Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud e Scatamburlo, Brazil.
Respondent is Cameron David Jackson of New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Instra Corporation Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2016. On June 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 30, 2016.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on July 8, 2016. 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 is active in the banking field and is the owner of Brazilian trademark registration number 007.170.424, registered June 10, 1980, for the mark BRADESCO. The Disputed Domain Name was registered on February 21, 2016. 5. Parties' Contentions A. Complainant
Complainant asserts that it was originally organized under the name Banco Brasileiro de Descontos in 1943. Eventually, the name was abbreviated to Banco Bradesco – a coined combination of the first syllable of "Brasileiro" and the first syllable of "Descontos". The term "Bradesco" is fanciful and has no meaning other than to designate Complainant.
Complainant asserts that it is one of the leaders in the Brazilian private banking industry, responsible for over 25 million bank accounts and 45 million savings accounts. It claims, throughout Brazil, 8,400 service points, 4,600 branches, 3,700 service posts, 1,400 ATMs, 43,000 "Bradesco Espresso" ATMs, and branches and affiliates in New York, United States of America, Buenos Aires, Argentina, Grand Cayman, Cayman Islands, overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Luxembourg, and Tokyo, Japan.
Complainant asserts that the Brazilian Patents and Trademarks Office declared Complainant's BRADESCO mark "notorious" under Brazil's prior intellectual property law, Brazilian Law No. 5,772 of December 21, 1971, Article 67, and "highly renowned" under its current law, Brazilian Law No. 9,279 of May 14, 1996, Article 125. Complainant asserts that it owns 333 other Brazilian trademark registrations incorporating the term "Bradesco", and owns registrations for BRADESCO in many other countries, including Argentina, Aruba, Barbados, Bolivia, Cayman Islands (overseas Territory of the United Kingdom), Chile, China, Colombia, Costa Rica, Cuba, Curaçao, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Hong Kong, China, India, Indonesia, Israel, Jamaica, Japan, Mexico, Nicaragua, Panama, Paraguay, Peru, Russian Federation, Singapore, South Africa, Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom, United States of America and Uruguay.
Complainant also owns the domain names and , among others.
Complainant asserts that the Disputed Domain Name, , is confusingly similar to Complainant's BRADESCO trademark, to which Complainant has prior rights. Complainant asserts that the Disputed Domain Name reproduces Complainant's BRADESCO trademark and is confusingly similar to its previously registered domain names. Complainant also asserts that the Disputed Domain Name is identical to Complainant's tradename Banco Bradesco, all leading consumers to mistakenly believe that the Disputed Domain Name is Complainant's real and current domain name.
Complainant asserts that Respondent lacks rights and legitimate interest in the Disputed Domain Name because Respondent has no trademark registered in its name that consists of or contains the term BRADESCO and has no right on an unregistered basis in such a term. Complainant has not entered any agreement, authorization or license with Respondent with respect to use of the mark BRADESCO. The term "bradesco" is not generic nor descriptive of Complainant's products or any other products and is not a dictionary word. Complainant asserts that Respondent's activities do not relate to the products Complainant commercializes under its BRADESCO trademark and Respondent has never been known to be related or associated with said term. Complainant asserts that BRADESCO does not appear in Respondent's denomination or any other identification of Respondent.
Complainant asserts that the Disputed Domain Name was registered and used in bad faith because Respondent seems to have no legitimate interests in the Disputed Domain Name, which redirects automatically to a Youtube video named "STAR WARS toy movie". There is no reference to Respondent's activities or services. Complainant asserts, therefore, that the only plausible explanation for Respondent's selection of the Disputed Domain Name is to exploit in an unauthorized fashion the reputation and goodwill of Complainant and its names and marks. Complainant asserts that Respondent's bad faith can also be deduced by the fact that Respondent has used the notorious mark BRADESCO as the major component of the Disputed Domain Name, in circumstances in which Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant asserts that its trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim to have registered that mark as a domain name had it not been in absolute bad faith. Complainant notes that several previous UDRP panels have required respondents to transfer domain names incorporating Complainant's trademark BRADESCO to Complainant, including Banco Bradesco S/A v. Belcanto Investment Group Limited,WIPO Case No. D2013-1048, Banco Bradesco S/A v. CPSTA LTDA,WIPO Case No. D2013-1280, Banco Bradesco S/A v. Antonio Altiere,WIPO Case No. D2013-1278, and Banco Bradesco S/A v. Javenaldo,WIPO Case No. D2013-1056. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the disputed 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
A respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
"(i) Before any notice to you of the dispute, your use 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) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue."
Policy, paragraph 4(c). Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's registered BRADESCO mark. Adding the generic term "banco", which is related to Complainant's activities, to Complainant's mark will increase, not decrease, the confusing similarity. See Banco Davivienda S.A. v. Domain Name, Privacy Protection Service INC d/b/a PrivacyP. / Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2014-1922 ("it would be entirely reasonable for anyone seeking information regarding the Complainant and its business to type the word 'banco' in front of the word 'davivienda'. Especially, if one takes into the account that the Complainant's company name is Banco Davivienda S.A. and that it is engaged in providing of different banking services.").
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has made a prima facie case that Complainant has not authorized Respondent to use the BRADESCO mark and has no agreement, license or affiliation with Respondent, that Complainant has no relationship with Respondent, that Respondent is not known by the Disputed Domain Name, and that Respondent is not making a bona fide use of the Disputed Domain Name. As Respondent is not actively using the Disputed Domain Name, Respondent cannot be making a legitimate or noncommercial use of it.
Once Complainant makes its prima facie case, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0"), paragraph 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Respondent has registered and used the Disputed Domain Name in bad faith by virtue of the fact that Respondent has combined a mark that is notorious, or well renowned, with the generic term "banco", which corresponds to the services Complainant provides under its trademark. It is well-established that inaction or "passive holding" of a domain name confusingly similar to a well-known trademark can constitute use in bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; PRL USA Holdings, Inc., and Ralph Lauren Media, LLC v. Morrison and Associates, WIPO Case No. D2001-0255.
Furthermore, the Panel finds that Respondent has registered and used the Disputed Domain Name in bad faith to prevent the owner of the trademark from reflecting the mark in a corresponding domain name pursuant to paragraph 4(b)(ii) of the Policy. The Panel notes that Respondent has previously registered a domain name incorporating the identical mark herein, BRADESCO, which was ordered to be transferred to Complainant. See Banco Bradesco S/A v. Cameron David Jackson, WIPO Case No. D2015-0704 (ordering transfer of ). Respondent has also incorporated the well-known trademarks of several other complainants in its domain names, found to have been registered in bad faith. These include MICHELIN (Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671), DRAMBUIE (William Grant & Sons Limited, The Glenfiddich Distillery v. Cameron David Jackson,WIPO Case No. D2016-0261), and THULE (Thule Sweden AB v. Cameron David Jackson,WIPO Case No. D2016-0414).
For both of these reasons, the Panel finds that Respondent has registered and used the Disputed Domain Name in bad faith. 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 Complainant.
Jordan S. Weinstein
Sole Panelist
Date: July 13, 2016
Full & Egal Universal Law Academy