WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Alexandre Lopes Gomez
Case No. D2014-1477
1. The Parties
The Complainant is Banco Bradesco S/A of São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Alexandre Lopes Gomez of Maranhão, Brazil.
2. The Domain Name and Registrar
The disputed domain name <portal-bradesco.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2014. On August 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 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.
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 September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2014.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on October 3, 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.
On October 16, 2014, due to exceptional circumstances, the Panel extended the due date for rendering its decision until October 22, 2014.
4. Factual Background
According to the Complainant, it is known in Brazil and other countries as one of Brazil's largest private banks, having been in business since 1943. Its name is derived from Banco BRAsileiro de DESCOntos S/A. It is now part of the Bradesco Group of companies. The Complainant runs more than 25 million bank accounts and more than 45 million savings.
There are several registrations for the mark throughout the world, owned by the Complainant – more than 300 registrations in Brazil, only.
The renown of the Complainant's mark was recognized by the Brazilian Patent and Trademark Office, which declared the Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO to be "notorious" under the Brazilian Law No. 5,772/71 which foresaw special protection to highly renowned marks.
Specimen trademark registrations in the Complainant's name include Brazilian registration number 007170424, filed on June 13, 1979 and registered on June 10, 1980.
The Complainant is also the owner of several domain names incorporating the expression "Bradesco" including <bradesco.com.br> and <bradesco.com>.
According to the WhoIs database, the disputed domain name is created on March 14, 2014.
5. Parties' Contentions
The Complainant contends on the facts that it has been in business since 1943 and is now well known internationally as a Brazilian bank with about 1,000 agencies. The Complainant's accounts are submitted in substantiation.
The Complainant's name, derived from Banco BRAsileiro de DESCOntos S/A., has been used for more than seventy years. Brazilian Trademark Registration No. 007170424 for the word mark BRADESCO has been declared "notorious" and has special protection under Brazilian law. The Complainant has submitted an extensive list of its trademark registrations worldwide for BRADESCO.
The Complainant contends in the terms of the Policy and the law that the disputed domain name is identical to the trademark BRADESCO in which the Complainant has rights. The disputed domain name is also confusingly similar to domain names owned by the Complainant, including <bradesco.com.br> registered on January 1, 1996 and <bradesconet.com.br> registered on July 2, 1996.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has never had any relationship with the Respondent. The trademark word BRADESCO is not a generic term, nor descriptive of the Complainant's services, and is not a dictionary word in Portuguese, English, French or Italian. BRADESCO is a coined word created by the Complainant, derived from Banco BRAsileiro de DESCOntos S/A.
Further, being a Brazilian citizen and having its address in Brazil, it is curious to suppose that the Respondent had never heard of the Complainant or its marks – the Complainant being one of the largest banks in the country and active for more than seven decades.
The Respondent knew or should have known of the existence of the Complainant's trademark, being a matter of public record. Thus, the Respondent must be deemed to have had knowledge of the Complainant's pre-existing rights in BRADESCO as a trademark.
The Complainant further contends that the disputed domain name was registered and used in bad faith. The Respondent could only be seeking an undue advantage either by attempting to sell it or to divert the legitimate owner's clientele. In fact, it has been largely established by earlier UDRP casesthat the possession of a domain name obviously connected with a complainant suggests that its use by another is opportunistic bad faith.
In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users and is clear that the Respondent has no rights in the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy, in paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect to 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
Regarding the first element, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the trademark BRADESCO, which is registered in several countries and clearly used regularly throughout the world.
The Complainant has presented consistent evidence of ownership of the trademark BRADESCO in the world, by presenting an extensive list of Brazilian and of international registrations, as well as comprehensive evidence of the use of the sign.
Further, the Panel finds that the disputed domain name <portal-bradesco.com> is confusingly similar to the trademark belonging to the Complainant, since this trademark is entirely reproduced in it.
Moreover, the disputed domain name incorporates entirely the mark BRADESCO, merely adding the word "portal", which has the same meaning both in Portuguese and in English, and which gives the impression to lead to a portal of services rendered by the Complainant.
Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate Interests
Given the clear evidence that the trademark BRADESCO is registered in the Complainant's name and is widely known as identifying the Complainant's services, and that the Complainant has not licensed its marks to the Respondent, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
Besides, the Respondent is domiciled in Brazil, where the Complainant has its seat and where the majority of its business takes place for more than seventy years. Hence, in the Panel's opinion, the Respondent cannot claim to have been using the trademark not knowing the Complainant's rights to it.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts outlined in items sections A and B above can also evidence the Respondent's bad faith in obtaining the registration and use of the disputed domain name.
The disputed domain name was registered to clearly mislead the consumers – hence the use of the word "portal" in addition to the mark BRADESCO. The Respondent intended to give an overall impression that the disputed domain leads to an official web site of the Complainant, trying to profit from the Complainant's renowned trademark for unlawful purposes. This attempt to mislead consumers is also evidence of bad faith from the Respondent.
Further, the Panel finds that the Respondent's registration and holding of a domain name comprising in its entirety the widely known trademark of a bank, of which on the balance of probabilities, it must reasonably have been aware and without any rights or legitimate interests, in and of itself, is sufficient in this case for a finding of bad faith.
Currently, the disputed domain name is not being actively used. The apparent lack of so-called active use does not as such prevent a finding of bad faith in the circumstances of this case. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the domain name in bad faith.
The Panel finds that the Complainant has also proved the third element 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 <portal-bradesco.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: October 21, 2014