WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Bradesco S/A v. Raphael A Toledo

Case No. D2014-0419

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 Raphael A Toledo of “Minas Gerais”, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <atualizabradescocliente.com> is registered with RegistryGate GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2014. On March 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20 and 24, 2014, 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.

According to information the Center received from the Registrar, the language of the Registration Agreement for the disputed domain name is German. Accordingly, the Complainant was requested on March 24, 2014 to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. On March 25, 2014, the Complainant submitted a request for English to be the language of the administrative proceedings, to which the Respondent did not reply.

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 April 1, 2014. The Center further invited the Respondent in said notification to file its Response in either English or German, leaving it up to the Panel to determine the language of the proceedings in accordance with the Rules, paragraph 11. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2014.

The Center appointed Dr. Philippe Gilliéron as the sole panelist in this matter on April 30, 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 was incorporated in 1943 under the name “Banco Brasileiro de Descontos” and is now seated under the name “Banco Bradesco S.A.” in Osasco, Brazil. The Complainant has branches and offices throughout Brazil as well as branches and affiliates in New York, Buenos Aires, Grand Cayman, Luxembourg and Tokyo.

The Complainant in particular owns the verbal trademark BRADESCO that was registered in Brazil under class 36 of the Nice Classification on June 6, 1980. It further holds numerous verbal trademarks in Brazil consisting of the term “Bradesco” accompanied to a large extent of descriptive terms, as well as in numerous countries.

The Complainant further owns the domain names <bradesco.com.br> (registered on May 22, 1995) and <bradesco.com> (registered on July 17, 1996).

The disputed domain name <atualizabradescocliente.com> was registered by the Respondent on September 26, 2013 and the website attached to it does not relate to any content, but merely leads to the following message: “Forbidden – You don’t have permission to access / on this server”.

5. Parties’ Contentions

A. Complainant

The Complainant first asserts that the disputed domain name is confusingly similar to its trademarks consisting in whole or in part of the word “Bradesco”, as it entirely reproduces such term.

The Complainant further affirms that the Respondent does not have any rights or legitimate interests in the disputed domain name. The trademark BRADESCO has been registered in Brazil since 1980 and now enjoys a strong reputation. BRADESCO is neither a generic nor a descriptive term, but a fanciful coined word created by the joining first letters of the Complainant’s previous commercial name. The Respondent does not own any such trademark, is not known under that name and has not been duly authorized by the Complainant to use the term “Bradesco”.

The Complainant finally considers that the Respondent registered the disputed domain name and uses it in bad faith. Absent any activities carried out by the Respondent under the disputed domain name, “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”. Considering the fame enjoyed by the Complainant, the latter believes that “it would be almost impossible for someone to claim having registered said mark as a domain name, had it not been in absolute bad faith”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) The 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. Language of the Proceedings

On March 24, 2014, the Center sent an email to the Complainant informing it that the language of the Registration Agreement in this case is German and that the Complaint was filed in English. As a result, the Center invited the Complainant to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings.

On March 25, 2014 the Complainant submitted a request for English to be the language of the administrative proceedings to which the Respondent, having defaulted, did not oppose.

Absent any Response or reaction from the Respondent, the Panel is not in a position to assess whether the Respondent understands the English Language. Considering that the Complaint has however been duly notified to the Respondent by the Center in both English and German in accordance with the contact information available to the Complainant and to the Center, the Panel considers that the Respondent had ample opportunity to oppose the proceedings to be held in English if he wanted to do so. Absent any Response from the Respondent, the Panel sees no reason to either request the Complaint to be translated in German or to render its decision in German.

Considering the above, the Panel accepts the Complaint in English and shall render its decision in English.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of several verbal trademarks over the world consisting in whole or in part of the word “Bradesco”.

While the Panel considers that, absent any evidence submitted by the Complainant to that effect, it is not in a position to assess whether the trademark BRADESCO amounts to a well-known trademark under Art. 16.3 of the TRIPS Agreement, there is no doubt that, having been in existence in Brazil since 1980, that term enjoys a strong reputation in Brazil.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

This is all the more true when the inserted trademark, a well reputed one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such happens to be the case here, where the terms “atualiza” and “cliente” respectively mean “update” and “client”. Considering the wide range of trademarks held by the Complainant consisting of the word “Bradesco” accompanied with descriptive terms, the Panel considers that users are very likely to believe that the disputed domain name would be affiliated or sponsored by the Complainant.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In the present case, the Complainant is the owner of numerous BRADESCO trademarks. The Complainant has no business or other relationships with the Respondent, who has not been duly authorized by the Complainant to use its trademarks.

The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

On his side, the Respondent has not answered to the Complaint.

Considering the absence of a Response and the fact that the Respondent, based on the available record, is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant is the owner of numerous BRADESCO trademarks which, having been in existence in Brazil since 1980, enjoy a strong reputation.

Considering such reputation, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name <atualizabradescocliente.com> in good faith, without having been aware of the BRADESCO trademarks, noting in particular that the disputed domain name includes the descriptive terms “update” and “client” in Portuguese. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that one. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

There is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks. In this Panel’s view, it is indeed inconceivable that the Respondent would choose for some legitimate purposes a domain name such as the disputed done.

The fact that the disputed domain name does not resolve to an active website does not prevent the finding of bad faith. Based on the circumstances of this case, the Panel finds that the Respondent’s inactive use of the disputed domain name amounts to bad faith use.

Consequently, the Panel is of the opinion that the disputed domain name <atualizabradescocliente.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.

7. Decision

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 <atualizabradescocliente.com> be transferred to the Complainant.

Dr. Philippe Gilliéron
Sole Panelist
Date: May 14, 2014