 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’s BRADESCO trademark. The disputed domain name incorporates the BRADESCO trademark in its entirety, adding only the term “bbi”, which identifies an investment bank part of Complainant’s group. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the disputed domain name.
With respect to 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 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 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.
In view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy, C. Registered and Used in Bad Faith
The Panel finds that Respondent has registered the disputed domain name, which reproduces Complainant’s famous trademark BRADESCO in bad faith. By the time the disputed domain name was registered, it was highly unlikely that Respondent did not know of Complainant’s rights in the trademark BRADESCO.
Complainant’s allegations of bad faith were not contested since Respondent did not reply to the Complaint. The evidence provided by Complainant confirms that it had long been using its BRADESCO trademark when the disputed domain name was registered, including in domain names highly similar to the disputed domain name. Respondent is located in Brazil, where Complainant and its trademarks are well known. Furthermore, the disputed domain name incorporates the BRADESCO trademark in its entirety, together with the term “bbi”, which identifies an investment bank part of Complainant’s group, which is a further indication, that Respondent was aware of Complainant and its trademarks.
The Panel finds that Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name.
The disputed domain name does not resolve to an active website. The Panel finds the passive holding of the disputed domain name in the circumstances of this case to amount to use in bad faith.
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.
Eduardo Machado
Sole Panelist
Date: July 16, 2014
Full & Egal Universal Law Academy