WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer
Case No. D2010-2108
1. The Parties
The Complainant is Banco Bradesco S/A of Osasco of São Paulo, Brazil, represented by Salusse Marangoni Advogados, Brazil.
The Respondent is Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer of Brea, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bradescoatualizacao.info> 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 December 8, 2010. On December 8, 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 December 9, 2010, New Dream Network, LLC dba DreamHost.com 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 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2011.
The Center appointed Christophe Imhoos as the sole panelist in this matter on January 17, 2011. 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
The Complainant is a Brazilian banking corporation established in Brazil since 1943, a member of the BRADESCO Group of companies, the second largest private owned Brazilian groups (Annexes 7-8 to the Compaint). It is the owner of the mark and trademark BRADESCO, registered in Brazil and worldwide (Annexes 13-18 to the Complaint). In particular, the Complainant owns the trademark BRADESCO in the United States under registration No. 2243427, registered on April 17, 1997 and valid until April 19, 2019 (Annex 21-22 to the Complaint).
Furthermore, the Complainant is the owner of numerous domain names incorporating BRADESCO in Brazil and throughout the world (Annexes 19-20 to the Complaint).
The domain name in dispute was registered on May 10, 2010.
5. Parties’ Contentions
The Complainant’s main arguments are the following.
(i) The domain name <bradescoatualizacao.info> is confusingly similar to the trademark BRADESCO in which the Complainant has rights.
The <bradescoatualizacao.info> domain name is confusingly similar to <bradesco.com.br> registered on January 1, 1996 (Annex 23 to the Complaint). The BRADESCO trademark is so well-known and unique that the expression that springs out from both domain names is the BRADESCO word. The “com.br” or “info” particles, only indicate a Brazilian domain name and the info is the top level domain for information, therefore irrelevant, as constantly reiterated in many decisions rendered in UDRP procedures (such as, e.g. Sanofi Aventis, Société Anonyme vs. Balata.com Ltd., WIPO Case No. DNL2008-0014).
The possibility of confusion is evident given that Internet users will immediately identify the domain name registered by the Respondent with Complainant’s trademarks and domain names, believing that both registrations identify the same company, what is not true given the undue registration made by the Respondent.
(ii) The Respondent has no rights or legitimate interests in respect of 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; it is a coined word created by the Complainant decades ago, with a direct relation to its initial name, Banco BRAsileiro de DESCOntos S/A (Annex 7 to the Complaint).
Moreover, the Respondent is not enrolled as owner of any trademark, be it an application or a registration, for the “bradescoatualizacao” expression or any other expression whatsoever in Brazil or in the United States (Annexes 31-33 to the Complaint).
In addition, the Respondent knew or should have known of the existence of the Complainant’s trademark and domain name registrations, which were matters of public record, before the Respondent registered the domain name <bradescoatualizacao.info>. Thus, the Respondent must be deemed to have had knowledge of the Complainant’s pre-existing rights in BRADESCO as a trademark, as well as a domain name.
(iii) The domain name was registered and used in bad faith.
By having registered the well-known and prestigious BRADESCO trademark as a domain name, the Respondent has, no doubt, sought an undue advantage when unduly enjoying from the Complainant’s fame and renown, creating thereby a likelihood of confusion in the Complainant’s clientele in what has now been referred to as phishing scams. Not only is the domain name being unduly used, but the Respondent used the ruse, in an attempt to attract Internet users, including the Portuguese expression "atualizacao" ("update" in English) on its domain name.
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 the United States (Annexes 31-32 to the Complaint) or in Brazil (Annex 33 to the Complaint).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark BRADESCO in Brazil and the United States (Annexes 13-18 and 21-22 to the Complaint).
The Complainant’s trademark BRADESCO is obviously confusingly similar to the domain name <bradescoatualizacao.info>.
As pointed out in a previous decision – similar to the instant one that involved the same mark – which applies mutatis mutandis here (Banco Bradesco S.A. v. Afonso Miranda, WIPO Case No. D2010-0645): "The disputed domain name incorporates the Complainant’s mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it will tend to be confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. The addition of the word “cadastro” does not detract from the confusing similarity to the trademark as that word means enrolment or registration in Portuguese.(…). The trademark “bradesco” is so pervasive in Brazil and other countries that most Internet users would associate the disputed domain name with the Complainant’s trademark. It is also well-established that the top level of a domain name such as “.com”, “org”, or “biz” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, F. Hoffmann-LaRoche AG v. Digi Real Estate Foundation, WIPO Case No. D2005-1286.
For the same reasons than those stated above, the Panel finds that the disputed domain is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant does not seem to have granted any license or to have otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the domain name at stake.
In addition and as rightly pointed out by the Complainant, the domain name in question does not lead to any active webpage and no traffic has been registered for the related website (Annexes 28 and 29 to the Complaint).
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
As pointed out by the same panel mentioned above in a similar case involving the Complainant (Banco Bradesco S.A. v. Afonso Miranda, WIPO Case No. D2010-0645): "Bradesco” is a coined term, and not a generic or descriptive one. As the Panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. The Panel finds that the Respondent in all probability had intended to use the Complainant’s mark when registering the disputed domain name in order to direct traffic to a website to be used for phishing purposes. While the disputed domain name does not lead to an active website, this Panel is of the view that the Respondent most likely registered the disputed domain name with full knowledge and for the express purpose of re-directing Internet users to its site in order to entice clients to input their banking details through the use of a phishing scam. Thus, the Respondent probably intended to attract, for commercial gain, Internet users to a website in order to create a likelihood of confusion with the Complainant’s well-known trademark. In any event, passive holding of a domain name may also constitute bad faith registration and use. Thus, the Panel finds that the passive holding of the disputed domain name in this case constitutes bad faith registration and use.
For the same reasons than those stated above, the Respondent's conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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.info> be transferred to the Complainant.
Dated: January 30, 2011