The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Salusse Marangoni Advogados, Brazil.
The Respondent is Paulo Araujo of Recife, Pernambuco, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 8, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 8, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2010. The Response was filed with the Center on December 13, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 23, 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. Supplemental Filing
The Rules provides for the submission of the Complaint by the Complainant and the Response by the Respondent.
No express provision is made for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel.
On December 14, 2010 the Complainant submitted a supplemental filing where he basically tries to challenge the Respondent's arguments, one by one. However, the UDRP proceedings do not include such successive replies from one party to the other.
Therefore, the Panel does not admit the supplemental filling submitted in the present case and will not consider it on this decision. 5. Factual Background
The Complainant (Banco Bradesco S.A.) is a bank, considered to be one of Brazil’s largest corporations.
The Complainant’s trademark BRADESCO (which derives from its initial name Banco BRAsileiro de DESCOntos S.A.) is registered in many countries and has been used for more than sixty years. The trademark was also declared to be notorious by the Brazilian Patent and Trademark Office in 1984.
The Complainant also owns many domain names incorporating the word “BRADESCO”, including the domain name , registered in 1996.
The Respondent lives in Brazil and registered the domain name on July 20, 2010.
When the Panel tried to access the disputed domain name there was no active web site. 6. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
i. The domain name is identical and equivalent to the BRADESCO trademark over which the Complainant has prior rights. The domain name is also confusingly similar to the domain name registered on January 1, 1996.
ii. The Respondent lacks rights and legitimate interests in the disputed domain name. “BRADESCO” is not a generic term, nor descriptive of the Complainant’s services, and is not a dictionary word either in the Portuguese, English, French or Italian languages. The Respondent does not have a trademark application, much less a registration, including the word "BRADESCO". The Respondent knew or should have known of the existence of the Complainant’s trademark registration and domain name registration, which were matters of public record, before the Respondent registered the disputed domain name. The Complainant has constantly and extensively used the BRADESCO trademark in Brazil since 1979. On the other hand, the Respondent registered the disputed domain name only in 2010. No consent or license has been granted to the Respondent.
iii. The disputed domain name was registered and used in bad faith. Whoever might have registered the well known and prestigious BRADESCO trademark as a domain name could only be seeking an undue advantage. The Respondent does not have any relation with the "BRADESCO" element (it is not included in its name, nor is it the name, surname or nickname), it is not known by this name, nor has it sought an authorization or license to use the BRADESCO trademark, and does not own any trademark be it a registration or application contemplating the expression "BRADESCO", or any other application or registration whatsoever in Brazil. The Respondent lives in the Brazilian city of Recife, where the Complainant counts with approximately 23 branches, and at least 36 independent ATM’s. The disputed domain name registration was made with full knowledge of what the "BRADESCO" expression represents and the domain name was intentionally registered with the purpose of profiting from the fame and renown of the BRADESCO trademark and trade name, confusing Internet users with the ccTLD “.co”, insinuating that the disputed domain name belongs to the Complainant. Bad faith is demonstrated when the domain name owner registered it with the purpose using it for unlawful purposes, profiting from the disclosure and promotion of his game’s servers informing surfers that they need to connect and register to see the link. B. Respondent
The Respondent informally answered the Complaint alleging the following:
i. The Respondent doesn't have any game server and is not on the advertising business;
ii. The Respondent is not selling or negotiating any domain name;
iii. On the last few months, the Respondent has being working on a project called N which is a tool to manage communities, what justifies the use of the ccTLD “.co”. The website will host a community called “Brasil Desenvolvimento”;
iv. The Respondent is not on the same business as the Complainant and is not his competitor;
v. The Respondent did not receive any email from the Complainant before the formal notification of the Complaint. 7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, the Complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complaint`s Annexes prove that the Complainant has had rights in the BRADESCO trademark since at least 1979.
The trademark is wholly encompassed within the disputed domain name. Previous panels have recognized that a determination of identity or confusing similarity in the case of a ccTLD domain name may in appropriate cases be based on consideration of the domain name as a whole – that is, of the domain name including (in this case) the “.co” suffix. See e.g., GmbH v. Alan Lin,WIPO Case No. DME2009-0008.
Therefore, the Panel finds the disputed domain name to be in effect identical to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
The Panel has concluded that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the disputed domain name.
The trademark in question is notorious in Brazil, which is where the Respondent is located.
The Respondent's arguments do not look to be feasible and are not supported by any evidence.
The Respondent’s alleged use of the word "brades" as an acronym of a supposed community called "Brasil Desenvolvimento" does not appear to be realistic. "Brasil Desenvolvimento" is not a common construction in the Portuguese language. The expression sounds strange for a Portuguese speaker. There is no evidence of records which persuades the Panel of the veracity of Respondent’s claim.
Furthermore, it is not possible to find any document suggesting at least preparations to use the domain name in connection with this or any other bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
However, this is not a closed list.
In the present case, the disputed domain name completely encompasses the Complainant’s trademark BRADESCO.
When the disputed domain name was registered the Complainant’s trademark BRADECO was already unquestionably notorious in Brazil, what was even declared by the Brazilian Patent and Trademark Office.
This notoriety was created with massive presence on the Brazilian media and decades of business operations throughout the country, including several bank agencies in the exact city where the Respondent lives.
Therefore, it is not feasible that the Respondent could have been unaware of the Complainant’s reputation and business registering a domain name that exactly reproduces the Complainant's main trademark.
The Respondent's justifications are not reflected in any evidence and are not able to supplant the above conclusion.
The lack of any operation on the disputed domain name also does not help the Respondent. Previous UDRP decisions have shown that the mere passive holding of a domain name may characterize bad faith in some cases. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
Accordingly, the Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain name in bad faith, satisfying the third element of the Policy. 8. 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 name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: January 7, 2011
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