WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Domain Privacy Group / Rogerio Samuko
Case No. D2014-0130
1. The Parties
Complainant is Banco Bradesco S/A of Osasco, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
Respondent is Domain Privacy Group of Burlington, Massachussets, United States of America (“US”) and Rogerio Samuko of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <bradescocartoes2013.com is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 7, 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
Complainant is a highly known Brazilian bank with activities that date back to 1943. Complainant has branches and affiliates all over Brazil and in several different countries, such as US, Argentina, Luxembourg and Japan.
Complainant is the owner of over 300 trademark registrations in Brazil, bearing the expression “Bradesco” (as per Annex F-1 of the Complaint), including registration no. 007170424 for BRADESCO, filed in 1979 and granted in 1980. Apart from Brazilian registrations, Complainant is also the owner of several registrations worldwide, as per Annex F-2 of the Complaint.
Complainant also owns several domain names, among which are <bradesco.com.br> and <bradesco.com >, as per Annex G of the Complaint.
The disputed domain name <bradescocartoes2013.com> was registered by Respondent on August 5, 2013. The disputed domain name resolves to a webpage indicating that the domain name is for sale.
5. Parties’ Contentions
Complainant claims it 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. It also has, distributed throughout the entire Brazilian territory, more than eight-thousand four-hundred service points, four-thousand six 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, Bank 24 hours”). Complainant further claims that the trademark was declared as a famous trademark by the Brazilian Patent and Trademark Office.
Complainant argues that, since it is one of the leaders of the private financial activity in Brazil, being also the owner of the BRADESCO trademark in 38 countries, it is clear that the disputed domain name is confusingly similar with Complainant’s trademark and domain names. The disputed domain name is composed of Complainant’s trademark BRADESCO, the term “cartoes”, and the year “2013”. The term “cartoes”, is the Portuguese translation for “cards”, making reference to one of the products (cards) that Complainant offers to its clients.
Complainant therefore contends that it is fully possible for customers to believe that the disputed domain name is Complainant’s current domain name, which is not true. In other words, according to Complainant, consumers may immediately identify the disputed domain name registered by Respondent with Complainant’s famous trademark, believing that the registrations identify the same company, and that the products/services under the names originate from the same source.
Complainant also contends that there is no trademark registered, in the name of the Respondent, that consists of the word “Bradesco”, or that it has any right on an unregistered basis in such a mark. In this sense, Complainant also alleges that no trading agreement has ever been discussed between Respondent and Complainant.
In Complainant’s view, BRADESCO is not a generic term, nor descriptive of Complainant’s products, and is not a dictionary word either 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). Thereby, as far as it is known, 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 the said mark.
Complainant further claims that Respondent has registered and is using the disputed domain name in bad-faith since BRADESCO is a famous trademark and Respondent registered the disputed domain name with the purpose of selling it.
Lastly, Complainant argues that in previous UDRP cases panels have already ordered many times the transfer of domain names incorporating the trademark BRADESCO to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for BRADESCO worldwide and that such trademark is entirely incorporated in the disputed domain name <bradescocartoes2013.com>.
The Panel acknowledges that BRADESCO is a well-known trademark for banking services, and believes that adding generic or descriptive terms to an otherwise distinctive and well-known trademark, does not exclude the disputed domain name from being considered confusingly similar to the registered trademark. In this case, Respondent added to Complainant’s trademark the generic terms “cartoes” (cards, in English), and the year “2013”.
Moreover, the Panel considers that the disputed domain name may create false associations between Complainant and Respondent, misguiding consumers into believing Respondent’s activities are somehow related to the products and services managed under the BRADESCO trademark.
Therefore, the Panel finds that the disputed domain name <bradescocartoes2013.com> is confusingly similar to Complainant’s BRADESCO trademark.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <bradescocartoes2013.com>.
The disputed domain name was registered on April 5, 2013, that is, several years after Complainant’s registrations for the trademark BRADESCO. Therefore, considering that Complainant’s trademark is well-known in Brazil, the same country of residence of Respondent, the Panel agrees that the latter must have been aware of Complainant’s trademark at the time of registration.
In addition, the Panel understands that there is no trademark registered, in the name of the Respondent bearing the word “bradesco”, nor has Complainant entered into any agreement, authorization or license whatsoever with Respondent with respect to the use of the word “bradesco”. The Panel is also of the same opinion of Complainant, that “bradesco” is not a generic term, nor descriptive of Complainant’s products.
Accordingly, Complainant established a prima facie case that Respondent does not have legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company and legal rights to the trademark BRADESCO at the time of registration of the disputed domain name, considering its famous status in Brazil, and worldwide fame.
The Panel also finds that the fact that Respondent used the famous mark BRADESCO as the major component of the disputed domain name, in circumstances in which Respondent did not have any rights to the respective trademark, is an indicative of bad faith as well.
Moreover, it is clear to the Panel that the disputed domain name may create false associations between Complainant and Respondent, misleading consumers into believing that Respondent is an authorized retailer of Complainant’s products, which Complainant has confirmed not to be true.
Furthermore, considering all circumstances, the Panel finds that Respondent registered the disputed domain name with the purpose of selling it to an interested party which by itself constitutes bad faith, as per paragraph 4(b)(i) of the Policy, above cited.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used 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 <bradescocartoes2013.com> be transferred to the Complainant.
Gabriel F. Leonardos
Date: March 21, 2013