WIPO Arbitration and Mediation Ceter
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Perfect Privacy, LLC / Bruno Costa
Case No. D2014-2214
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 Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“USA”) / Bruno Costa of Carolina, Maranhão, Brazil.
2. The Domain Name and Registrar
The disputed domain name <bradescoatualizacaocadastral.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 January 5, 2015 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 January 5, 2014.
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”).
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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2015.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on January 29, 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. Also, 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, Luxembourg, Japan and the 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 protect 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 other thirty-seven countries, including the USA, the United Kingdom of Great Britain and Northern Ireland, 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 27, 2014. According to evidence in the Complaint it resolves to a pay-per-click (“PPC”) parking site.
5. Parties’ Contentions
The Complainant states that the disputed domain name <bradescoatualizacaocadastral.com> is confusingly similar to the BRADESCO trademark, as well as to the domain names previously registered by the Complainant.
Complainant argues that the <bradescoatualizacaocadastral.com> domain name is composed by the Complainant’s trademark BRADESCO and the expression “atualizacaocadastral” (“records update” in English), which may wrongly lead customers to believe that this domain 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 that 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 legitimate interest 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 <bradescoatualizacaocadastral.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 interest in the mark.
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 have already determined many times that different respondents transfer their domain names compounded by trademark BRADESCO to the Complainant: Banco Bradesco S/A v. Belcanto Investment Group Limited, WIPO Case No. D2013-1048 (<bradesconetenpresa.com>); Banco Bradesco S/A v. CPSTA LTDA, WIPO Case No. D2013-1280 (<suporte-clientebradesco.com>); Banco Bradesco S/A v. Antonio Altiere, WIPO Case No. D2013-1278 (<sacbradescoonline.com>); Banco Bradesco S/A v. Javenaldo, WIPO Case No. D2013-1056 (<notifica-bradesco.com>); Banco Bradesco S/A v. Pedro Souza, WIPO Case No. D2013-1062 (<atualizacao-obrigatoriabradesco.com>); Banco Bradesco S/A v. Erick Reis, WIPO Case No. D2013-1065 (<wvvwbradesco.com>); Banco Bradesco S/A v. Jonas Silva, WIPO Case No. D2013-1052 (<bradescoseguranca.info>); Banco Bradesco S/A v. Larisa Sardinha, WIPO Case No. D2013-1051 (<bradescoatual.com>); Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059 (<ativacoestabelabradesco.com>); Banco Bradesco S/A v. Belcanto Investment Group, WIPO Case No. D2013-1279 (<bradescofinaciamento.com>).
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 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 domain name; and
(iii) the 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 the expression “atualizacaocadastral” 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 and that the products/services offered under that name originate from the same source as the Complainant’s.
The Panel, therefore, finds that the Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that there is no trademark registered in the name of the Respondent containing the term “bradesco” or that it has any right on an unregistered basis in such a mark .
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 and has not used 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 the 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 reasons the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name.
There is no reference to the Respondent’s activities or services and 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 resolves to a PPC site). The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. See paragraph 4(b)(iv) of the Policy.
Therefore, for the various reasons discussed above, the Panel finds that the Complainant has established the third element of the 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, <bradescoatualizacaocadastral.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: February 6, 2015