The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is SYNTHA SITE of Cape Town, South Africa. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2015 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 5, 2015.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2015.
The Center appointed George R. F. Souter as the sole panelist in this matter on February 16, 2015. 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 a Brazilian bank, dating from 1943. It currently operates circa 25 million bank accounts and more than 45 million savings accounts. It operates throughout Brazil, with more than eight thousand service points, over four thousand branches, over three thousand service posts, more than one thousand automated teller machines (ATMs), more than forty-three thousand “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, over thirty four thousand “Bradesco Dia & Noite” (in English, “Bradesco Day & Night”) ATMs, and more than twelve-thousand shared ATMs. The Complainant also has branches and affiliates in New York, USA; in Buenos Aires, Argentina; in Tokyo, Japan; in the Cayman Islands; and in Luxembourg.
Details of registrations of the Complainant’s BRADESCO trademark in Brazil, the earliest dating from 1979, and in many other countries, have been supplied to the Panel.
The disputed domain names were both registered on November 28, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its BRADESCO trademark, containing the trademark in its entirety, together only with the addition of the non-distinctive or descriptive element “ativa”, a Portuguese word which means “active” in English.
The Complainant contends that the disputed domain name is confusingly similar to its BRADESCO trademark, containing the trademark in its entirety, together only with the addition of the non-distinctive or descriptive element “sac”, a Portuguese term which is an abbreviation of “serviço de atendimento ao consumidor” which means “customer care service” in English.
The Complainant states that it has not entered into any agreement, authorization, or license with the Respondent with respect to the use of its trademark BRADESCO, and to the best of its knowledge, the Respondent has no trademark registrations including the term bradesco, or is otherwise known by that name.
The Complainant alleges that that the disputed domain names were registered in bad faith, and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in connection with both the disputed domain names in the present case.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a non-distinctive or descriptive word to a trademark in which a complainant has rights is not sufficient to avoid a finding of confusing similarity.
In the circumstances of the present case, and taking into account the fact that the Respondent has registered domain names including terms in the Portuguese language, the Panel finds “ativa” to be a non-distinctive or descriptive element, whose meaning can readily be guessed at, even by a non-native-Portuguse-speaking person, in the context of banking. In any event, the addition of “ativa” to the overwhelmingly dominant “bradesco” element of the disputed domain name would not, in the Panel’s opinion, be sufficient to avoid a finding of confusing similarity. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s BRADESCO trademark.
In the circumstances of the present case, the mere addition of the element “sac” (itself a term related to the Complainant’s area of business) to the overwhelmingly dominant “bradesco” element of the disputed domain name would not be sufficient to avoid a finding of confusing similarity. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s BRADESCO trademark.
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with both the disputed domain names. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by a complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as described above as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s distinctive trademark was incorporated in its entirety in both the disputed domain names, which gives rise to grave suspicion that the disputed domain names were deliberately “coined” from the Complainant’s trademark, as sufficient for the Panel to find that the disputed domain names were both registered in bad faith.
It appears that the disputed domain names mat not yet have been used. Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (to which the Complainant drew the Panel’s attention), which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, in which the Panel is convinced that the disputed domain names were almost certainly designed with the Complainant’s BRADESCO trademark in mind, the Panel finds it appropriate to consider the current passive use of the disputed domain names as use of the disputed domain names in bad faith, and finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy in respect of both the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements on paragraph 4(a)(iii) of the Policy in respect of both the disputed domain names. 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.
George R. F. Souter
Sole Panelist
Date: March 3, 2015
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