WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bradesco S/A v. Veronica Irazoqui (Dattatec – Dominios)
Case No. DCO2015-0013
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 Veronica Irazoqui (Dattatec – Dominios) of Santa Fe, Argentina.
2. The Domain Name and Registrar
The disputed domain name <bradesco-online.com.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2015. On April 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 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 proceedings commenced on April 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2015. On April 27, May 4, 5 and 7, 2015, the Center received email communications from an entity named "DonWeb" regarding this proceeding. The Respondent did not submit any Response. The Center notified the parties of the commencement of the panel appointment process on May 15, 2015.
The Center appointed Dr. Luca Barbero as the sole panelist in this matter on June 1, 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 constituted, under the name "Banco Brasileiro De Descontos", in 1943.
The Complainant is one of the leaders in the Brazilian private banking services, running more than eight-thousand four-hundred service points, four-thousand six hundred branches, three-thousand seven-hundred service posts, one thousand four-hundred automated teller machines (ATMs), forty-three thousand "Bradesco Expresso" (in English, "Bradesco Express") ATMs, thirty four thousand eight-hundred "Bradesco Dia & Noite" (in English, "Bradesco Day & Night") ATMs, and more than twelve-thousand nine-hundred shared ATMs known as "Banco24horas" (in English, "Bank24hours"). The Complainant has branches and affiliates all over Brazil and also in New York, Buenos Aires, Grand Cayman, Luxembourg and Tokyo.
The Complainant is the owner of the Brazilian trademark No. 007170424 for BRADESCO, which was filed in Brazil on June 13, 1979 and registered on June 10, 1980, for "bank services" in class 36.
The Complainant is also the owner of numerous additional trademark registrations constituted of, or including, BRADESCO in Brazil as well as in other countries, including in Argentina, where the word trademark BRADESCO was registered under the number 2351776 on July 4, 1988, in class 36.
In addition, the trademark BRADESCO was declared notorious by the Brazilian National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial) according to the applicable Brazilian law (No. 5772 of December 21, 1971, supervened by the law No. 9279 of May 14, 1996).
The Complainant is also the owner of the domain names <bradesco.com.br>, registered on May 22, 1995, and <bradesco.com>, registered on July 17, 1996.
The disputed domain name <bradesco-online.com.co> was registered on December 7, 2014 and is not pointed to an active web site.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar with the trademark BRADESCO, as it comprises the trademark in its entirety with the mere addition of the word "online".
As to the Respondent's rights or legitimate interests in the disputed domain name, the Complainant states that the there is no trademark registered in the name of the Respondent that consists of, or contains, BRADESCO, and that the Respondent has no rights in such a mark on an unregistered basis. The Complainant also informs the Panel that it has not entered in any agreement, authorization or license with the Respondent with respect to the use of the trademark BRADESCO.
The Complainant highlights that BRADESCO is not a descriptive or generic term, but a coined word created by the joining of the first letters of the Complainant's previous commercial name "Banco Brasileiro de Descontos."
The Complainant further asserts that the Respondent's activities do not relate to the products commercialized under the trademark BRADESCO and the Respondent has never been
known to be related or associated to said mark.
With reference to the circumstances evidencing the Respondent's bad faith, the Complainant alleges that the only plausible explanation for the Respondent's selection of the disputed domain name was to exploit without authorization the reputation and goodwill of the Complainant, its names and trademark.
The Complainant further points out that the Respondent's bad faith can be inferred by the fact that the Respondent has used the notorious 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.
As regards the bad faith in the use of the disputed domain name <bradesco-online.com.co>, the Complainant underlines that different panels reiterated that also passive holding can amount to bad faith use. The Complainant also states that the trademark BRADESCO is so widely used and known by the public that it would be almost impossible for anyone to claim having registered said mark as a domain name, had it not been in absolute bad faith.
The Complainant finally highlights that several prior UDRP panels decided the transfer of other domain names comprising the trademark BRADESCO to the Complainant.
The Respondent did not reply to the Complainant's contentions. It is unclear what relationship, if any, DonWeb (the sender of the emails described in the Procedural History) has to either Party. In any event, these emails did not substantively address the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations for BRADESCO in Brazil and in other countries of the world, including in Argentina, where the Respondent is based.
The disputed domain name <bradesco-online.com.co> entirely reproduces the Complainant's registered trademark BRADESCO with the addition of a dash, the generic term "online" and the country code Top-Level Domain (ccTLD) ".com.co".
According to previous UDRP decisions, the "addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP" (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). Furthermore, for the purposes of determining identity or confusing similarity in UDRP proceedings, the ccTLD is typically not considered.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark BRADESCO according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.1).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate noncommercial or fair use.
In light of the above, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the registration and use of the Complainant's trademark BRADESCO since several years before the registration of the disputed domain name, including in Argentina, where the Respondent is based, and in light of the well-known character of the Complainant's trademark, highlighted also in prior decisions rendered under the Policy, the Panel finds that the Respondent must have known or ought to have known the Complainant's trademark when it registered the disputed domain name, which incorporates the trademark BRADESCO in its entirety.
With reference to the use of the disputed domain name, which is not pointed to an active web site, the Panel notes that, as mentioned in prior UDRP cases, passive holding of a domain name does not prevent the finding of bad faith use. See, amongst others, the leading case Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.
In the present case, as mentioned above, the Respondent has failed to submit a Response. In addition, in light of the well-known character of the Complainant's mark, the Panel finds that any active use of the disputed domain name, that incorporates the trademark BRADESCO with the addition of a generic "-online" suffix which could also be referable to the Complainant's trademark and services, would be apt to generate a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the corresponding web site.
In light of the above, the Panel concludes that the disputed 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 disputed domain name <bradesco-online.com.co> be transferred to the Complainant.
Date: June 15, 2015