Complainant is Banco Bradesco S.A. and Alvorada Cartões, Crédito Financiamento e Investimento of Osasco - SP, Brazil represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is Comar Ltd., Domain Administrator /Whois Privacy Protection Service of St. Petersburg, Russian Federation.
The disputed domain name <bancofinasa.com> is registered with NICREG LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2009. On December 28, 2009, the Center transmitted by email to NICREG LLC a request for registrar verification in connection with the disputed domain name. On December 30, 2009, NICREG LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 5, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2010. The Center verified that the Complaint together with the amended 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 January 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 5, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 10, 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.
Complainant Banco Bradesco S.A. is the owner and parent company of Complainant Alvorada Cartões, Crédito Financiamento e Investimento. The Panel will refer to these closely affiliated enterprises as “Complainant”. Complainant has provided substantial documentation regarding its ownership structure, and the basis for its assertion of ownership of rights in the trademark subject of this proceeding. The Panel does not consider it necessary to further elaborate on this corporate structure which has been duly substantiated (and that has not been contested).
Complainant has registered the word trademark and service mark FINASA on the register of the Brazilian Intellectual Property Office (INPI). Complainant has provided copies of certificates of registration, number 006623093, dated November 10, 1977, in class 36.10, covering banking, credit finance and investment services, and; number 817597050, dated January 30, 1996, in class 36.60, covering credit card services. Complainant has provided a listing of numerous additional registrations at INPI of the FINASA trademark and service mark (hereinafter “trademark”).
Complainant indicates that “finasa” is a “coined” term, i.e., does not form part of the common Portuguese language spoken in Brazil.
Complainant is a major Brazilian banking institution. Complainant asserts that the FINASA trademark is used by it to conduct its financing operations, including in the areas of consumer credit and leasing. According to Complainant, Banco Finasa is the market leading provider of credit for the purchase of automobiles in Brazil. Complainant has provided substantial evidence that its BRADESCO trademark is well-known in Brazil, but it has provided little or no direct evidence of usage of FINASA in commerce in Brazil. Nonetheless, the FINASA trademark is the subject of registration in Brazil as aforesaid.
Complainant has registered numerous domain names incorporating the FINASA trademark, including but not limited to <bancofinasa.com.br> and “finasa.com.br”. Two domain names specifically referred to by Complainant, <bancofinasa.com.br> and <finasa.com.br>, currently redirect Internet users to a website using the trademark of the parent enterprise, Banco Bradesco (and more specifically using “Bradesco Financiamentos”).1 On the Bradesco Financiamentos website there is little or no apparent use of the FINASA trademark by Complainant.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to a Network Solutions WhoIs database report furnished by Complainant, the record of registration of the disputed domain name was created on December 16, 2007.
Respondent has used the disputed domain name to direct Internet users to webpage that is headed with “www.bancofinasa.com” on the left side of the page, and “this domain is for sale” in bold font on the right side of the page. The page as of the date of a screenshot provided by Complainant (June 26, 2009) otherwise shows a listing of links related to the type of business conducted by Complainant (including, but not limited to, “Finance”, “Online Banking” and “Credit Card”). Complainant has provided a screenshot from a different date (December 8, 2009) that it asserts (and that appears) to result from a click-through of the “for sale” link that takes Internet users to a webpage maintained by the Registrar (NICIT), in this case largely in the German language, requesting the visitor to submit an offer for the disputed domain name.
By e-mail dated July 21, 2009, Complainant transmitted a cease-and-desist and transfer demand to Respondent. According to Complainant, Respondent did not reply to that demand.
Complainant alleges that it owns trademark rights in the term FINASA in Brazil as evidenced by registration and as substantiated by long use in commerce in Brazil.
Complainant argues that the FINASA trademark is well-known in Brazil.
Complainant contends that the disputed domain name is confusingly similar to its FINASA trademark, as well as to its domain names that incorporate that trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that when Respondent registered the disputed domain name it knew or should have known of Complainant's well-known trademark, that Respondent has not provided evidence that it was previously known by or has trademark rights in the disputed domain name, and that use of the disputed domain name to host a parking page offering the disputed domain name for sale does not establish rights or legitimate interests.
Complainant argues that Respondent's use of a privacy shield in connection with registration is evidence of bad faith. Complainant contends that Respondent's offer to sell the disputed domain name evidences that it registered that name with the bad faith intent to sell it.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See, e.g., Rules, paragraph 2(a)).
The Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to Respondent at the email addresses included in the record of registration, and by express courier. The courier record indicates that the hardcopy documents were successfully delivered to the address of Respondent included in the record of registration. Some, though not all, of the email addresses included on the record of registration appear to have successfully received transmission of the electronic file. The Center has taken the steps indicated by the Policy and Rules to constitute adequate notice to Respondent, and the Panel considers that Respondent was given an adequate opportunity to submit a Response in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's 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 domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has submitted evidence of registration of the FINASA trademark at the Brazilian Intellectual Property Office (INPI), and has provided pleading evidence of use in commerce of that trademark (see Factual Background supra). Respondent has not contested the validity of the trademark registration. The Panel finds that Complainant has established rights in the FINASA trademark.
The disputed domain name adds the term “banco” to the FINASA trademark. The term FINASA does not have an ordinary meaning in the Portuguese language used in Brazil. Complainant's trademark registration for FINASA covers banking and related services. It is reasonable to presume that Internet users viewing the term “banco” in connection with Complainant's FINASA trademark would find the combination confusingly similar to Complainant's coined trademark. The Panel finds that the disputed domain name is confusingly similar to Complainant's FINASA trademark.
The Panel has determined that Complainant has rights in the FINASA trademark, and that the disputed domain name is confusingly similar to that trademark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not contested this prima facie case.
Respondent's sole known use of the disputed domain name is in connection with a parking page that includes links to businesses competitive with the business of Complainant, and where it offers to sell the disputed domain name. Such use does not establish rights or legitimate interests.
The disputed domain name incorporates a coined trademark. The parking page is not solely using a generic term to draw the interest of Internet users.
Complainant has succeeded in establishing that Respondent lacks rights or legitimate interests in the disputed domain.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent] ha[s] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name”; and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or of a product or service on [respondent's] web site or location”.
Respondent's sole known use of the disputed domain name has been in connection with a parking page that includes links to providers of goods and services competitive with those of Complainant, and that offers to sell the disputed domain name. Respondent's offering of the disputed domain name for sale to third parties (including Complainant or a competitor) evidences that it registered the disputed domain name for that purpose. It is reasonable to infer that Respondent intended to sell the disputed domain name for a price in excess of its out-of-pocket costs directly related to the domain name. On this basis, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
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, <bancofinasa.com> be transferred to Complainant.
Frederick M. Abbott
Dated: February 24, 2010
1 Panel visit of February 24, 2010.