WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Belcanto Investment Group
Case No. D2013-1279
1. The Parties
The Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Belcanto Investment Group of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The Domain Name <bradescofinaciamento.com> is registered with Key-Systems GmbH dba domainscout24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2013, the Registrar 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 July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 8, 2013. On July 24, 2013, the Center received an e-mail communication from the Respondent. Upon request by the Complainant of August 14, 2013, the Center confirmed on August 15, 2013, the suspension of the Administrative Proceeding for a 30-day period until September 15, 2013. Upon further request by the Complainant of September 13, 2013, the Center confirmed, on September 16, 2013, the suspension of the Administrative Proceeding for a further 30-day period until October 16, 2013. On October 16, 2013, the Center received a request from the Complainant to re-institute the proceedings, after the Domain Name had not been transferred to the Complainant. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 18, 2013.
The Center appointed Dr. Andrea Jaeger-Lenz as the sole panelist in this matter on October 31, 2013. 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, created in 1943 as Banco Brasileiro de Descontos, is one of the biggest banking and financial services company in Brazil. The Complainant has branches of its business all over Brazil, and also in New York (United States of America), Buenos Aires (Argentina), Grand Cayman (Cayman Islands), Luxemburg and Tokyo (Japan).
The Complainant owns the Brazilian trademark no. 007.170.424 BRADESCO, registered for “banking services” in class 36. The Complainant also owns more than 300 other Brazilian trademarks incorporating the expression BRADESCO, and further trademark registrations in a number of countries worldwide that consist of or contain the word BRADESCO, such as:
- Argentine trademark registration no. 2.351.776 BRADESCO, registered on July 4, 1988;
- Mexican trademark registration no. 546.990 BRADESCO, registered on April 25, 1997;
- United States trademark no. 2243427 BRADESCO (and logo), registered on May 4, 1999;
- United Kingdom trademark registration no. 2466266 BRADESCO BBI, registered on September 7, 2007;
- United Kingdom trademark registration BRADESCO SECURITIES (word) no. 2466264, registered on September 7, 2007.
The Complainant is also the owner, amongst others, of the domain names <bradesco.com.br> and <bradesco.com>.
According to the WhoIs excerpt provided in Exhibit D-1 to the Complaint, the Domain Name was registered on May 24, 2013.
5. Parties’ Contentions
The Complainant alleges that (1) the Domain Name is confusingly similar to the Complainant’s trademark BRADESCO, (2) the Respondent has no right or legitimate interests in use of the Domain Name, and (3) the Respondent registered and uses the Domain Name in bad faith.
The Complainant states that the Domain Name is confusingly similar to its trademark BRADESCO and the domain names previously registered by the Complainant, as the Domain Name is a combination of the word “finaciamento” as a misspelling of the Brazilian word “financiamento”, which stands for financing in English, and the Complainant’s trademark BRADESCO. The Complainant argues that customers would immediately identify the Domain Name with the Complainant’s notorious trademark and consequently believe that the Domain Name is the real and current domain of the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, as its highly renown trademark BRADESCO was registered at least 33 years before the Domain Name, whereas there is no trademark registered in the name of the Respondent that consists of, or contains the word “bradesco”. Also, the Complainant states that the Respondent has no right on an unregistered basis in such mark, and that the Respondent has no connection or affiliation with the Complainant and has not received any authorization or license to use the Complainant’s trademark in a domain name. The Complainant asserts that BRADESCO is not a generic term, nor descriptive, and that it is not a dictionary word in either Portuguese, English, French, or Italian, but rather a coined word created by joining the first letters of the Complainant’s previous commercial name “Banco BRAsileiro de DESCOntos”. Upon the Complainant’s information, the Respondent has neither ever been known to be related or associated to the mark BRADESCO, nor do the Respondent’s activities relate to the products commercialized under said mark.
The Complainant further alleges that the d Domain Name was registered and is being used in bad faith. It states that the webpage, to which the Domain Name resolves, shows only a few announcements in Portuguese. Thus, the only plausible explanation for the Respondent’s selection of the Domain Name is to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its names and marks. The Complainant asserts that the bad faith of the Respondent can be deduced also from the fact that the respondent has used the notorious trademark BRADESCO as the major component of the Domain Name, in circumstances in which the Respondent has no rights or legitimate interests in the mark. Considering how widely used and known by the public the trademark BRADESCO is, 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. The Complainant then quotes, in its view, similar cases, where the panel has recognized the respondent’s bad faith, namely PRL USA Holdings, Inc., and Ralph Lauren Media, LLC v. Morrison and Associates, WIPO Case No. D2001-0255, and Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164.
