The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Carolina Rodrigues of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited dba Register Matrix (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 12, 2015. On March 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2015, 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 March 25, 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 March 26, 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 March 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 21, 2015.
The Center appointed Alejandro Touriño as the sole panelist in this matter on April 30, 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 one of the leaders in the Brazilian private banking services, which has branches and affiliates all over Brazil and also in New York – United States of America, Buenos Aires – Argentina, Grand Cayman – Cayman Islands (Overseas Territory of the United Kingdom and Northern Ireland), Luxembourg – Luxembourg, and Tokyo – Japan.
The Complainant was constituted, under the denomination "Banco Brasileiro De Descontos", in 1943 and provides banking services nowadays under the denomination "Banco Bradesco S/AS".
Complainant's trademark BRADESCO was filed in Brazil in June 13, 1979, achieving registration on June 10, 1980, and numbered No. 007.170.424 in international class NCL (7) 36, "bank services", which was declared notorious by the Instituto Nacional da Propriedade Industrial (the Brazilian Patents and Trademarks Office).
The Complainant is also the owner, in Brazil, of a vast number of trademark registrations incorporating the term "bradesco" and the owner of several BRADESCO trademarks around the world.
The Complainant is also the owner of the domain names and , among others containing the trademark BRADESCO, prior to the registration by the Respondent of the disputed domain name.
The Respondent registered the disputed domain name on January 14, 2014. 5. Parties' Contentions A. Complainant
The Complainant is the owner of several trademark registrations for BRADESCO in several jurisdictions around the world and is also the owner of several domain names containing the term "bradesco", which is a coined word created by the joining of the first letters of the Complainant's previous commercial name (Banco BRAsileiro de DESCOntos).
The disputed domain name is composed by the Complainant's trademark BRADESCO and the term "protecao", that is the Portuguese word "proteção" misspelled, meaning "protection" in the English language.
The disputed domain name is confusingly similar to the BRADESCO trademark, to which the Complainant has prior and unencumbered rights, making it possible for customers to believe that the disputed domain name is the real and current Complainant's domain name. The possibility of confusion is evident given that consumers will immediately identify the disputed domain name with the Complainant's notorious trademark.
There is no trademark registered, in the name of the Respondent that consists of, or contains, the word "bradesco".
The Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the trademark BRADESCO.
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 trademark.
The Respondent has no legitimate interests in the disputed domain name, since on the webpage hosted under the latest there are some links that lead to webpages which contain advertisement.
The only plausible explanation for the Respondent's selection of the disputed domain name is to exploit it taking advantage of the reputation and goodwill of the Complainant's trademarks.
The bad faith of the Respondent can be deduced by the fact that the Respondent has used the notorious trademark BRADESCO as the major component of the disputed domain name.
Previous decisions under the UPRP have already determined many times that different respondents transfer theirs domain names compounded by the trademark BRADESCO to the Complainant.
All leads to the conclusion that the disputed domain name must be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations consisting of the term "bradesco", standing for the Complainant's previous commercial name "Banco BRAsileiro de DESCOntos".
In the test of confusing similarity under the Policy, which is confined to a comparison of the disputed domain name and the trademark, it is well established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a non-distinctive word to a trademark in which a complainant has rights is not sufficient to avoid a finding of confusing similarity. It is also well established in decisions under the UDRP, with which the Panel again agrees, 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.
In the circumstances of the present case, and taking into account the fact that the Respondent has registered a domain name including the term in the Portuguese language "protecao" (that is the Portuguese word "proteção" misspelled, meaning "protection" in the English language), the Panel finds the said term to be a non-distinctive element, whose meaning can readily be guessed, even by a non-native-Portuguese-speaking person. In any event, the addition of "protecao" 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.
Also, the addition of the suffix ".com" does not detract from the overall impression of the dominant part of the domain name, namely the trademark BRADESCO, instantly recognizable as a notorious trademark. On the contrary, a reader of the disputed domain name would be confused into thinking that it was associated with the Complainant.
Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark, as the disputed domain name includes the Complainant's BRADESCO trademark in full with the mere addition of the non-distinctive term "protecao" and the suffix ".com".
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with the disputed domain name. B. Rights or Legitimate Interests
In order to satisfy the requirement of paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice to the Complainant of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is commonly accepted that, under the UDRP Rules, the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not discussed the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the files, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained any authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel also notes that the disputed domain name has been pointed to a website which leads to webpages which contain many advertisements aimed at directing visitors to third party commercial websites. The Panel finds that this use does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy.
The Panel accepts the preceding contentions on the Respondent's lack of rights or legitimate interests in the disputed domain name, as uncontroverted, convincing and supported by the evidence.
Thus, in light of the above, 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
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
In light of the notorious character of the Complainant's trademark, the Panel finds it unlikely that the Respondent would not have been aware of the Complainant's trademark when registering the disputed domain name.
The Panel shares the view of a number of panel findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103.
The Panel also finds that the Respondent has likely profited by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable to this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website and of the websites linked thereto.
In view of the above, the Panel finds that the disputed domain name was registered and used in bad faith, since the Complainant's distinctive trademark was incorporated in its entirety in the disputed domain name, which gives rise to suspicion that the disputed domain name was deliberately "coined" from the Complainant's trademark, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
In the circumstances of the present case, in which the Panel is convinced that the disputed domain name was almost certainly designed with the Complainant's BRADESCO trademark in mind, the Panel finds it appropriate to consider the current use of the disputed domain name as use of the disputed domain name in bad faith, and finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy in respect of the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements on paragraph 4(a)(iii) of the Policy in respect of the disputed domain name. 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.
Alejandro Touriño
Sole Panelist
Date: May 4, 2015
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