Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud e Scatamburlo Advogados, Brazil.
Respondent is Ari Souza of Sunnyvale, California, United States of America.
The disputed domain name <bradescompletocomponetedeseguranca.com> is registered with Melbourne IT Ltd (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2014. On May 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 10, 2014.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 20, 2014. 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.
Complainant is a leading provider of banking services in Brazil. Complainant runs over 25 million bank accounts and 45 million savings accounts. It has over 4,600 branches and several thousand ATMs. Furthermore, Complainant owns branches and affiliates in New York, Buenos Aires, Brazil, Grand Cayman, Luxembourg and Tokyo.
Complainant owns the Brazilian mark BRADESCO, Reg. No. 007170424, Reg. Date June 10, 1980, filed on June 13, 1979, covering bank services in International Class 36. This mark was declared notorious by the Instituto Nacional da Propriedade Industrialaccording to Brazilian Law No. 5,772 of December 21, 1971, deserving special protection in all classes. Presently, the BRADESCO mark, being a highly renowned mark, is assured special protection in all fields of activity, pursuant to Brazilian Law 9,279 of May 14, 1996.
Complainant also owns several BRADESCO trademarks in various countries, including Argentina, Barbados, Chile, China, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, 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 <bradesco.com.br>, and <bradesco.com>.
The disputed domain name was registered on December 7, 2013.
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to the trademark BRADESCO, owned by Complainant. The disputed domain name is composed by Complainant's trademark BRADESCO plus the word "completo" (which is Portuguese for complete), and the term "componetedeseguranca". This term is a misspelling of "componente de segurança", which stands for "security component" in English. This leads to the conclusion that the disputed domain name is confusingly similar to Complainant's trademarks, inducing customers to believe that the disputed domain name is the real and current Complainant's domain name, which is not true.
Respondent lacks rights or legitimate interests in the disputed domain name. Complainant's highly renowned trademark BRADESCO has been registered in Brazil since 1980, at least 33 years before Respondent registered the disputed domain name. There is no trademark registered in the name of Respondent that consists of, or contains, the word "Bradesco". Respondent does not have any right on an unregistered basis in such a mark. Complainant has not entered into any agreement, authorization or license with Respondent with respect to the use of the word "Bradesco".
The "Bradesco" term is not generic or descriptive of Complainant's products, and it is not a dictionary word either in the Portuguese, English, French or Italian languages. "Bradesco" is a coined word created by joining of the first letters of Complainant's previous commercial name (Banco BRAsileiro de DESCOntos).
As far as it is known, Respondent's activities do not relate to the product marketed under the BRADESCO trademark and Respondent has never been known to be related or associated to said mark. The element "Bradesco" does not appear in Respondent's name or in any other identification.
The disputed domain name was registered and used in bad faith. Respondent seems to have no legitimate interest in the disputed domain name, since there is no related webpage. Since there is no reference to Respondent's activities or services, the only plausible explanation for Respondent's choice of the disputed domain name is to exploit in an unauthorized manner the reputation and goodwill of Complainant and its names and marks. The bad faith of Respondent can also be deduced from 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 mark.
The trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim having registered said mark as a domain name, had it not been in absolute bad faith. All of the aforementioned facts, analyzed separately or in their entirety, lead to the conclusion that the bad faith of Respondent is incontestable. In similar cases, where the mentioned elements were found present, panels have recognized the bad faith of Respondent.
Previous panels have decided in favor of Complainant in several cases where the disputed domain names incorporated the trademark BRADESCO. See for instance 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, Banco Bradesco S/A v. Javenaldo, WIPO Case No. D2013-1056, Banco Bradesco S/A v. Pedro Souza, WIPO Case No. D2013-1062, Banco Bradesco S/A v. Erick Reis, WIPO Case No. D2013-1065, Banco Bradesco S/A v. Jonas Silva, WIPO Case No. D2013-1052, Banco Bradesco S/A v. Larisa Sardinha, WIPO Case No. D2013-1051, Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059, Banco Bradesco S/A v. Belcanto Investment Group, WIPO Case No. D2013-1279.
