WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Domain Admin
Case No. D2016-1163
1. The Parties
The Complainant is Banco Bradesco S/A of Sao Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
The Respondent is Domain Admin of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bradescoimoveis.com> (the “Domain Name”) is registered with DropCatch.com 878 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2016.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on August 4, 2016. 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 Banco Bradesco S/A was established in 1943 in Brazil and has been engaged in private banking services with branches and affiliates all over Brazil and other countries. The Complainant is the owner of numerous BRADESCO trademarks worldwide, inter alia, Registration No. 007170424 which was registered on June 10, 1980 in Brazil and designated for bank services in class 36. The Complainant is also the owner of the domain names <bradesco.com.br>, <bradesco.com> and <bradescoimoveis.com.br> amongst other domain names incorporating the BRADESCO trademarks.
The Domain Name was registered on December 23, 2015 and is used as a parking website with ad listings when the Panel rendered this decision. An offer of sale is also posted on the website of the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trademark BRADESCO owned by the Complainant. The Domain Name is composed of the Complainant’s trademark BRADESCO and the term “imoveis” which means “properties” in English. The Complainant offers bank services under the trademark BRADESCO in Brazil and other countries. The consumers will identify the Domain Name with the Complainant’s trademark BRADESCO believing the products/services offered under the Domain Name originate from the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not own any trademark that consists of BRADESCO, nor has he been authorized or licensed by the Complainant to use BRADESCO. “Bradesco” is a coined word created by the Complainant. The Domain Name is used to resolve to a webpage displaying a reproduction of the homepage of the e-commerce “www.edupang.com”, and the following message at the top: “Contact us if you are interested in above domain.” The Respondent’s activities do not relate to the products commercialized under the BRADESCO trademark and the Respondent has never been known to be related or associated to the said mark. The element “Bradesco” does not appear in the Respondent’s denomination or any other identification.
The Complainant finally contends that the Domain Name was registered and used in bad faith. The Respondent has no rights or legitimate interests in the Domain Name but selected to use the Complainant’s mark BRADESCO to register the Domain Name, it can be deduced that the Respondent registered the Domain Name in order to exploit the reputation and goodwill of the Complainant and its names and marks. The trademark BRADESCO is so widely used and known by the public that it would be almost impossible for someone to claim having registered the said mark as a domain name, had it not been in absolute bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has successfully established its rights to the BRADESCO trademarks, including Trademark Registration No. 007170424 which was registered on June 10, 1980 in Brazil and designated for bank services in class 36.
The Domain Name <bradescoimoveis.com> incorporates in its entirety the Complainant’s trademark BRADESCO along with the term “imoveis” apart from the generic Top-Level Domain suffix “.com”. The term “imoveis” means “properties” in English. The Panel finds that affix of the generic term “imoveis” to the Complainant’s trademark BRADESCO does not suffice to avoid the confusing similarity between the Domain Name and the Complainant’s trademark.
The word “bradesco" is a coined word without dictionary meaning. The Panel believes that registration of the word as a trademark evidences the distinctiveness of the BRADESCO trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000‑0047. Previous UDRP panels have found that incorporation of the complainant’s distinctive trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.
As such, the Panel holds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name, and the burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions.
However, the Respondent did not make any response in order to demonstrate its rights or legitimate interests to the Domain Name for the purpose of paragraph 4(c) of the Policy or otherwise. Failure of the Respondent to rebut the Complainant’s prima facie case enables the Panel to infer that the Respondent has no rights or legitimate interests in the Domain Name.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
A number of previous UDRP decisions with regard to domain names incorporating the trademark BRADESCO have confirmed that the Complainant’s trademark BRADESCO is well-known. See Banco Bradesco S/A v. Jonas Silva, WIPO Case No. D2013-1052 and Banco Bradesco S/A v. CPSTA LTDA, WIPO Case No. D2013-1280. The Panel is inclined to align with previous decisions upon reviewing the Complaint documents.
As the Complainant’s trademark BRADESCO is well-known, and the Domain Name was registered in 2015, nearly 35 years later than the first registration of the Complainant’s trademark BRADESCO in 1980, it is reasonable to infer that the Respondent knew or should have known the Complainant and its trademark prior to registering the Domain Name. Bad faith can be found in registration of the Complainant’s well-known trademark as the Domain Name if the Respondent has no rights or legitimate interests in the Domain Name. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The Panel notes that the Domain Name resolved to a website in the Korean language which provided early learning education and related material when the Complaint was filed. While the products or services provided by the Respondent was not of the same type to those of the Complainant, the Panel believes the use of the Domain Name would lead to “initial interest confusion” where Internet users seeing the Domain Name without awareness of its contents may think that the Domain Name is somehow connected to the Complainant. See CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988. The objective of the Respondent to attract the Internet users to visit the website of the Domain Name for financial advantage is apparent. This can be affirmed by the offer for sale of the Domain Name on the website. For this purpose, the Panel holds that the use of the Domain Name falls within the condition set out in paragraph 4(b)(iv) of the Policy.
Separately, the Panel further notes that the Domain Name is currently used as a parking website with links to advertisements, which is another indication of the Respondent’s bad faith registration and use of the Domain Name.
For the reasons above, the Panel finds that for the purpose of paragraph 4(b) of the Policy, the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bradescoimoveis.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: August 16, 2016