The Complainant is Banco Bradesco S/A of São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo Abogados, Brazil.
The Respondent is Carolina Rodrigues/Privacy Limited of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name (the “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 April 15, 2015. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 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 April 24, 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 April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on May 29, 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 biggest banking and financial services companies in Brazil. It owns trademark registration in the well-known BRADESCO trademark first registered on June 10, 1980. The Complainant also owns domain names and and other domain names containing its BRADESCO trademark.
The Respondent is an individual named Carolina Rodrigues residing in Belize. The Respondent’s company name is Privacy Limited, a company in Belize. On October 14, 2011, the Respondent registered the Domain Name that reverts to a pay-per-click (the “PPC”) web page displaying various advertising links, including links to website of auto insurance companies. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a Brazilian bank established in 1943 and is one of the leaders in the Brazilian private banking sector. According to the Complainant it has branches and affiliates all over Brazil and also in the United States of America, Argentina, Cayman Islands, Luxemburg and Japan.
The Complainant claims it owns the trademark BRADESCO registered in Brazil and 37 other countries. The trademark was first registered on June 10, 1980. The Complainant further claims that its mark has become well-known. The Complainant further alleges that it owns the domain names and and other domain names containing its BRADESCO trademark.
The Complainant argues that the Domain Name is confusingly similar to its BRADESCO trademark because it comprises the Complainant’s trademark and the term “autore”, which stands for “car and home insurance”. The Complainant claims that such combination refers to a website which offers the Complainant’s insurances. To the Complainant, addition of the word “autore” to the Complainant’s trademark in the Domain Name exacerbates the possibility of confusion.
The Complainant claims that the Respondent has no trademark rights in the word “bradesco”, nor did she enter into any license or authorization agreement with the Complainant permitting her to use the Complainant’s trademark. The Complainant claims that to its knowledge, the Respondent’s activities do not related to the goods or services offered under the BRADESCO trademark, nor has the Respondent been known by the BRADESCO mark. The Complainant also argues that the word “bradesco” has no meaning in the Portuguese, English, French or Italian languages. According to the Complainant, “bradesco” is a coined term formed from the initial components in the Complainant’s former business name- Banco Brasileiro de Descontos.
The Complainant alleges that the Respondent, who has no rights or legitimate interests in the BRADESCO mark, registered and is using the Domain Name in bad faith. The Complainant argues that the Respondent registered the Domain Name that incorporates the BRADESCO trademark to trade on the Complainant’s goodwill. The Complainant further argues that its trademark is well-known, so it is implausible that the Respondent did not know about the BRADESCO mark at the time of the Domain Name registration.
The Complainant claims that the Respondent is using the Domain Name to direct to a pay-per-click website displaying various advertising links, including links to websites offering car insurance services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the Domain Name registered by the Respondent 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. A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The Complainant demonstrated its rights in the BRADESCO trademark by submission of a copy of a Brazilian Trademark Registration No. 007170424 dated June 10, 1980.
To satisfy the test for confusing similarity between the trademark and the domain name, the trademark must be recognizable within the domain name, with adding common, dictionary, descriptive, or negative terms […] typically being insufficient to prevent threshold Internet user confusion.3
The Domain Name comprises the word “bradesco”, the word “autore” and the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BRADESCO trademark because the Complainant’s trademark is the first element of the Domain Name and is easily recognizable in the Domain Name. Adding a descriptive term, like the word “autore”, which is, according to the Complainant, a shortened version for “automotive e residencial”, i.e. “car and home insurance” cannot prevent threshold Internet user confusion.4 It is also well established that adding the gTLD “.com” or equivalent should typically be disregarded under the confusing similarity test, as it is a technical requirement of registration.5
Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Name is confusingly similar to the trademark BRADESCO in which the Complainant has rights. B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant must make out a prima facie6 case showing that the Respondent has no rights or legitimate interests in the Domain Name.7
Under the preponderance of the evidence standard used in UDRP proceedings, an asserting party must typically establish that it is more likely that the claimed fact is true.8 The Panel finds the Respondent probably does not have rights or legitimate interests in the Domain Name because neither she, nor her company is commonly known by the name BRADESCO. The WhoIs records on file show that the Respondent’s name is Carolina Rodrigues. The Respondent’s company name is Privacy Limited.
Furthermore, the Complainant neither authorized, nor licensed the Respondent to use the BRADESCO trademark or to register the Domain Name incorporating the distinctive and well-known BRADESCO mark. In absence of any license or permission from a complainant to use a well-known mark, no bona fide or legitimate use could be claimed.9
The Domain Name reverts to a PPC web page. PPC links “would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ […] or from ‘legitimate noncommercial or fair use’ of the domain name [...]”10
The Panel, therefore, finds that the Complainant made out the prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name. It is a consensus view of UDRP panels that “[o]nce [a] prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.11 If the respondent fails to offer such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 12 By defaulting, the Respondent failed to satisfy her burden of production. Therefore, the Panel finds that the Complainant satisfied the second UDRP element. C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.13
The Panel finds that the Respondent registered and is using the Domain Name in bad faith based on the cumulative circumstances of this case. It is more likely than not that the Respondent acted with “opportunistic bad faith” because the Respondent, who has no connection with the well-known14 BRADESCO trademark, registered the Domain Name, which incorporates the BRADESCO trademark.15 It is implausible that the Respondent did not know about the Complainant’s rights in the BRADESCO trademark because the trademark was registered thirty one years prior to the Respondent’s registration of the Domain Name. To the Panel’s knowledge, “bradesco” has no meaning in English, the official language of the Respondent’s country of residence, or any other language. Therefore, it is implausible that the Respondent chose the Domain Name, which has been used for PPC links for reasons other than a desire to trade on the Complainant trademark’s goodwill, which corresponds to an example of bad faith use and registration under paragraph 4(b)(iv) of the UDRP.
The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP. 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 10, 2015
1 Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 4(a) of the Policy.
3 See, paragraph 1.2 of the WIPO Overview 2.0.
4 See, paragraph 1.9 of the WIPO Overview 2.0.
5 See, paragraph 1.2 of the WIPO Overview 2.0.
6 See, paragraph 2.1 of the WIPO Overview 2.0.
7 Paragraph 4(a)(ii) of the Policy.
8 Paragraph 4.7 of the WIPO Overview 2.0.
9 Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
10 Paragraph 2.6 of the WIPO Overview 2.0.
11 Paragraph 2.1. of the WIPO Overview 2.0.
12 Id.
13 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
14 Previous panels have found the BRADESCO trademark to be well-known. See, for example, Banco Bradesco S/A v. Alexandre Lopes Gomez,WIPO Case No. D2014-1477, Banco Bradesco S/A. v. Joony Climber,WIPO Case No. D2010-1961; Banco Bradesco S/A v. Larisa Sardinha,WIPO Case No. D2013-1051
15 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
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