Panel found that change in WhoIs details that occurred after Complainant’s trademark rights arose did not constitute a new registration. Accordingly, there was no bad faith registration, since the domain name was originally registered more than a decade before Complainant’s trademark rights arose.
Respondent first registered the domain name <bankwell.com> in 2003. Complainant, after a merger of three banks, acquired rights in the BANKWELL mark in 2013, as evidenced by a U.S. registration for that mark dated October 15, 2013. In April 2015, Respondent made changes to the WhoIs infromation to reflect a privacy protection service, and changed the information back in September 2015.
Complainant argued that this 2015 change to the WhoIs data constituted a new registration of the domain name, to which the Panel could look to find that the domain name was registered in bad faith. The Panel refused to make this finding. Accordingly, the domain name was treated as first registered in 2003. Since the first registration of the domain name preceded Complainant’s rights by a decade, it was impossible to find that the domain name could have been registered with a bad faith intent in relation to Complainant’s trademark rights.
Bankwell Financial Group, Inc. v. Whois Privacy Protection Service, Inc. / Domain Manager, Affordable Webhosting, Inc., Advertising, WIPO Case No. D2015-1664
About the Author: Evan Brown is a 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.