WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Simes, Maria Marcela
Case No. D2014-0025
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 Simes, Maria Marcela of Palo Alto, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bradesco-banking.com> and <bradesco-24horas.com> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2014. On January 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 January 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on February 12, 2014. 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 bank established in 1943, whose head office is in Osasco, Brazil. It operates over 25 million bank accounts for its customers as well as more than 45 million savings accounts, in addition to an extensive network of service points, branches and ATMs (“automatic teller machine”).
The Complainant has a trade mark for BRADESCO, filed on June 13, 1979, and registered on June 10, 1980, for “bank services”. The mark BRADESCO has been recognized by the Brazilian Patent and Trade Mark Office as a notorious mark, with the consequence that it enjoys enhanced protection in Brazil. The Complainant has 333 other trade marks including the term “bradesco” in Brazil in addition to many BRADESCO trade marks in different jurisdictions. It also owns (amongst other domain names) the domain names <bradesco.com.br> and <bradesco.com>.
The disputed domain names, namely <bradesco-24horas.com> (“the first disputed domain name”) and <bradesco-banking.com> (“the second disputed domain name”), were registered on July 18,2013 and August 2, 2013 respectively. As at the date the Complaint was filed, the first disputed domain name did not resolve to any web site and the second disputed domain name resolved to a holding page containing a message “Welcome to FreeWebHostingArea.com!”.
5. Parties’ Contentions
The Complainant says that both the disputed domain names are similar to the BRADESCO trade mark in which it has rights. In this respect, the Complainant points, in addition to the trade mark referred to above, to its extensive trade mark portfolio of trade marks comprising or including the word “bradesco”, details of which have been appended to the Complaint.
So far as similarity is concerned, the Complainant points out that the first disputed domain name comprises the Complainant’s trade mark followed by the number “24” and then “horas” which is the Portuguese word for “hours”. The Complainant says that the additional number and word simply serve to suggest that the Complainant’s services can be accessed twenty four hours a day. The Complainant says that added matter of this type does not serve to render the first disputed domain name dissimilar to its BRADESCO trade mark.
In relation to the second disputed domain name, the Complainant says that the addition of the word “banking” to the Complainant’s BRADESCO mark does not serve to make the second disputed domain name dissimilar to the mark. The Complainant says that “banking” in this context is entirely descriptive of the services rendered by the Complainant under the mark.
In relation to both disputed domain names the Complainant says that consumers would expect any goods and services offered through web sites which resolved to either of the disputed domain names to be supplied by the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. It says that it is not aware of any trade marks registered in the name of the Respondent which contain or consist of the word “bradesco” nor is there any evidence that the Respondent has any unregistered rights in BRADESCO. It points out that “bradesco” is neither a generic term nor is it descriptive of the Complainant’s products. It is a coined word made up of the first letters of words which comprised the Complainant’s previous commercial name (Banco BRAsileiro de DESCOntos). It says that any activities which the Respondent conducts have not been commercialized under the BRADESCO trade mark and that the Respondent is not known to be related or associated with that mark.
Lastly, the Complainant says that both disputed domain names were registered and used in bad faith. It points out that the first disputed domain name does not resolve to an active web site and the second disputed domain name points to a web site which simply contains the message “Welcome to FreeWebHostingArea.com!”. Accordingly, the Complainant says that the only reason why the Respondent has registered the disputed domain names is to exploit the reputation and goodwill of the Complainant in its BRADESCO marks. The Complainant draws attention to PRL USA Holdings, Inc. and Ralph Lauren Media, LLC v. Morrison and Associates, WIPO Case No. D2001-0255 in which the Panel stated that inaction or passive holding by a respondent of a domain name could amount to bad faith.
The Complainant refers to the fact that in other UDRP proceedings concerning the Complainant’s BRADESCO mark, UDRP panels have found in favour of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Policy provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements in order to obtain an order that a disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established that it has extensive trade mark rights in BRADESCO. Neither of the disputed domain names is identical to the Complainant’s trade mark and the Panel accordingly needs to consider whether they are similar.
The Panel agrees with the Complainant’s submissions in respect of similarity. When comparing the Complainant’s mark with the disputed domain names, the test is not quantitative. It does not involve assessing whether the additional letters, words or numbers which feature in the disputed domain names are sufficiently numerous to render the disputed domain names and the trade mark dissimilar. Rather, the test is qualitative; is the character or nature of the added numbers and words such as to have the effect that the mark and the disputed domain names should not be regarded as confusingly similar?
With both disputed domain names, the added matter (“24horas” and “banking”) describe obvious features or attributes of the Complainant’s services. An Internet user would focus on the distinctive BRADESCO component of each of the disputed domain names. Indeed, the additional descriptive words, if anything, serve to reinforce the initial impression of an Internet user that any services offered by a web site to which either disputed name resolved were likely to be provided by the Complainant. Accordingly, the Panel finds that the disputed domain names are similar to the Complainant’s BRADESCO mark and that this ground of the Policy is made out.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets three non-exhaustive circumstances which would indicate that the Respondent has rights or legitimate interests with respect to the disputed domain names, namely (to summarise) that (1) before any notice to it of the dispute, the Respondent had used, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; or (2) that the Respondent had been commonly known by the disputed domain names; or (3) that the Respondent was making a legitimate, noncommercial or fair use of the disputed domain names, without intent for commercial gain.
As is evident from the Complainant’s submissions – and as is commonly the case when a respondent chooses not to file a response to a complaint – there is nothing to suggest that the Respondent has or might have rights or legitimate interests in respect of either of the disputed domain names. The Panel accordingly finds that the Complaint satisfies this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four non-exhaustive examples of conduct on the part of a Respondent which might amount to bad faith registration and use.
The Complainant’s submissions are not particularly well directed at these grounds. Moreover, the Panel derives limited assistance from being told that other UDRP panels have found in the Complainant’s favour in respect of other complaints brought against other respondents on other factual scenarios.
However, the Complainant has established that the BRADESCO mark is distinctive and famous and the Panel finds that the Respondent would have been well aware of it at the time of registration of the disputed domain names. Indeed, the addition of the added words and numbers to the BRADESCO mark which feature in the disputed domain names show that the Respondent had the Complainant specifically in mind at the time of registration. There are no facts or matters set out in the Complaint which could conceivably justify the registration of the disputed domain names by the Respondent. The Panel accordingly finds that the registration of the disputed domain names was in bad faith.
The passive holding of the disputed domain names by the Respondent does not fit entirely comfortably with any of the none-exhaustive examples of bad faith circumstances which are set out at paragraph 4(b) of the Policy. However, a number of UDRP decisions have concluded, as the Complainant has asserted, that passive holding of domain names can amount to bad faith use.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (on which the decision cited by the Complainant is partly based), the panel found that bad faith use could be established where a respondent had been entirely inactive. Not all the grounds which supported a bad faith finding in that case are present in the facts as set out in the Complaint. However, the notoriety of the Complainant’s mark, the failure by the Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain names and the fact that it is not possible to conceive of any active use of either of the disputed domain names which would amount to good faith use and/or would not infringe the Complainant’s mark rights cumulatively support a finding by the Panel that the Respondent is using the disputed domain names in bad faith.
The Panel accordingly finds that the Complaint satisfies this element of the Policy.
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 names <bradesco-banking.com> and <bradesco-24horas.com> be transferred to the Complainant.
Date: February 21, 2014