WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Antonio Altiere
Case No. D2013-1278
1. The Parties
The Complainant is Banco Bradesco S/A of São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Antonio Altiere of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <sacbradescoonline.com> is registered with eNom (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 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 paragraphs 2(a) and 4(a) of the Rules,, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on August 16, 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 paragraph 7 of the Rules.
4. Factual Background
4.1 The Complainant was formed in 1943, under the name Banco Brasileiro De Descontos, in 1943 and currently operates under the name Banco Bradesco S/A at Cidade de Deus, in the city of Osasco, State of São Paulo, Brazil (Annex B-1).
4.2 Presently, the Complainant is one of the leaders in the private banking services in Brazil, with 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 eight-thousand four-hundred service points, four-thousand six-6 hundred branches, over three-thousand seven-hundred service posts, more than one thousand four-hundred automated teller machines (ATMs), more than forty-three thousand “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, over thirty four thousand eight-hundred “Bradesco Dia & Noite” (in English, “Bradesco Day & Night”) ATMs, and more than twelve-thousand nine-hundred shared ATMs known as “Banco24horas” (in English, Bank24hours”). Finally, the Complainant has branches and affiliates all over Brazil and also in New York – USA, Buenos Aires – Argentina, Grand Cayman – Cayman Islands, Luxembourg – Luxembourg and Tokyo – Japan (Annex E).
4.3 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).
4.4 This mark was declared NOTORIOUS by the Instituto Nacional da Propriedade Industrial (the Brazilian Patents and Trademarks Office), under the aegis of Brazilian Law No. 5,772 of December 21st, 1971, which established in its Article 67 that:
“Article 67. A trade mark which is considered notorious in Brazil, registered pursuant to and for the effect of this Code, shall be assured special protection, in all classes, maintaining the proper registration so as to impede its use by another for reproduction or imitation, in whole or in part, since there is the possibility of confusion with regards to the origin of the products, merchandise or services or further prejudice for the reputation of the trade name.
Sole Paragraph. The improper use of the trade mark which reproduces or imitates a trade mark that enjoys notorious trade mark status in Brazil shall aggravate the crime set forth in the proper law.”
4.5 Due to the fact that the Brazilian Law No. 9,279 of May 14th, 1996 supervened the aforementioned Law No. 5,772, the protection that is now available to the Complainant is that of the Article 125 of the new Law, which assures special protection to highly renown trademarks in the following terms:
“Article 125. Special protection shall be assured to the highly renown marks registered in Brazil, in all fields of activity.”
4.6 In addition to this special protection to which the Complainant is entitled, it is also the owner, in Brazil, of other 333 trademarks registrations incorporating the expression “BRADESCO”, all of which are currently valid (Annex F-1).
4.7 The Complainant is also the owner of several “BRADESCO” trademarks around the world comprising Argentina, Aruba, Barbados, Bolivia, Cayman Islands, Chile, China, Colombia, Costa Rica, Cuba, Curaçao, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Hong Kong, India, Indonesia, Israel, Jamaica, Japan, Mexico, Nicaragua, Panama, Paraguay, Peru, Russia, Singapore, South Africa, Trinidad ad Tobago, Turkey, United Arab Emirates, United Kingdom, United States of America and Uruguay (Annex F-2).
4.8 In addition to the foregoing, the Complainant is also owner of the domain names “bradesco.com.br” and “bradesco.com”, among other domains containing “BRADESCO” (Annexes G and G-1).
5. Parties’ Contentions
5.1 The Complainant asserts that the Respondent, however, registered the disputed domain name <sacbradescoonline.com> on May 15, 2013 (Annex D-1).
5.2 The Complainant contends that it is evident that the domain name at issue <sacbradescoonline.com> is confusingly similar to the BRADESCO trademark, to which the Complainant has prior and unencumbered rights.
