WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Antonio W Domingues
Case No. D2014-2190
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 Antonio W Domingues of Rio De Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <bradesco-now.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2014. On December 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on January 23, 2015. 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 established in 1943 as Banco Brasileiro de Desconto and nowadays is known as Bradesco S/A and is one of the leaders in the Brazilian private banking services, running millions of bank and saving accounts. There are more than eight thousand four hundred Bradesco Service Points distributed throughout the Brazilian territory as well as four thousand six hundred branches, three thousand seven hundred service posts, and one thousand four hundred automated teller machines (ATMs), among others. The Complainant has branches and affiliates all over Brazil and also in Argentina, the Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), Luxembourg, Japan and the United States of America (“USA”).
The Complainant is the owner of three hundred and thirty three trademarks incorporating the term “bradesco” before the Brazilian Patent and Trademark Office (“BPTO”), including registration No. 007.170.424 for trademark BRADESCO filed in 1979 and successively renewed, being currently valid.
The trademark BRADESCO was declared Notorious by the BPTO under the aegis of the former law regarding industrial property in Brazil (Law No. 5.772/1971), therefore, the trademark is now protected by the current Industrial Property Law under the category of Highly Renowned Mark, according to article 125 (Law 9279/96). Furthermore, the Complainant is the owner of several BRADESCO trademarks in another thirty seven countries, including the USA, the United Kingdom, China and the Russian Federation.
Also, the Complainant is the owner of several domain names including the term bradesco, e.g.: <bradesco.com.br> and <bradesco.com>.
The disputed domain name was registered on November 28, 2014 and according to the Complainant’s evidence is passively held.
5. Parties’ Contentions
The Complainant states that the disputed domain name <bradesco-now.com> is confusingly similar to the BRADESCO trademark, as well as to the domain names previously registered by the Complainant.
The Complainant argues that the disputed domain name <bradesco-now.com> is composed by the Complainant’s trademark BRADESCO and the term “now”, which may wrongly lead customers to believe that the disputed domain name is the Complainant’s real and current domain name.
The Complainant asserts that it is the owner of the BRADESCO trademark in 38 countries, through which its banking services for people and business companies are identified.
The Complainant argues that there is no trademark registered by the Respondent that consists of or contains the term “bradesco” or that it has any rights in an unregistered mark.
The Complainant also affirms that it has not entered into any agreement, authorization or license with the Respondent with respect to the use of the trademark BRADESCO.
The Complainant states that “bradesco” is not a generic or descriptive term and is not a dictionary word either in Portuguese, English, French or Italian. The term is a coined word created by the adjunction of the first letters of the Complainant’s previous commercial name, i.e.:Banco BRAsileiro de DESCOntos, and, as far as it is known, the Respondent’s activities are not related to the services commercialized under the BRADESCO trademark and the Respondent has never been known to be related or associated to said mark. Also, the term “bradesco” does not appear in the Respondent’s denomination or any other identification.
The Complainant states that the Respondent seems to have no rights or legitimate interests in the disputed domain name since there is no webpage related to it and no reference to the Respondent’s services and activities. The Complainant concludes that the only plausible explanation for the Respondent’s selection of the disputed domain name is to exploit in an unauthorized manner the reputation and goodwill of the Complainant.
The Complainant affirms that the bad faith of the Respondent can be deduced since <bradesco-now.com> uses the trademark BRADESCO as the major component of the disputed domain name, in circumstances in which the Respondent has no rights or legitimate interests in the mark.
The Complainant states that bad faith can also be given by inaction or “passive holding”.
The Complainant affirms that the trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim having registered said trademark as a domain name had it not been in absolute bad faith.
The Complainant informs that previous UDRP panels had already determined many times that different Respondents transfer their domain names compounded by trademark BRADESCO to the Complainant and cites a number of cases with this outcome.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The burden of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BRADESCO trademark. The Panel finds that the mere addition of a hyphen and the term “now” is not enough to escape a finding of confusing similarity. In fact, such addition might even mislead consumers into the belief that the disputed domain name is the Complainant’s real and current domain name.
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the fact that the Respondent chose not to file a response to the Complaint, this Panel finds that there is nothing to suggest that the Respondent has or might have rights or legitimate interests in respect of the disputed domain name. In fact, previous decisions under the Policy have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
In view of the above, as the Panel cannot find any indication of any circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the disputed domain name, which reproduces Complainant’s famous trademark BRADESCO. It is highly unlikely that the Respondent did not acknowledge the Complainant’s rights in the trademark BRADESCO when the disputed domain name was registered.
The allegations of bad faith made by the Complainant were not contested as the Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that the trademark BRADESCO has been in use long before the disputed domain name was registered, including in domain names highly similar to the disputed domain name. For such reason the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name.
There are no facts set out in the available record which could conceivably justify the registration of the disputed domain name by the Respondent.
In light of this, the Panel concludes that considering the notoriety of the Complainant’s mark, the failure by the Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain name (according to the evidence in the Complaint the disputed domain name is passively held), the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <bradesco-now.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: February 6, 2015