WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Domain admin, Privacy Protection Service Inc D/B/A PrivacyProtect.Org / Frank Park
Case No. D2014-0833
1. The Parties
1.1. The Complainant is Banco Bradesco S/A of São Paulo, Brazil, (the “Complainant”) represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
1.2. The Respondent is Domain admin, Privacy Protection Service Inc D/B/A PrivacyProtect.Org of Queensland, Australia / Frank Park of Seoul, Republic of Korea (the “Respondent”).
2. The Domain Name and Registrar
2.1. The disputed domain name <bancobradescopessoajuridica.com> (the “disputed Domain Name”) is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2014. On May 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On June 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 3, 2014.
3.2. The Center verified that the Complaint together with the amended 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”).
3.3. 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 June 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2014.
3.4. The Center appointed Ike Ehiribe as the sole panelist in this matter on July 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
4.1. The Complainant in this administrative proceeding is Banco Bradesco S/A a Brazilian Bank, first constituted as Banco Brasileiro De Descontos in 1943 and later established at Cidade de Deus in the city of Osasco in Sao Paulo, Brazil. The Complainant is described as one of the leading Brazilian Private banking services running more than 25 million bank accounts and more than 45 million savings accounts. The Complainant is also said to have several branches and affiliates all over Brazil, New York in the United States of America (“USA”), Buenos Aires in Argentina, Grand Cayman in the Cayman Islands, Luxembourg, and Tokyo in Japan.
4.2. The Complainant’s trademark BRADESCO was registered on June 10, 1980, which has been subsequently renewed and is currently classified under international class (“NCL”) 36 “bank services”. The Complainant’s trademark was classified as notorious by the Brazilian Patents and Trademarks Office pursuant to Article 67 of Brazilian Law No. 5,772 of December 21, 1971 and commands special protection as further provided by Article 125 of Brazilian Law No. 9,279 of May 14, 1996. The Complainant is also said to own 333 other trademark registrations incorporating the mark BRADESCO. The Complainant is also said to own several BRADESCO trademarks around the world in countries such as Argentina, Aruba, Barbados, Bolivia, Cayman Islands, Chile, China, Columbia, Costa Rica, Cuba, Curaçao, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Hong Kong, India, Indonesia, Israel, Jamaica, Japan, Mexico, Nicaragua, Panama, Paraguay, Peru, Russia, Singapore, South Africa, Trinidad and Tobago, Turkey, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, USA and Uruguay. The Complainant also owns the domain names <bradesco.com.br> and <bradesco.com> amongst other domain names containing the mark BRADESCO.
4.3. The Respondent in this administrative proceeding is Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.Org / Frank Park based at Queensland, Australia / Seoul, Republic of Korea and is recorded as having registered the disputed Domain Name <bancobradescopessoajuridica.com> on March 4, 2014, according to the WhoIs printout attached to the Complaint.
5. Parties’ Contentions
5.1. The Complainant contends that the disputed Domain Name <bancobradescopessoajuridica.com> is confusingly similar to the Complainant’s BRADESCO trademark in which it owns prior unencumbered rights. The Complainant states further that the disputed Domain Name wholly incorporates the Complainant’s BRADESCO trademark registered in Brazil since June 1980 and is also confusingly similar to the domain names previously registered by the Complainant.
5.2. The Complainant further explains that since the disputed Domain Name is composed of the term “banco” which is the Portuguese word for “bank” and the term “pessoajuridica” misspelt as “pessoa juridical” which in English means “company”, it is possible for customers to believe that the disputed Domain Name belongs to the Complainant or is associated with the Complainant and the banking services it renders to people and business entities alike. In support of that contention, the Complainant submits that the possibility is further heightened as the Complainant is described as one of the leaders of private financial activity in Brazil and is the owner of several BRADESCO trademarks in 38 countries.
5.3. The Complainant submits that the Respondent has no rights and legitimate interests in the disputed Domain Name since inter alia the Respondent has no registered trademark that consists of the mark BRADESCO or any unregistered rights in such a mark. Furthermore, it is argued that the Complainant did not enter into any agreement with or authorize the Respondent to use the BRADESCO mark. The Complainant asserts that the mark BRADESCO is neither a generic term nor a dictionary word in either Portuguese, English, French, or Italian languages, but is a coined word created by combining the first letters of the Complainant’s previous commercial name, which is “Banco Brasileiro De Descontos”. The Complainant further states that the Respondent has never been known to be related to the BRADESCO mark and the said mark does not appear in the Respondent’s denomination or any other identification.
