WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Junior Wilken, Bradesco Insurance Solution Agency, Inc.
Case No. D2015-1159
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 Junior Wilken, Bradesco Insurance Solution Agency, Inc. of Coconut Creek, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bradescoins.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2015, 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 proceeding commenced on July 15, 2015.
In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. On July 21, 2015, an email communication was received from the Respondent. The Respondent appeared to be willing to settle the dispute. On July 22, 2015, the Center invited the Complainant to confirm if it would like to suspend the proceeding for the purposes of discussing settlement. Upon the request of the Complainant, the proceeding was suspended on August 3, 2015. On August 28, 2015, the proceeding was suspended further to September 28, 2015. Upon the request of the Complainant, the proceeding was reinstituted on September 24, 2015 with the Response due date as September 25, 2015.
On September 28, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on October 2, 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 is a Brazilian bank constituted under the denomination Banco Brasileiro de Descontos, established in 1943 in the city of Osasco, Brazil. The bank runs more than 25 million bank accounts and more than 45 million savings accounts, it has more than 8,400 service points in Brazil, 4,600 branches, over 3,700 service posts, more than 1,400 Automated Teller Machines (ATMs), more than 43,000 “Bradesco Expresso” (in English, “Bradesco Express”) ATMs, and branches and affiliates all over Brazil and also in New York – United States of America (“USA”), Buenos Aires – Argentina, Grand Cayman – Cayman Islands, Overseas Territory of Great Britain and Northern Ireland, Luxembourg – Luxembourg and Tokyo – Japan as shown in Annex E to the Complaint.
The Complainant’s trademark BRADESCO was filed in Brazil on June 13, 1979, and then registered in the year 1980 under No. 007.170.424. It has been successively renewed and is currently valid to identify bank services in class 36 as seen in Annex F to the Complaint. The Complainant owns 333 trademark registrations incorporating the expression BRADESCO, all of which are currently valid as seen in Annex F-1 to the Complaint and also owns several domain names as <bradescoseguros.com.br>, <bradesco.com.br>, and <bradesco.com>.
The Complainant also provides insurance services and the company Bradesco Seguros S.A. is part of the group. The word “seguros” means “insurance”.
The Respondent registered the disputed domain name <bradescoins.com> on September 23, 2014, providing contact email address which includes the Complainant’s trademark BRADESCO.
5. Parties’ Contentions
The Complainant is the owner of the BRADESCO trademark in Brazil and many countries of the world, with 333 registrations including the word BRADESCO.
The Complainant operates in the banking industry and also in the insurance services through the Company Bradesco Seguros S.A., which is part of the group.
The Complainant contends that the disputed domain name is confusingly similar to its trademark BRADESCO.
The Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions and as the procedural history shows, the parties were not able to reach an agreement during suspension.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of the BRADESCO trademark in Brazil and in many countries of the world including the USA where the Respondent has declared his address in the disputed domain name registration data.
The Complainant has registered the trademark in the year 1980 and it has been renewed for more than 30 years. Brazil has established BRADESCO is a notorious trademark and has granted extended protection in view of this recognition. The Complainant owns 333 trademark registrations including the BRADESCO word and several domain names such as <bradescoseguros.com.br>, <bradesco.com.br>, and <bradesco.com> as shown in Annexes G and G-1 to the Complaint.
BRADESCO, registered as trademark by the Complainant, is not a generic term, nor dictionary word either in the Portuguese, English, French or Italian languages. It is a coined term created by the Complainant with the first letters of the Complainant’s previous commercial name, Banco Brasileiro De Descontos.
The disputed domain name <bradescoins.com> contains the BRADESCO notorious trademark of the Complainant plus the term “ins”, which can be seen in several ways. The “ins” addition may be a short reference to the word insurance as one of the businesses of the Complainant, a part of the plural expression “coins” to reflect the main of business of the Complainant in the banking industry or simply as a suffix added to the notorious BRADESCO trademark. Nevertheless, the term “ins” is not enough to sufficiently distinguish the disputed domain name from the BRADESCO trademark, so the disputed domain name is confusingly similar to the BRADESCO trademark.
In summary, in view of all of these facts and arguments the Panel finds that the disputed domain name is confusingly similar to the mark owned by the Complainant. Accordingly, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has established ownership of the notorious BRADESCO trademark.
The Complainant has not granted any license or authorization to the Respondent to use the BRADESCO trademark, and in view of the fame of BRADESCO trademark, it is not possible for the Respondent not to be aware of the existence of the BRADESCO trademark of the Complainant, fact that results more evident when we consider that the email address provided by the Respondent to the Registrar includes also BRADESCO trademark.
In the Panel’s view, the allegations made by the Complainant in the Complaint constitute prima facie evidence that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent did not file any response and did not seek to demonstrate any rights or legitimate interests in the disputed domain name.
In view of the above, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name, and that the Complainant has therefore satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided arguments and evidence to demonstrate that the disputed domain name has been registered and is being used in bad faith. It must been added to that, the fact that the Respondent has provided an email address (bradescoinsurance@[...]) that includes the BRADESCO trademark of the Complainant is a clear indication that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name. The bad faith can be concluded because of the use of the notorious BRADESCO trademark in the disputed domain name even if there is no web page related to the disputed domain name. As it has been decided in several cases and expressed in the Complaint, it is well established that evidence of bad faith use is not limited to the circumstances enumerated in the Policy, but also is found in certain situations: “being used in bad faith” can also be found by inaction or “passive holding” of a domain name including a well-known mark and no Response filed by a respondent as in the case of the disputed domain name.
Given the fame of the BRADESCO trademark and the other facts explained, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that the Complainant satisfied 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 <bradescoins.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Date: October 15, 2015