5.3 The Complainant claims that the <sacbradescoonline.com> domain name reproduces the Complainant’s trademark BRADESCO, registered in Brazil under No. 007.170.424, and is confusingly similar to the domain names previously registered by the Complainant.
5.4 The Complainant argues that the <sacbradescoonline.com> domain name is composed by the terms “sac”, the Complainant’s trademark BRADESCO, and “online”. “SAC” is the abbreviation in Portuguese for “Serviço de Atendimento ao Cliente”, which means “Department of Customer Service” in English. This leads to the conclusion that the <sacbradescoonline.com> domain name is confusingly similar to the Complainant’s trademarks, leading customers to believe that the disputed domain name is the real and current Complainant’s domain name, which is not true.
5.5 Moreover, the Complainant asserts that it is one of the leaders of the private financial activity in Brazil, and is the owner of the BRADESCO trademark in 38 countries. The Complainant offers banking services under the BRADESCO trademark, to individuals and business companies, which makes it clear that the <sacbradescoonline.com”> domain name is confusingly similar with the Complainant’s trademarks and domain names.
5.6 Thus the Complainant argues that the possibility of confusion is evident given that consumers will immediately identify the disputed domain name registered by the Respondent with the Complainant’s notorious trademark, believing that both registrations identify the same company, and that the products/services offered under that name originate from the same source - what is not true given the undue registration made by the Respondent.
5.7 The Complainant argues that the highly renown trademark BRADESCO has been registered since 1980 in Brazil, at least 33 years before Respondent registered the disputed domain name.
5.8. Furthermore, the Complainant alleges that there is no trademark registered, in the name of the Respondent, that consists of, or contains, the word “bradesco”, or that it has any rights on an unregistered basis in such a mark. The Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the BRADESCO mark.
5.9. The Complainant insists that “bradesco” is not a generic term, nor descriptive of the Complainant’s products, and is not a dictionary word in the Portuguese, English, French or Italian languages. “BRADESCO” is a coined word created by the joining of the first letters of the Complainant’s previous commercial name (Banco BRAsileiro de DESCOntos).
5.10. Moreover, the Complainant submits that the Respondent’s activities do not relate to the products commercialized under the BRADESCO trademark and Respondent has never been known to be related or associated to said mark. The term “bradesco” does not appear in the Respondent’s denomination, or any other identification.
5.11 The Complainant asserts that the Respondent seems to have no interest in the disputed domain name <sacbradescoonline.com>, since there is no webpage connected to the disputed domain name. There is no reference to the Respondent’s activities or services. 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.
5.12. The Complainant also asserts that the bad faith of the Respondent can be evidenced from the Respondent’s use of BRADESCO as a major component of the disputed domain name, in which the Respondent has no rights or legitimate interests in the mark.
5.13. The Complainant alleges that the trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim having registered said mark as a domain name without bad faith.
5.14. Furthermore, the Complainant concludes that all of the aforementioned facts, analyzed separately or in their entirety, lead to the conclusion that the bad faith of the Respondent is incontestable. In similar cases, where the mentioned elements were found present, the panel recognized bad faith of the respondent (Embratel v. Kevin McCarthy, ( WIPO Case No. D2000-0164).
5.15. The Complainant states that previous UDRP panels have ordered transfer of domain names that comprise of the trademark BRADESCO. For instance, the Complainant notes: 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; BANCO BRADESCO S.A. v. Antonio Giudice, WIPO Case No. D2010-1975; Banco Bradesco S/A. v. Joony Climber, WIPO Case No. D2010-1961; Banco Bradesco S.A. v. Samambaia valinhos / bradescoatualizacao.com Private Registrant, WIPO Case No. D2010-1658; BANCO BRADESCO S.A. v. Marcos Soares, WIPO Case No. D2010-1605; Banco Bradesco S.A. v. Sirlandi do N Cruz, WIPO Case No. D2010-1604; Banco Bradesco S.A. v. Noori net, WIPO Case No. D2010-1553; Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552; Banco Bradesco S.A. v. Carlos Roberto Batista de Morais, WIPO Case No. D2010-1271; Banco Bradesco S.A. v. Angela Oster, WIPO Case No. D2010-1201; Banco Bradesco S/A v. Martha Dantas, WIPO Case No. D2010-0646; Banco Bradesco S/A. v. Afonso Miranda, WIPO Case No. D2010-0645; Banco Bradesco S.A. v. Marciano Martins, WIPO Case No. D2010-0201; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788; and Banco Bradesco S.A. v. Rebeca Gurgel, WIPO Case No. D2009-1786.
