WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S/A v. G. J. Case No. DCC2010-0002 1. The Parties
Complainant is Banco Bradesco S/A of Osasco - SP, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is G. J. of Ananindeua, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2010. On January 12, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 12, 2010, eNom 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 23, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on March 2, 2010. 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 was founded in 1943 in the city of Marília, state of São Paulo, Brazil, under the company name Banco Brasileiro de Descontos S/A.
During the 1990’s, Complainant established its Insurance Group, offering, among other products, private retirement and pension plans. Complainant is nowadays the main company in the centre of one of the largest private owned Brazilian groups, to which is part “Bradesco Seguros S/A”, the Complainant’s Insurance company. On the basis of accounts and records, BRADESCO (and / or its affiliates) maintained in the regular course of business, in the year 2006, a total net worth of R$ 24,636 billion with total assets in the range of R$ 265 billion.
A research published by The Banker Magazine and also by “Brand Finance” two of the largest financial magazines of the world, rated BRADESCO as the most valuable banking segment brand in Latin America, receiving an AA rate.
Bradesco was also named the Best Bank in Brazil in the Euromoney Awards for Excellence 2009 as well as being included for the first time by the BrandZ Top 100 Most Valueable Global Brands, in the 2009 edition.
The BRADESCO trade name and trademark, which derives from its first company name, Banco BRAsileiro de DESCOntos S/A., has been used for more than sixty years and is now well-known within the Brazilian territory and abroad. The importance of this mark was also recognized by the Brazilian Patents and Trademarks Office which declared the Brazilian Trademark Registration No. 007170424 for the word mark “bradesco” “notorious” under the Brazilian Law No. 5,772/71 which foresaw special protection to highly renowned marks.
The BRADESCO trademark is the object of a large number of trademark registrations and trademark applications throughout the world.
Complainant is also the owner of Brazilian trademark registrations No. 814957609, for the trademark registration BRADESCODIAENOITE, filed on July 20, 1989 and valid until October 08, 2011, and registration No. 007170424, for the trademark BRADESCO, filed June 13, 1979 and valid until June 10, 2010, and domain names registered on January 23, 2004 and registered on January 01, 1996.
Respondent registered the disputed domain name on August 22, 2009. 5. Parties’ Contentions A. Complainant
Complainant asserts that it is evident that the disputed domain name is almost identical and equivalent to its BRADESCODIAENOITE trademark and similar to its BRADESCO trademark. Complainant also asserts that the disputed domain name is almost identical to its domain name and confusingly similar to its domain name .
Complainant further contends that the “.com” “br” or “cc” particles, only indicate a Brazilian domain name and the cc is the top level domain for Cocos (Keeling) Island, in
the Australian Territory, therefore irrelevant, as constantly reiterated in many decisions rendered in UDRP proceedings, such as in Sanofi Aventis, Société Anonyme vs. B Ltd.,WIPO Case No. DNL2008-0014.
Complainant claims that the possibility of confusion is evident given that Internet users will immediately identify the disputed domain name with Complainant’s trademark and domain names, believing that both registrations identify the same company - what is not true given the undue registration and use made by the Respondent.
Complainant argues that “bradesco” is not a generic term, nor descriptive of Complainant’s services, and is not a dictionary word either in the Portuguese, English, French or Italian languages. Complainant contends that “bradesco” is a coined word created by Complainant decades ago, with a direct relation to its initial company name, Banco BRAsileiro de DESCOntos S/A.
Complainant informs that Respondent lives in the city of Ananindeua, the second largest city of the Brazilian state of Pará (approximately 500,000 inhabitants), counting with at least two Bradesco branches and two Postal Bank agencies. Complainant argues that Respondent must have known that the BRADESCODIAENOITE expression is used to identify Complainant’s ATM’s available 24hours/day, 7days/week (night and day or “diae noite” in Portuguese, Respondent’s native language). Complainant informs that in the Metropolitan area of Belém (capital of the state of Pará), there are at least 23 ATM machines, placed at different locations and in Ananindeua, where Respondent resides, there are at least six (6) of these Bradesco Dia&Noite machines.
Moreover, Complainant informs that a search conducted at the Australian Patent and Trademark Office and at the Brazilian Industrial Property Institute databases demonstrated that the Respondent is not enrolled as titleholder of any trademark application or registration, for the “bradescodiaenoite” expression or any other expression whatsoever.
Complainant argues that Respondent used pages which reproduced Complainant’s original website, which would be evidence that Respondent knew about the existence of Complainant’s trademark registrations and domain names, which were matters of public record, before registering the domain name . Thus, Complainant argues that Respondent must be deemed to have had knowledge of Complainant’s pre-existing rights in the BRADESCO trademark, as well as a domain name.
Complainant alleges that the registration of the disputed domain name was made with full knowledge of Complainant’s rights over the BRADESCO trademark and that the disputed domain name was intentionally registered with the purpose of gaining profit from the fame and renown of the BRADESCO trademark and trade name, as it was used in connection with fraudulent scams.
Complainant alleges that the disputed domain name was registered in bad faith because whoever might have registered the BRADESCO trademark as a domain name could only be seeking an undue advantage (either by attempting to sell it or to divert the legitimate owner’s clientele).
Complainant also asserts that Respondent does not have any relation to the BRADESCO trademark, as it is not a part of Respondent’s name, nor is it the name, surname or nickname of Respondent.
Complainant finally contends that bad faith is demonstrated when domain name owner registered it with the purpose of preventing Complainant from reflecting the mark in a corresponding domain name, perhaps with the intention of selling it for a profit to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that (barring the country code top-level domain ) the disputed domain name is confusingly similar and identical respectively to Complainant’s BRADESCO and BRADESCODIAENOITE trademarks.
The Panel finds that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time this decision was issued, the disputed domain name did not resolve to any webpage.
The Panel finds that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a disputed domain name in bad faith if, inter alia, the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant (Policy, paragraph 4(b)(i)) or if the 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 (Policy, paragraph 4(b)(ii)).
Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its BRADESCO and BRADESCODIAENOITE trademarks when the disputed domain name subjected to this Complaint was registered. The Panel finds that Respondent must likely have been aware of Complainant’s rights in the trademarks BRADESCO and BRADESCODIAENOITE and, further, that in this Panel’s view Respondent may well have knowingly infringed Complainant’s trademark when it registered the disputed domain name, and did so with the intention to sell to Complainant the disputed domain name, to attract Internet traffic to its website or to divert Complainant’s clients.
Complainant alleges that the disputed domain name has been used in connection with phising scams. However, Complainant did not provide any evidence of phising scams. Complainant has only provided e-mails sent by Complainant reporting the alleged scams. Even though Complainant’s allegations regarding phising scam associated with the disputed domain name have not been proved, the other evidence presented with the Complaint are sufficient for the Panel to find that Respondent registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has established the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: March 15, 2010
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