Respondent did not reply to Complainant's contentions.
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name 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.
By submitting a printout of the corresponding certificate of registration in Brazil, Complainant has proved that it owns trademark rights in the BRADESCO mark. See section 4 above.
The Panel notes that the disputed domain name contains the BRADESCO mark in its entirety, the word "completo" (which is Portuguese for complete), the composite generic term "componetedeseguranca", an obvious misspelling of "componente de segurança" ("component of insurance" in English), and the generic Top-Level Domain ("gTLD") ".com". It is well established that the mere addition of a generic term is inapt to distinguish the disputed domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9 ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.") It is also well established that the addition in a domain name of a gTLD to a mark does not generally distinguish the domain name from the mark.
Thus, the Panel is satisfied that the disputed domain name is confusingly similar to Complainant's BRADESCO mark.
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has at least a right or legitimate interest in the disputed domain name. See WIPO Overview 2.0, paragraph 2.1 ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]").
Complainant contends that its mark BRADESCO has been registered in Brazil at least 33 years before Respondent registered the disputed domain name, that there is no trademark registered in the name of Respondent that consists of, or contains, the word "Bradesco", that Respondent does not have any unregistered right in this mark, and that Complainant has not entered into any agreement, authorization or license with Respondent with respect to the use of the word "Bradesco". Also, says Complainant, the "Bradesco" term is not generic or descriptive of Complainant's products. "Bradesco" is not a dictionary word, but a coined word created by combining the first letters of Complainant's previous commercial name Banco BRAsileiro de DESCOntos. Finally, the term "Bradesco" does not appear in Respondent's name or in any other identification of Respondent.
Taking together, these contentions and the evidence provided by Complainant are apt to constitute a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. In particular, Complainant has shown that there is no operative website associated to the disputed domain name. This has been confirmed in the lookup visit conducted by the Center on May 20, 2014. Also, Respondent failed to provide any explanation for having registered the disputed domain name, fully incorporating Complainant's BRADESCO mark. Considering all these factors and circumstances the Panel finds that Respondent lacks any right or legitimate interest in the disputed domain name.
The Panel notes that Complainant's BRADESCO mark has been registered over thirty years before Respondent registered the disputed domain name. Also, the Panel agrees with several prior panels that BRADESCO is a famous or well renowned mark for financial services. See for instance Banco Bradesco S/A v. Simes, Maria Marcela, WIPO Case No. D2014-0025 ("The BRADESCO mark is distinctive and famous"); see also BANCO BRADESCO S.A. v. Antonio Giudice, WIPO Case No. D2010-1975 ("When the disputed domain name was registered in 2010 by the Respondent, the mark BRADESCO was notorious very long since" 1); see also Banco Bradesco S/A v. Antonio Altiere, WIPO Case No. D2013-1278 ("As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark BRADESCO in the field of banking services is clearly established and the Panel finds that the Respondent knew or must have known of the Complainant's trademark".)
Given the status of Complainant's mark, the Panel concludes that Respondent knew and targeted Complainant, its mark and services when it registered the disputed domain name. In the circumstances of this case this is evidence of registration in bad faith.
As to use in bad faith, there is no evidence of any actual use of the disputed domain name, be it presently or at any time following registration. Nor is there any explanation or submission from Respondent stating or allowing to infer its purpose in registering the disputed domain name.
The Panel finds this situation to be closely similar to the facts in the much cited Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Telstra panel established that certain circumstances of inaction (passive holding) other than those identified in Policy paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith. In the opinion of the Panel, the particular circumstances which lead to this conclusion in the instant case are as follows:
a) The Complainant's trademark BRADESCO is famous or well renowned in respect of financial services;
b) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, and
c) It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant's rights under trademark law.
In these circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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, <bradescompletocomponetedeseguranca.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: July 2, 2014
1 The original text in Portuguese reads, "quando o nome de domínio em disputa foi registrado pelo Demandado, já em 2010, a marca BRADESCO era há muito tempo notória no Brasil".