5.16 The Complainant finally contends that it has established and proven that the three requirements of paragraphs 4(a)(i)(ii)(iii) of the Policy have been met in the present case, i.e.: that the disputed domain name <sacbradescoonline.com> is confusingly similar to Complainant’s “BRADESCO” trademark, and domain names; that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the registration and use of the disputed domain name have been made by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The registrant (the Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
6.2 The Complainant has the burden of proof, in respect to each element in paragraph 4(a).
6.3 The Respondent, having failed to respond in the present proceedings, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy states “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;”
6.4 The Complainant has exclusive rights in the mark BRADESCO and has provided evidence of this fact.
6.5 The Complainant’s mark has received worldwide recognition. The disputed domain name incorporates the entirety of the trademark BRADESCO adding the words “SAC” that is the abbreviation in Portuguese for “Serviço de Atendimento ao Cliente” which means “Department of Customer Service” in English and “online”.
These additions do nothing to distinguish the disputed domain name from the Complainant’s well known trademark. This Panel accepts the decisions Banco Bradesco S/A v. Jonas Silva, WIPO Case No. D2013-1052 and Banco Bradesco S/A v. Erick Reis, WIPO Case No. D2013-1065, which established that the domain name of the previous cited cases registered by the respondent was confusingly similar to the Complainant’s well-known and widely-registered trademark BRADESCO, in which the Complainant had demonstrated, to the satisfaction of the panel, that it had rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.6 According to paragraph 4(c) of the Policy, the burden of demonstrating respondent’s lack of rights or legitimate interests rests with complainant.
6.7 In this case, the Complainant has offered meaningful explanations and has provided enough evidence of its rights and legitimate interests in the mark BRADESCO. Therefore, the burden of production shifts to Respondent to bring forward evidence of its rights or legitimate interests, if such evidence exists.
6.8 The Complainant states that the Respondent has no license, authorization or granted permission to use the BRADESCO mark, and there is no evidence to the contrary. Considering that the Complainant’s mark has achieved worldwide fame, it is highly unlikely that the Respondent chose the disputed domain name just by chance.
6.9 The Respondent has failed to rebut the Complainant’s arguments and to provide any evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the Respondent’s default in these proceedings.
6.10 Such failure by the Respondent contributes to admitting the truth of the Complainant’s version, according to Banco Bradesco S/A v. Jonas Silva, supra and cases mentioned therein.
6.11 Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
6.12 Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 its documented out of pocket costs directly related to the domain name; or
(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s web site or location.
6.13 As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark BRADESCO in the field of banking services is clearly established and the Panel finds that the Respondent knew or must have known of the Complainant’s trademark, because the disputed domain name is composed by the terms “SAC” which is the abbreviation in Portuguese for “Serviço de Atendimento ao Cliente” which means “Department of Customer Service” in English and “online” and the Complainant’s trademark BRADESCO in its entirety.
6.14 With respect to use in bad faith, the Panel considers that bad faith may be established even if the Respondent is not using the website. The apparent lack of so-called active use does not as such prevent a finding of bad faith (especially when the Complainant has a well-known trademark and no response to the complaint was filed) (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
6.15 In this scenario, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
6.16 The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <sacbradescoonline.com> be transferred to the Complainant.
José Pio Tamassia Santos
Date: August 30, 2013