WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Gisele Moura Leite
Case No. D2014-0414
1. The Parties
Complainant is Banco Bradesco S/A of Osasco-SP, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
Respondent is Gisele Moura Leite of Sao Paulo, Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <confirmabradesco.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2014. On March 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 proceeding commenced on March 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2014. On March 26, 2014, the Center received an email communication from Respondent stating that her name was used by a third party without her knowledge to register the disputed domain name. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel's attention and it is the Panel's role to decide her claim regarding identity theft.
On April 10, 2014, the Center informed the parties that it did not receive any formal Response by the specified Response due date and it would proceed with the Panel appointment shortly. Further email communications were received from the parties on April 10, 2014 in relation to the issue of identity theft.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on April 15, 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 provides private banking services since 1943 under the company name Banco Brasileiro de Descontos (currently Bacno Bradesco S/A). Complainant's trademark BRADESCO was filed in Brazil in June 13, 1979, and matured into registration on June 10, 1980. 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 21, 1971. Complainant is also the owner, in Brazil, of other 333 trademarks registrations incorporating the expression BRADESCO. Complainant is also the owner of several BRADESCO trademarks around the world comprising Argentina, Aruba, Barbados, the Plurinational State of Bolivia, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Chile, China, Colombia, Costa Rica, Cuba, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Hong Kong, China, India, Indonesia, Israel, Jamaica, Japan, Mexico, Nicaragua, Panama, Paraguay, Peru, the Russian Federation, Singapore, South Africa, Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States of America and Uruguay. Complainant is also owner of the domain names <bradesco.com.br>, and <bradesco.com>, among other domains containing the trademark BRADESCO.
The disputed domain name <confirmabradesco.com> was registered on October 1, 2013.
5. Parties' Contentions
Complainant contends that the disputed domain name reproduces its trademark BRADESCO and is confusingly similar to the domain names previously registered by Complainant. The disputed domain name is composed by the expression "confirma" and the Complainant's trademark BRADESCO. The expression "confirma" means, in English, "confirm". This leads to the conclusion that the disputed domain name is confusingly similar to the Complainant's trademarks, making it possible for customers to believe that the disputed domain name is the real and current Complainant's domain name, which is not true.
Complainant also contends that there is no trademark registered, in the name of Respondent, that consists of, or contains, the word "bradesco", or that it has any right on an unregistered basis in such a mark. And Complainant has not entered in any agreement, authorization or license with Respondent with respect to the use of the word "bradesco". "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 Complainant's previous commercial name (Banco BRAsileiro de DESCOntos).
The bad faith of Respondent can be deduced also by the fact that Respondent has used the notorious mark BRADESCO as the major component of the disputed domain name, in circumstances in which Respondent has no rights or legitimate interests in the mark.
Complainant states that previous UDRP panels have already determined many times that different Respondents transfer theirs domain names compounded by the trademark BRADESCO to Complainant. For instance, the Complainant quotes cases numbers Banco Bradesco S/A v. Belcanto Investment Group Limited, WIPO Case No. D2013-1048; Banco Bradesco S/A v. CPSTA LTDA, WIPO Case No. D2013-1280; Banco Bradesco S/A v. Antonio Altiere, WIPO Case No. D2013-1278; Banco Bradesco S/A v. Javenaldo, WIPO Case No. D2013-1056; Banco Bradesco S/A v. Pedro Souza, WIPO Case No. D2013-1062; Banco Bradesco S/A v. Erick Reis, WIPO Case No. D2013-1065; Banco Bradesco S/A v. Jonas Silva, WIPO Case No. D2013-1052; Banco Bradesco S/A v. Larisa Sardinha, WIPO Case No.. D2013-1051; Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059; and Banco Bradesco S/A v. Belcanto Investment Group, WIPO Case No. D2013-1279.
On March 26, 2014, the Center received an email communication from Respondent stating that her name was used by a third party without her knowledge to register the disputed domain name. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel's attention and it is the Panel's role to decide her claim regarding identity theft.
6. Discussion and Findings
Before addressing the merits of the case, the Panel would like to analyze Respondent's contends regarding identity theft. First, it is necessary to point out that there is no evidence of such identity theft in the case file, and that the Panel has no means to determine if such allegations are true or not. In one hand, the Panel acknowledges that there is a possibility that Respondent is in fact a victim of identity theft and that, therefore, Respondent's name and email address were used by a third party to register the disputed domain name without Respondent's knowledge or authorization. In the other hand, however, the Panel notes that under paragraph 1 of the Rules, a respondent is defined as, "the holder of a domain-name registration against which a complaint is initiated." Accordingly, while Respondent might have been the victim of identity theft, the Panel finds that, pursuant to the Rules and the Policy, Gisele Moura Leite, the Registrar-confirmed registrant of the disputed domain name, is the proper Respondent in the proceeding.
To qualify for cancellation or transfer of the disputed domain name, Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name reproduces Complainant's trademark BRADESCO.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates Complainant's trademark BRADESCO and the generic expression "confirma" ("confirm", in English). In the view of the Panel, this is bound to lead to confusion on the part of consumers and Internet users seeking information on Complainant and its services marketed under its famous registered trademark BRADESCO.
The mere addition of the generic Top-Level Domain (gTLD) ".com" to the disputed domain name does not constitute in the present case an element in the disputed domain name so as to avoid confusing similarity with Complainant's trademark. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent only sent an informal answer stating she was victim of identity theft. There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed or permitted Respondent (or anyone acting on Respondent's name) to register or use the disputed domain name or to use the trademarks. Complainant has prior rights in the trademarks which precede Respondent's registration of the disputed domain name.
Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to rebut Complainant's contentions. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Respondent has failed to show that she has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant must prove both that the disputed domain name was registered in bad faith and it is being used in bad faith.
The Panel agrees that the use of the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with Complainant's trademarks shall constitute evidence of registration and use in bad faith (see e.g. Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557).
In view of the Panel, it is clear that registration of the disputed domain name was an intentional effort to gain Internet traffic from users seeking Complainant's official domain names.
The Panel finds that many UDRP panels found that registration of a well-known trademark as a domain name can be sometimes a clear indication of bad faith in itself, even without considering other elements (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053).
For all the foregoing circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith in the terms of paragraph 4(a)(iii) 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 name <confirmabradesco.com> be transferred to Complainant.
Luiz E. Montaury Pimenta
Date: April 30, 2014