5.4. On the issue of bad faith use and registration, the Complainant contends as follows. Firstly, the Respondent has no legitimate interest in the disputed Domain Name as the related webpage at Annex H (to the Complaint) only shows a few announcements in the Portuguese language devoid of any reference to the Respondent’s activities or services. Secondly, it follows that the only plausible explanation for the Respondent’s registration of the disputed Domain Name is to exploit the Complainant’s reputation and goodwill and its trademarks. Thirdly, the Respondent’s demonstration of bad faith use can be confirmed by the fact that the disputed Domain Name is listed for sale on the related webpage. Fourthly, it is argued that the Complainant’s use of the trademark BRADESCO is so widely used and known to the public that the Respondent’s bad faith use and registration of the disputed Domain Name is incontestable. In support of these assertions the Complainant relies on a number of previous UDRP decisions such as (i) Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; (ii) Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164; and (iii) Banco Bradesco S/A v. Javenaldo, WIPO Case No. D2013-1056, etc.
5.5. The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1. Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that; (i) the disputed Domain Name is identical or confusingly similar to the trademark or 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.
6.2. As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
A. Identical or Confusingly Similar
6.3. The Panel finds that the disputed Domain Name <bancobradescopessoajuridica.com> is confusingly similar to the Complainant’s well-known trademark in the banking industry being BRADESCO. Essentially, the disputed Domain Name wholly incorporates the Complainant’s mark and the addition of other descriptive terms such as “banco” which means “bank” in Portuguese and the generic Top-Level Domain “. com” does absolutely nothing to preclude a finding of confusing similarity. The Panel accepts that the addition of the term “banco” which means “bank” in Portuguese and the term “pessoa juridica” misspelt which means “company” to the trademark in the disputed Domain Name further increases the possibility of confusing similarity in the minds of customers and clients of the Complainant The Panel draws support from previous UDRP decisions confirming that it is sufficient to establish the requirement of confusing similarity under the Policy where a disputed domain name wholly incorporates a complainant’s trademark. See in this regard Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
6.4. The Panel is therefore satisfied that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
6.5. Secondly, the Panel also finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant submits, the Respondent has not been authorized or licensed by the Complainant to utilize or register the disputed Domain Name nor is there any evidence that the Respondent has ever been affiliated or associated with Complainant. As found in previous UDRP decisions, the burden of proof lies on the Respondent to establish the existence of any rights or legitimate interests in the disputed Domain Name, particularly where a prima facie case has been established by the Complainant. See in this regard Croatia Airlines d.d v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Furthermore, from the evidence adduced by the Complainant in particular the webpage at the Domain Name which only shows a parked page with pay-per-click links in the Portuguese language, and offering the disputed Domain Name for sale, the Panel is satisfied that such unauthorized usage cannot be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed Domain Name as propounded in the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
6.6. Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not have any rights or legitimate interests in the disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7. On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use. Evidently, there are a considerable number of factors, which firmly establish bad faith use on the part of the Respondent. Firstly, the Respondent must have been aware or ought to have been aware of the Complainant’s exclusive rights in the trademark BRADESCO by reason of prior registration of those rights since June 1980, before deciding to register the disputed Domain Name on March 4, 2014. See in general, Embratel v. Kevin McCarthy, supra. Secondly, the webpage related to the Domain Name contains a number of pay-per-click links in the Portuguese language and offers the Domain Name for sale. That in itself is evidence of bad faith registration and use. See paragraph 4(b)(iv) of the Policy. Thirdly, the Panel finds that the Respondent has made use of a privacy or proxy service known as “PrivacyProtect.org” to hide its identity from public view as can be deduced from the WhoIs printout attached to the Complaint. Although the use of a privacy or proxy service is not in and of itself an indication of bad faith, the Panel finds that if the Respondent had any intention to make genuine use of the disputed Domain Name, it would have been unnecessary to rely on a privacy service to protect its identity from the public domain. Fourthly, as alluded to in paragraph 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to rebut the evidence and contentions of the Complainant in this matter.
6.8. The Panel is therefore equally satisfied that the Respondent registered the disputed Domain Name and continued to engage in bad faith use.
7.1. For all the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <bancobradescopessoajuridica.com> be transferred to the Complainant forthwith.
Date: July 28, 2014