General allegations of bad faith not enough to prove third UDRP element

In the case of Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA, an NAF Panel denied the Complainant’s efforts to have several domain names, each comprised primarily of the term “bankroll” (e.g. <bankrollco.com>, <bankrollstartups.com>, and <bankroll.ventures>) transferred because the Complainant failed to meet its burden of proof of bad faith registration and use under UDRP paragraph 4(a)(iii).

The Complainant provides a blog about finance, economics, business, market analyses, investment opportunities and market outlooks, and claimed trademark rights in its registered mark THE BANK ROLL, which it began using in 2011. The Respondent provides a funding platform for equity crowdfunding and JOBS Act related securities transactions, primarily from a website at the <bankroll.ventures> domain name. It filed a U.S. trademark application to register the mark BANKROLL prior to being put on notice of the present domain name dispute, and the examiner at the USPTO did not find that the BANKROLL mark would likely cause confusion with THE BANK ROLL.

The Panel found that the Complainant offered no credible evidence to prove that the Respondent registered the disputed domain names in bad faith. It found that the Complainant’s general allegation of bad faith, namely, that the Respondent would have searched the USPTO records and thereby knew or should have known of the Complainant’s rights, was without merit.

Further, the Respondent failed to demonstrate bad faith through any of the factors found in paragraph 4(b) of the policy. There was no allegation that the Respondent had offered to sell the disputed domain names to the  Complainant or anyone else. The parties were not competitors. The fact that for a time the disputed domain names led to Godaddy-created parked pages, in light of the fact that the Respondent had since redirected the disputed domain names to its own pages, did not support an allegation that the Respondent had attempted to disrupt the Complainant’s business. Finally, the Complainant offered no credible evidence that the Respondent intentionally attempted to attract online users for commercial gain by creating a likelihood of confusion as to the Complainant’s mark.  Nor had Complainant offered any direct proof of actual confusion.

Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA Claim Number: FA1510001644257, (NAF, December 7, 2015)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.