WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Pablo Park
Case No. D2014-0675
1. The Parties
The Complainant is Banco Bradesco S/A of Osasco, São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Pablo Park of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bradescowallet.com> is registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
On April 28, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
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 May 16, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2014.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 16, 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 one of the leaders of private banking services in Brazil, and operates more than 25 million bank accounts and 45 million savings accounts. The Complainant has branches and affiliates all over Brazil, as well as in the United States of America, Argentina, Cayman Islands, Luxembourg, and Japan.
The Complainant was first constituted under the denomination Banco Brasiliero De Descontos in 1943, and is currently established under the denomination Banco Bradesco S/A. The Complainant registered the Brazilian trademark BRADESCO (No. 007.007.170.424) on June 10, 1980, and the trademark has been successively renewed.
The Complainant owns 333 other Brazilian trademark registrations incorporating BRADESCO, all of which are currently valid, and also owns other domain names that incorporate the trademark including <bradesco.com.br> and <bradesco.com>. The Complainant owns the BRADESCO trademark in 38 countries.
The disputed domain name was registered on December 6, 2012, and is scheduled to expire on December 6, 2014.
The language of the registration agreement is Korean.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the BRADESCO trademark, to which the Complainant has prior and unencumbered rights. The disputed domain name wholly incorporates the Complainant's BRADESCO trademark, along with an additional term, "wallet." An existing website that offers the Complainant's services for electronic payments uses "carteira," the Portuguese translation of "wallet." The Complainant also has a mobile application called "b.wallet," increasing the risk of confusion;
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the registered proprietor of the BRADESCO mark in various countries and has used it continuously since 1980. The trademark BRADESCO has the elements of an invented word, and has acquired substantial goodwill as a source-identifier for the goods and services the Complainant offers and licenses. The Respondent holds no registration for any trademark registrations of the disputed domain name and has never received any authorization from the Complainant to make use of the BRADESCO mark;
(iii) The Respondent registered and is using the disputed domain name in bad faith, to exchange the transfer of ownership for illegitimate consideration. The Respondent has no obvious use for the disputed domain name besides profit from squatting on it, and is currently offering it for sale through the website accessed at the disputed domain name.
The Respondent did not reply to the Complainant's contentions. Based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
6. Discussion and Findings
A. Language of the Proceedings
Paragraph 11(a) of the Rules grants the Panel authority to determine a language other than the one specified in the registration agreement based on the circumstances of the administrative proceeding. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel. The Panel should ensure fairness in the selection of language by considering all relevant circumstances of the case, such as the parties' ability to use the proposed language, possibility of delay, and potential costs (see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
According to the Registrar, the language of the registration agreement for the disputed domain name is Korean. Both the Respondent and the Registrar are located in the Republic of Korea.
The Complainant, which conducts business in Portuguese, requests that the language of the proceedings be English so that both parties can participate on equal grounds. The Complainant states that translating all documents into Korean would incur excessive costs. The Complainant further asserts that conducting the proceeding in English would not be unfairly burdensome on the Respondent as he demonstrated understanding of the language by responding to the Complainant's email in English.
The Respondent has failed to comment on or object to the Complainant's formal request that the language of the proceedings be English, despite the Center's invitation to do so.
In light of the aforementioned circumstances, as well in consideration of the expenses to be borne by the Complainant and possible delays in the proceeding if translations are to be required, the Panel has determined, pursuant to the authority granted by paragraph 11(a) of the Rules, for the appropriate language of the proceeding to be English.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
In light of the above, the Panel may draw such inferences from the Respondent's failure to comply with the Rules as the Panel considers appropriate (see Rule 14(b); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(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.
C. Identical or Confusingly Similar
The Complainant owns trademarks that either consist of or include the BRADESCO trademark in various countries, and the Panel finds that the disputed domain name is confusingly similar to the BRADESCO trademark. Internet users intending to find one of the many websites registered by the Complainant may be misled to believe that the Complainant is the registrant of the disputed domain name or otherwise associated therewith.
The first part of the disputed domain name is identical to the Complainant's distinctive trademark BRADESCO, and the remaining term, "wallet," is not a distinctive feature of the domain name. The Complainant has a global reputation as a banking services provider, which relates to the generic financial term "wallet." The term "wallet" is similar to related online banking services and applications associated with the Complainant, which further increases the likelihood that Internet users will be confused by the disputed domain name.
The addition of a generic Top-Level Domain ("gTLD") name such as ".com" is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant's trademark (see Universal Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. UDRP panels have held that once a complainant establishes a prima facie showing that none of the three legitimizing circumstances in paragraph 4(c) of the Policy applies, the burden of production on this factor shifts to the respondent to rebut the showing (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant asserts that the Respondent has no trademark registered that consists of or contains the term "Bradesco," nor does it have any right on an unregistered basis. The Respondent has never obtained agreement, authorization, or license from the Complainant to use the BRADESCO trademark.
"Bradesco" is not a generic, descriptive, or dictionary word, and it was coined by a combination of the Complainant's original commercial name (Banco Brasileiro de Descontos). The Respondent's activities do not relate to BRADESCO products. The Respondent does not use and has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent has not submitted any response to the Complainant's case, and has therefore failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy provides four non-exclusive circumstances that suggest bad faith, including registration of the domain name for the purpose of selling the domain name to the Complainant or competitors of the Complainant.
The Respondent used the disputed domain name to lead to a parking page with the message: "This domain is for SALE." There are no other references to activities or services provided by the Respondent. In several cases, panels have found the offer of the disputed domain name for sale to the general public constitutes bad faith usage of the domain name (see Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675; Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066).
It is well-established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). Following the receipt of the Complaint, the Respondent offered to transfer the disputed domain name to the Complainant for USD 500 in an email sent on April 26, 2014. The Panel finds adequate support for the inference that the Respondent's actions satisfy the "intent to sell" requirement of paragraph 4(b)(i).
Given the global reputation of the Complainant and the wide use of the BRADESCO trademark, the Panel is of the opinion that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto at the time of the registration of the disputed domain name. Any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant's registrations known to the Respondent.
In light of the foregoing evidence, the Panel finds that the Respondent registered and used the disputed domain name 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 <bradescowallet.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: June 23, 2014