Complainant is Banco Bradesco S.A. of Osasco, Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is FAST-12785241 Attn.Bradescourgente.net of Provo, Utah, United States of America, and Name Redacted.
The disputed domain name <bradescourgente.net> is registered with FastDomain, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2009. On December 28, 2009, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On December 29, 2009, FastDomain, Inc. 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 4, 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 8, 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 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 formal response. Accordingly, the Center notified Respondent's default on February 2, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 16, 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.
By email dated January 28, 2010, an individual named as co-Respondent in the amended Complaint (based on information provided by the Registrar in response to the Center's request for registrant identity verification), notified the Center and Complainant that his business had been victim of “hijacking” of their domain name hosting account with Bluehost.com (affiliate of the Registrar in this proceeding). This individual named as co-Respondent claimed that he had no involvement with or knowledge of registration of the disputed domain name, which was undertaken by an unknown third party, presumably based on information taken from the hijacked hosting account. Information was provided regarding this individual's business, including website information providing a biographical sketch of this named individual. The Panel reviewed this information and issued Administrative Panel Procedural Order Number One requesting documentation from the individual named as co-Respondent of correspondence between him and the hosting company. The Center, the parties and the Panel received copies of email correspondence from this individual named as co-Respondent on March 5, 2010, as well as information concerning the appropriate person to contact at the hosting company that might provide further confirming information. On March 5, 2010, in light of the somewhat unique circumstances, the Panel contacted Bluehost.com and spoke with the person responsible for addressing domain name dispute matters. Based on information provided by the hosting company (and affiliate of the Registrar), the Panel was satisfied that the disputed domain name was obtained by a third-party under false pretenses, and that individual named as co-Respondent in the amended Complaint was not responsible for the registration. The Panel advised the parties (by email through the Center) of its intention to avoid naming the individual co-Respondent in its decision. In response to invitation from the Panel for comment, Complainant indicated by email to the Center dated March 5, 2010 that it had no objection to the Panel's proposal, provided that execution of Complainant's requested remedy (i.e. transfer of the disputed domain name) was not adversely affected.
The Panel has decided that no purpose is to be served by including the name of the referenced individual co-Respondent in this decision, and has therefore redacted his name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual co-Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances.
Complainant has registered the word service mark BRADESCO on the register of the Brazilian Intellectual Property Office (Instituto Nacional da Propiedade Industrial or INPI), including service mark registration number 007170424, with allowance date June 10, 1980 in class 36, covering, inter alia, banking services. The service mark covered by the aforesaid registration has been declared “notorious” or well-known within the meaning of Brazilian trademark law by the Director of Trademarks of the Brazilian Intellectual Property Office (declaration of October 10, 1985). Complainant is the owner of numerous additional registrations for the BRADESCO service mark, including BRADESCO-formative marks in Brazil and in countries throughout the world. These include the word and design mark BRADESCO registered on the Principle Register of the United States Patent and Trademark Office (USPTO), registration number 2243427, with registration date May 4, 1999, in international class 36 covering, inter alia, banking, credit agencies and loan financing.
Complainant is registrant of over 100 domain names incorporating the term BRADESCO, and operates a commercial Internet website principally at “www.bradesco.com.br”.
Complainant is the second largest privately owned banking group in Brazil.
Complainant has provided substantial evidence that the BRADESCO service mark is among the most well-known banking brands in the world, ranked number 12 in 2009 in the Brand Finance Global Banking 500, Top 500 Banking Brands report of February 2009.
According to the Registrar's verification report, Respondent is an individual whose identity was initially protected by a privacy shield. This individual indicated in correspondence with the Center that he was not responsible for registration of the disputed domain name, and that the website hosting account of his business had been “hijacked” in 2009. The Registrar (and related hosting company) has provided evidence satisfactory to the Panel to substantiate the claim of the individual listed as registrant on the record of registration that he was not responsible for registration of the disputed domain name, with record of registration created on October 23, 2009. The Panel has decided to redact the name of the individual listed as registrant on the record of registration from this decision (while providing it to the Registrar in Annex 1 and directing that said Annex should not be published).
The disputed domain name has been used in connection with a “phishing scheme” requesting private data from customers of Complainant, as evidenced by warnings provided by Google of suspected phishing (report of November 12, 2009), PhishTank (report of October 27, 2009) and Kernel Trap (report of December 18, 2009). There is no evidence of other usage of the disputed domain name on the record of this proceeding.
Complainant alleges that it has rights in the service mark BRADESCO. Complainant argues that the BRADESCO mark is well-known in Brazil and other countries. Complainant further argues that the disputed domain name is confusingly similar to its well-known mark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not been authorized to use its service mark, that Respondent has not been commonly known by the disputed domain name and has not acquired trademark rights in that name, and that Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Respondent's sole use of the disputed domain name has been to conduct a phishing scheme (i.e., seeking private data from customers of Complainant under false pretenses).
Complainant argues that Respondent registered and has used the disputed domain name in bad faith. Complainant states that Respondent intentionally for commercial gain has used the disputed domain name to direct Internet users to Respondent's website by creating confusion as to whether Complainant is the source, sponsorship, affiliate or endorser of Respondent's website. Complainant contends that Respondent intentionally adopted Complainant's well-known mark to defraud Internet users.
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 notice of the Complaint and commencement of the proceeding to Respondent by email and express courier. The individual named in the record of registration as Respondent received this notice and corresponded with the Center regarding his lack of involvement in registering the disputed domain name. The identity of the “Respondent-in-fact” is unknown because that Respondent-in-fact deliberately undertook to disguise its identity in order to perpetuate a fraud. Under these circumstances, the Panel considers that the Center discharged its responsibilities under the Policy and Rules to notify Respondent of this proceeding, and provided it with adequate opportunity to respond.
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 provided evidence of registration of the service mark BRADESCO on the register of the Brazilian Trademark Office (INPI) as well as evidence of long use in commerce of that mark in Brazil and elsewhere (see Factual Background, supra).
The Panel determines that Complainant has established rights in a service mark.
The disputed domain name incorporates Complainant's service mark and combines it with a common term in Portuguese (the language spoken in Brazil), “urgente”, translated as “urgent” in English.1 The combination of Complainant's well-known banking service mark with the term “urgente” is confusingly similar to Complainant's trademark standing alone. An Internet customer of Complainant's banking business might well expect a website seeking personal data to be designated “urgent”. The Panel determines that the disputed domain name is confusingly similar to Complainant's 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))
The use by Respondent of Complainant's service mark in the disputed domain name to seek private information from Complainant's banking customers for the purpose of defrauding those customers does not establish rights or legitimate interests for Respondent in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name
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 “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” (Policy, paragraph 4(b)(iv)).
Respondent has registered and used Complainant's BRADESCO mark in the disputed domain name intentionally for commercial gain to attract Internet users to Respondent's website by creating confusion as to Complainant acting as a source, sponsor, affiliate or endorser of Respondent's website. Respondent intentionally took advantage of the well-known character of Complainant's mark used to identify Complainant's banking business for the purpose of seeking to defraud Complainant's banking customers.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning 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 disputed domain name, <bradescourgente.net> be transferred to Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar's attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name, <bradescourgente.net>, be transferred from that individual to Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this decision.
Frederick M. Abbott
Dated: March 7, 2010
1 Panel's Google translation from Portuguese to English of March 5, 2010.