WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S.A. v. Samambaia valinhos / bradescoatualizacao.com Private Registrant
Case No. D2010-1658
1. The Parties
Complainant is Banco Bradesco S.A of Brazil, represented by Salusse Marangoni Advogados, Brazil.
Respondent is Samambaia Valinhos of Sao Paulo, Brazil; bradescoatualizacao.com Private Registrant of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bradescoatualizacao.com> is registered with New Dream Network, LLC dba DreamHost.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On October 1, 2010, the Center transmitted by email to New Dream Network, LLC dba DreamHost.com a request for registrar verification in connection with the disputed domain name. On October 2, 2010, New Dream Network, LLC dba DreamHost.com 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 October 11, 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 October 13, 2010.
The Center verified that the Complaint and 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 October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2010.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on November 18, 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.
Complainant is nowadays the main company in the center of one of the largest private owned Brazilian groups, to which “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 2009, a total net worth of R$ 42,551 billion with total assets in the range of R$ 506 billion.
A research published by the Brazilian magazine “Valor 1000, 2010 edition”, places Complainant as the 3rd largest Brazilian financial institution and its holding company, the Fundação Bradesco as the 9th largest holding company in Brazil.
Bradesco was also named “Best Bank in Brazil” in the Euromoney Awards for Excellence 2009 as well as it was included for the first time by the BrandZ Top 100 Most Valuable Global Brands, in the 2010 edition, and on the BrandFinance Global Banking 500, 2010 edition as the 9th most valuable bank and finance brand in the world.
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 are 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.
Furthermore, in Brazil, Complainant is the owner of more than 100 domain names incorporating the BRADESCO expression (Annex 19 of the Complaint), besides dozens of others throughout the world.
Respondent registered the disputed domain name <bradescoatualizacao.com> on April 15, 2010.
5. Parties’ Contentions
Complainant asserts that it is evident that the disputed domain name <bradescoatualizacao.com > entirely reproduces its BRADESCO trademark. Complainant also asserts that the disputed domain name is confusingly similar to its domain name <bradesco.com.br>.
Complainant further contends that the BRADESCO trademark is so well known and unique that the expression that springs out from both domain names is the BRADESCO word and that the “com.br” or “com” particles, are irrelevant, as constantly reiterated in many decisions rendered in UDRP procedures, such as in Sanofi Aventis, Société Anonyme v. Balata.com 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 name, believing that both registrations identify the same company - what is not true given the undue registration and use made by 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 the Complainant decades ago, with a direct relation to its initial company name, Banco BRAsileiro de DESCOntos S/A.
Moreover, Complainant informs that a search conducted at the United States Patent and Trademark Office and at the Brazilian Industrial Property Institute databases demonstrated that Respondent is not enrolled as titleholder of any trademark application or registration, for the “bradescoatualizacao” expression or any other expression whatsoever.
Complainant argues that Respondent knew or should have known of the existence of Complainant’s trademark registration and domain name registration, which were matters of public record, before Respondent registered the domain name <bradescoatualizacao.com>. Thus, Respondent must be deemed to have had knowledge of Complainant’s pre-existing rights in “BRADESCO” as a trademark, as well as a domain name. Complainant asserts that this presumption is also easily confirmed in view of the phishing scams undertaken by Respondent.
Complainant asserts that Respondent registered the disputed domain name <bradescoatualizacao.com> on April 15, 2010 soon after initiating its use for a phising scam. On May 11, 2010, a warning e-mail was sent to Respondent but never replied to.
Complainant argues that the only reason for Respondent to have registered the disputed domain name <bradescoatualizacao.com>, was to unduly profit from Complainant’s fame and renown, using it on phishing scams, luring unaware surfers to fill in their personal data on a false bank page.
Complainant further contends that not only is the domain name being unduly used, but Respondent used the ruse, in an attempt to attract Internet users, of including the Portuguese expression “atualizacao” (update in English) on its domain name, emphasizing to bank customers that they should update their personal information, further emphasizing the fraud with the information “Safe Access” on the upper right side of website under the disputed domain name.
Furthermore, Respondent’s fraudulent page is a perfect copy of the official Banco Bradesco Internet page, further convincing users that this is in fact Complainant’s page and that all personal information must be updated, subject to having the bank account frozen.
Complainant also asserts that Respondent does not have any relation with 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 the 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 .
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 the Complainant has rights; (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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <bradescoatualizacao.com> reproduces Complainant’s BRADESCO trademarks.
The Panel finds that the addition of the generic word “atualizacao” (update, in English) is not sufficient to escape a finding of similarity. Moreover, it is likely to increase the possibility of confusion amongst consumers, as it can lead Internet users into thinking it is a domain name related to an official website, sponsored or linked to Complainant that offers updates on Complainant’s Internet banking services.
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. At the time this decision was issued, the disputed domain name did not resolve to any webpage. Complainant has brought evidence that clearly demonstrates that the disputed domain name used to host a website reproducing Complainant’s official website and apparently involved phising scams. This can not be considered a legitimate use of the domain name.
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 trademarks when the disputed domain name subject to this Complaint was registered. The Panel finds that Respondent must have been aware of Complainant’s rights in BRADESCO when it registered the disputed domain name, possibly 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 phishing scams and has submitted enough evidence of such. The Panel finds that the use of the Portuguese expression “atualizacao” (“update” in English) in the disputed domain name, is more likely to increase the possibility of confusion amongst consumers, as it emphasizes to bank customers that they should update their personal information. The Panel also finds that the reproduction of Complainant’s official website and the untruthful use of the information “Safe Access” on the upper right side of website under the disputed domain name is strong evidence that the disputed domain name has been used in bad faith.
The Panel finds that Complainant has established the third element 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 <bradescoatualizacao.com> be transferred to Complainant.
Luiz E. Montaury Pimenta
Date: December 3, 2010