1.1 The Complainant is Banco Bradesco S/A of Sao Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
1.2 The Respondent is Cameron David Jackson of Kingston, Australia. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 The Center verified that 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”).
3.3 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 May 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2015.
3.4 The Respondent sent an email communication to the Center on May 14, 2015 claiming that he had not received the couriered documents. The Center responded by email that same day explaining that couriered documents had only be sent the day before and were therefore still in transit. It also pointed out to the Respondent that the Complainant had already been sent by email.
3.5 The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2015.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 10, 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
4.1 The Complainant is a private bank based in São Paulo, Brazil. It operates more than 25 million bank accounts and more than 45 million savings accounts. It has an extensive presence in Brazil with branches in the United States of America, Argentina, the Cayman Islands, Luxembourg and Japan.
4.2 The Complainant is the owner of numerous trade marks around the world that incorporate or comprise the term “Bradesco”. They include the following:
(i) Brazilian registered trade mark no 007.170.424 filed in Brazil on June 13, 1979, in class 36; and
(ii) United States registered trade mark no 2243427 filed on April 17, 1997 in class 36 and which takes the following form
4.3 The Complainant also owns and uses the domain names and .
4.4 The Respondent would appear to be an individual based in Australia.
4.5 The Domain Name was registered on March 21, 2015. It has been used since registration to redirect Internet users to a YouTube page showing a short video clip titled “Banco Bradesco Visits the New York Stock Exchange”. This redirect remains in operation as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that its mark has such a degree of fame in Brazil that it has become classed as “notorious” by the Brazilian Patents and Trademarks Office and that this grants it a greater degree of protection under Brazilian law.
5.2 It claims that the Domain Name is confusingly similar to the Complainant’s trade marks.
5.3 The Complainant further contends that the word “Bradesco” is “not a generic term, nor descriptive of Complainant’s products, and is not a dictionary word either in the Portuguese, English, French or Italian languages”. Instead it clams that it 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”.
5.4 The Complainant maintains that the Respondent has no trade mark rights in the term “Bradesco”, and has not been authorized by the Complainant to use this term. Further, the Complainant appears to claim that the Respondent does not use this term in respect of any products or business.
5.5 The Complainant refers to the use made to date of the Domain Name to link to a YouTube video clip. It contends that “the only plausible explanation for the Respondent’s selection of the [D]omain [N]ame is to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its names and marks.” In this respect it contends that the term is so widely known that it cannot but have been registered in bad faith. It also claims that the facts of this case are similar to those in Empresa Brasileira de Telecomunicações S.A. – Embratel v. Kevin McCarthy,WIPO Case No. D2000-0164. B. Respondent
5.6 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the only sensible reading of the Domain Name is as the words “Banco” and “Bradesco” in combination with the “.click” new generic Top-Level Domain (“gTLD”). The Complainant is clearly the owner of a number of marks that incorporate the term “Bradesco”. A number of these would appear to be device marks, but the term “Bradesco” is a prominent part of those marks and there is no suggestion that the term “Bradesco” is devoid of any distinctiveness. On the contrary, it is alleged and it does not appear to be disputed that the term “Bradesco” is a “coined word” having no inherent meaning in a number of languages.
6.5 Further, the term “Banco” in the Domain Name is simply the word for “bank” in Portuguese and the Complainant’s marks are registered in respect of banking services.
6.6 Accordingly, the Domain Name is clearly confusingly similar to a trade mark in which the Complainant has rights and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 It is not clear exactly why the Domain Name has been registered. The fact that it has been linked to a short video clip showing representatives of the Complainant at the New York Stock Exchange is odd and serves no obvious purpose.
6.8 However, there is no evidence before the Panel that suggest that the Domain Name is being held or used for any of the reasons set out in paragraph 4(c) of the Policy. On the contrary the Panel accepts that there is no obvious legitimate use of the Domain Name and (as is discussed under the heading “Registered and Used in Bad Faith” below) that the most likely explanation as to why it was registered and held is to take unfair advantage in one way or another of the reputation of the Complainant’s marks.
6.9 In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name and that the Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.10 This is a case where although the Complainant has brought forward little evidence to show that its BRADESCO mark has any reputation outside of Brazil and the Respondent appears to be based in Australia, the Panel accepts the Complainant’s claim that the Domain Name was registered with knowledge of the Complainant.
6.11 The reason for this is primarily the nature of the Domain Name itself. It obviously makes reference to the “Banco Bradesco”. As far as the Panel is aware this can only be sensibly be understood as a reference to the Complainant given that the term “Bradesco” is a coined word with no generic or descriptive meaning and the word “Banco” is the Portuguese word for bank.
6.12 There is also the fact that since registration the Domain Name has been used to point to a video clip connected to the Complainant’s activities in New York. This appears to show some knowledge on the part of the Respondent of the Complainant’s identity.
6.13 Why exactly the Domain Name was registered is far from clear. However, in the Panel’s opinion it does not matter. The Domain Name clearly references the Complainant and does not include any additional element that immediately signals that this is a domain name that is unconnected with the Complainant. Accordingly, this is one of those cases where it is difficult to see how the Domain Name might be used in a manner that did not take unfair advantage of the Complainant’s mark and which would not involve bad faith (as to which see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/ Fayalobi Interaction Management,WIPO Case No. D2008-0455).
6.14 In the circumstances, the Panel concludes that the Domain Name was both registered and is being used in bad faith. The Complainant has, therefore, made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: June 22, 2015
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