The Complainant cites a number of cases, such as Banco Bradesco S/A v. Camila Esteban Oliveira, WIPO Case No. D2011-0037; Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108; or BANCO BRADESCO S.A. v. Antonio Giudice, WIPO Case No. D2010-1975, with different respondents using the trademark BRADESCO within their domain names. The Complainant quotes a substantial part of Banco Bradesco S/A v. Angela Oster, WIPO Case No. D2010-1201, where the Panel, inter alia, held the trademark BRADESCO and the domain name <recadastramentobradesco.com> to be confusingly similar.
All trademarks cited by the Complainant in its favor predate the creation of the Domain Name.
On the basis of these allegations, the Complainant requests transfer of the Domain Name.
On July 24, 2013, the Center received an email from the Respondent with the following wording:
As the registrant of this domain name I would like to inform all parties that I do not wish to contest the Complaint and hereby authorize the immediate transfer of the domain to the Complainant.
Belcanto Investment Group.”
The Respondent did not formally reply any further to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary issue
The Respondent has unilaterally consented to the transfer, but a settlement agreement between the parties has not been achieved. Thus, the rule on termination of the proceeding on the grounds of a settlement pursuant to paragraph 17 of the Rules does not apply. The situation of a unilateral consent to transfer by the Respondent is not directly addressed by the Rules.
Therefore, before the proceeding to assess the elements of paragraph 4(a) of the Policy, it must first be determined whether or not it is necessary in light of the Respondent’s consent to transfer of the Domain Name that the Panel should proceed to a decision with substantive determination.
In previous UDRP cases where the respondent unilaterally consented to transfer of the disputed domain name, panels have approached the issue depending on the specific circumstances of the dispute. As analyzed by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer”, have taken three different approaches. Some panels have ordered transfer of the disputed domain name on the basis of a unilateral consent to transfer of the respondent alone, without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132); in some cases, the panel found that consent to transfer means that the three elements of paragraph 4(a) of the Policy are deemed to be satisfied, so that transfer should be ordered on that basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398). Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy (e.g. Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921; Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211; Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190; see also Citigroup Inc. v. Texas International Property Associates, NAF Claim No. 1210904).
Considering the individual circumstances of the present case, the following has to be noted: The Respondent has replied that it did not wish to contest the Complaint and authorized the immediate transfer of the Domain Name to the Complainant. There was no reservation made, as happens in other cases, that one or more of the elements of the Policy are not met. Subsequently, proceedings were suspended in order to allow for a settlement agreement, but no further details of the settlement discussions are present in the case file. Apparently, the Complainant addressed the Registrar directly with the Respondent on copy with a view to obtaining a transfer of the Domain Name, which did not lead to the requested result. Upon this, the Complainant requested re-instatement of proceedings from the Center. In particular, the Complainant did not, as this happens from time to time in other cases, issue any explicit statements to the effect that it requested a substantive determination of the elements of the Policy or displayed any interest in a material decision resulting from a broader perspective. Thus, it has to be concluded that the primary goal of the Complainant is to achieve transfer of the Domain Name as expeditely and efficiently as possible. Finally, no documents are contained in the file that lead to the assumption that in the course of the suspension the unilateral consent had been withdrawn. Rather, it appears that the Registrar has not complied with the request, as it is held to take orders for instructions only from tis customer, the Respondent.
Taking these factors and the principle of due expedition of a case into consideration, the Panel considers the genuine unilateral consent to transfer by the Respondent provide a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) of the Policy. Where a complainant has sought transfer of a disputed domain name, and the respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is also the most expeditious course (see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132). In Williams-Sonoma, Inc., supra, the panel held: “Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to ‘ensure that the proceeding takes place with due expedition.’ Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.”
B. Substantial determination
For the reasons discussed in above A., it is not necessary to make a determination pursuant to paragraph 4 (a) of the Policy, whether the Complainant has established
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The decision can be taken without reviewing the facts supporting the claim based on the unilateral and unambiguous consent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bradescofinaciamento.com> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Date: November 14, 2013