WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Larisa Sardinha
Case No. D2013-1051
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 Larisa Sardinha, having an address both in Drums, Pennsylvania, United States of America and in Cunho, Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <bradescoatual.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing contact information for the disputed domain name, which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2013, providing contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2013.
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 June 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2013.
The Center appointed Gonçalo M.C. Da Cunha Ferreira as the sole panelist in this matter on July 23, 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 was constituted, under the denomination Banco Brasileiro De Descontos, in 1943. Nowadays, it is known under the denomination Banco Bradesco S/A (Annex B-1 to the Complaint).
The Complainant is one of the leaders in the Brazilian private banking services, running more than 25 million bank accounts and more than 45 million savings accounts. Furthermore, the Complainant has distributed throughout the entire Brazilian territory, more than 8,400 service points, 4,600 branches, over 3,700 service posts, more than 1,400 automated teller machines (ATMs), more than 43,000 “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, over 34,800 “Bradesco Dia & Noite” (in English, “Bradesco Day & Night”) ATMs, and more than 12,900 shared ATMs known as “Banco24horas” (in English, “Bank24hours”). Finally, the Complainant has branches and affiliates all over Brazil and also in New York – United States of America, Buenos Aires – Argentina, Grand Cayman – Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Luxembourg – Luxembourg, and Tokyo – Japan (Annex E to the Complaint).
The Complainant’s trademark BRADESCO was filed in Brazil in June 13, 1979, achieving registration on June 10, 1980, and numbered No. 007.170.424. It has been successively renewed and is currently valid to identify, in international class NCL (7) 36, “bank services.” (Annex F to the Complaint).
Due to the great recognition in the Brazilian Market this mark was declared notorious by the Instituto Nacional da Propriedade Industrial (the Brazilian Patents and Trademarks Office).
The Complainant is also the owner, in Brazil, of other 333 trademarks registrations incorporating the expression BRADESCO, all of which are currently valid (Annex F-1 to the Complaint).
The Complainant is the owner of several BRADESCO trademarks around the world comprising Argentina, Aruba, Barbados, Republic of Bolivia, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Chile, China, Colombia, Costa Rica, Republic of Cuba, Curaçao, Dominican Republic, Republic of Ecuador, Republic of El Salvador, Republic of Guatemala, Republic of Honduras, Hong Kong, China, India, Indonesia, Israel, Jamaica, Japan, Mexico, Republic of Nicaragua, Republic of Panama, Republic of Paraguay, Republic of Peru, Russian Federation, Singapore, South Africa, Republic of Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States of America, and Eastern Republic of Uruguay (Annex F-2 to the Complaint).
The Complainant owns the domain names <bradesco.com.br> and <bradesco.com>, among other domain names containing the mark BRADESCO (Annex G to the Complaint).
For more than 20 years, the Complainant has used and extensively marketed the BRADESCO mark in connection with bank services.
On October 16, 2012, more than twenty years after the first registration of the Complainant’s mark that is extensively used the disputed domain name <bradescoatual.com> was registered (Annex D-1 to the Complaint).
5. Parties’ Contentions
The Complainant argues that the disputed domain name <bradescoatual.com> is confusingly similar to the Complainant’s trademark BRADESCO and the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because it does not own any registration for the trademark or name BRADESCO;
The Complainant states that “If the domain name is of the free choice of the interested party, it must necessarily be found among expressions which are free for adoption, and not among trade names and registered trademarks belonging to third parties, and insofar as those distinctive signs constitute absolute rights, are opposable to undue use, as is determined by the rules of 8 “ICANN - Internet Corporation for Assigned Names and Numbers”, which regulates the “.com” domain names”
It is evident for the Complainant that the disputed domain name <bradescoatual.com> is confusingly similar to the BRADESCO trademark, to which it has prior and unencumbered rights.
The Complainant claims that the possibility of confusion is evident, saying that the disputed domain name <bradescoatual.com> is composed of the Complainant’s trademark BRADESCO, and the term “atual”, which is the Portuguese word for “current” and argues that this leads to the conclusion that the disputed domain name <bradescoatual.com> is confusingly similar to the Complainant’s trademarks.
The Complainant argues that the trademark BRADESCO is not a generic term, nor descriptive of the Complainant’s products, and is not a dictionary word neither in Portuguese, English, French or Italian.
“Bradesco” is a coined word created by the joining of the first letters of the Complainant’s previous commercial name (Banco BRAsileiro de DESCOntos) and as far as it is known, the Respondent’s activities do not relate to the products commercialized under the BRADESCO trademark and the Respondent has never been known to be related or associated to said mark.
Finally, the Complainant argues that the Respondent seems to have no interest in the disputed domain name, since it redirects Internet users to Google’s main webpage, with no reference to the Respondent’s activities or services.
If the webpage related to the disputed domain name has no reference to the Respondent’s activities or services, the only plausible explanation for the Respondent’s selection of the disputed domain name is to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its names and marks, and the bad faith of the Respondent can be deduced also by the fact that the Respondent has used the notorious mark BRADESCO as the major component of the disputed domain name, in circumstances in which the Respondent has no rights or legitimate interests in the trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The third element for a complainant to establish is that the “domain name has been registered and is being used in bad faith.” Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The disputed domain name <bradescoatual.com> is composed of two words: the first is the well-known mark BRADESCO owned by the Complainant and the second “atual” which means “actual”, i.e. generic and without a meaning regarding the activity and the services provided under the trademark BRADESCO. Therefore, in this Panel’s view, it is clear that the disputed domain name <bradescoatual.com> is confusingly similar to the Complainant’s well-known mark, BRADESCO. As mentioned in the case Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-1086; “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 “[i]n order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, 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). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel.”
In this case, the Panel finds that the Complainant has made its prima facie case. The Respondent did not reply to the Complainant’s contentions to demonstrate its rights or legitimate interests. The Panel further finds in this case that since the first word in the disputed domain name is a term created by the Complainant and is a well-known trademark, it is difficult to conceive any legitimate reasons for anyone to use this word in a domain name, unless the person has acquired that right through an authorization or license from the owner, which is not the case in the present case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Having regard to all the circumstances the Panel finds that the Respondent’s registration and use of a domain name comprising in its entirety the widely known trademark of a bank, of which on the balance of probabilities he must reasonably have been aware, without any rights or legitimate interests, is evidence of bad faith on the part of the Respondent (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The current use of the disputed domain name to resolve to Google’s main webpage is, in the circumstances of this case, of no relevance for the Panel’s finding of bad faith.
Under these circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For 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 <bradescoatual.com> be transferred to the Complainant.
Gonçalo M.C. Da Cunha Ferreira
Date: August 6, 2013