Westmore · UDRP DecisionWebmailbradesco.com
The Panel ordered transfer of <webmailbradesco.com>. It found the domain confusingly similar to the Complainant's BRADESCO mark because the mark remained recognizable and dominant despite the addition of the descriptive term “webmail.” The Respondent lacked rights or legitimate interests because its parking page primarily displayed links related to the trademark value of BRADESCO, including banking and finance links, and it did not rebut the Complainant's prima facie case. The Panel also found bad-faith registration and use under paragraph 4(b)(iv), concluding that the Respondent knowingly targeted the distinctive, well-known mark to attract Internet users for commercial gain through confusion.
The timeline behind webmailbradesco.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind webmailbradesco.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates the treatment of a coined banking mark combined with a descriptive online-service term and used for industry-related PPC advertising. The decisive inquiry was not parking-page use in the abstract, but whether the links capitalized on the trademark value of BRADESCO. The Panel found that they did, defeating legitimate interests and supporting bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bradesco S/A v. Contact Privacy Inc. / ICS INC. Case No. D2014-0638 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 Contact Privacy Inc. of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar The disputed domain name <webmailbradesco.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 April 16, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 April 23, 2014, 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 April 25, 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 May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014. The Center appointed Adam Taylor as the sole panelist in this matter on June 6, 2014. 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 founded in 1943. It trades under the name “Banco Bradesco”. The Complainant holds more than 70 million bank accounts. It operates many branches in Brazil and also has overseas branches in New York, Buenos Aires, Grand Cayman, Luxembourg and Tokyo. The Complainant owns numerous trade marks for BRADESCO including Brazilian trade mark no. 007.170.424 registered June 10, 1980, in international class 36. The disputed domain name was registered on September 15, 2013. According to an undated screenshot supplied by the Complainant, the Respondent has used the disputed domain name for a parking page with sponsored links to relating to webmail / email services as well as to banking and finance-related services. The parking page also included a notice offering the disputed domain name for sale. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The disputed domain name consists of the Complainant’s trade mark and the term “webmail” referring to a website offering the Complainant’s services by email. It is confusingly similar to the Complainant’s trade mark. Consumers will immediately identify the disputed domain name with the Complainant’s famous trade mark. Rights or Legitimate Interests The Respondent does not own a trade mark for “Bradesco”. The Complainant has not authorised or licensed the Respondent to use its trade mark. The term “Bradesco” is not generic or descriptive. It is not a dictionary word in the Portuguese or English languages; rather, it is a coined term created by the joining of the first letters of the Complainant’s previous commercial name: “Banco Brasileiro de Descontos”. So far as the Complainant is aware, the Respondent is not known by the name reflected in the trade mark. Registered and Used in Bad Faith There is no reference on the website at the disputed domain name to the Respondent’s activities or services. The only plausible explanation is that the Respondent’s selected the disputed domain name to exploit the reputation and goodwill of the Complainant’s marks. Bad faith is also demonstrated by the offer of sale of the disputed domain name. The Complainant’s trade mark is so widely used and known by the public that it would be almost impossible for someone to claim to have registered the disputed domain name in good faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has rights in the mark BRADESCO by virtue of its registered trademarks as well as unregistered trade mark rights deriving from the extensive use of that name. Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0 , the addition of the descriptive term “webmail” is insufficient to avert a finding of confusing similarity. For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases: “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to banking and finance-related services, which relate to those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0 , which states: “Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services” … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.” In this case, a majority of the advertising links are clearly related to the trade mark value of the invented word “Bradesco”. Accordingly, such use does not correspond to a use in connection with a bona fide offering of goods and services. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind. In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to services relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 7. Decision 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 <webmailbradesco.com> be transferred to the Complainant. Adam Taylor Sole Panelist Date: June 12, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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