Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA
Claim Number: FA1510001644257
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Carlton Fields Jorden Burt, P.A., Connecticut, USA. Respondent is Kendall Almerico / Kendall A Almerico PA (“Respondent”), represented by Cecil Key of DiMuroGinsberg P.C. DGKeyIP Law Group, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2015; the Forum received payment on October 27, 2015.
On October 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankrollco.com, postmaster@bankrollfunds.com, postmaster@bankrollbusiness.com, postmaster@bankrollstartups.com, postmaster@bankroll.ventures. Also on October 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 18, 2015.
On November 23, 2015, Complainant submitted an Additional Submission, which was in compliance with Supplemental Rule 7.
On November 30, 2015, Respondent submitted an Additional Submission, which was in compliance with Supplemental Rule 7.
On November 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names<bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the THE BANK ROLL trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,478,978, registered Feb. 4, 2014). The mark is used in connection with an online blog that provides users with information related to finance, economics, business, market analyses that inform readers about investment opportunities and market outlooks. The <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> domain names are confusingly similar to the THE BANK ROLL trademark.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the domain names are used to display competing hyperlinks or are not being used at all.
Respondent has engaged in bad faith registration and use. Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Also, Respondent had actual knowledge of Complainant’s trademark rights at the time of registration.
B. Respondent
Respondent does not dispute Complainant’s asserted trademark rights. Respondent does contend that the disputed domain names are not confusingly similar because the domain names have removed the article “THE” from Complainant’s trademark and because the marks are for non-competing services.
Respondent has rights or legitimate interests under Policy ¶ 4(c)(i) because it uses the domain names in connection with a business that offers financial services.
Respondent has not engaged in bad faith because it has rights or legitimate interests under Policy ¶ 4(a)(ii).
C. Additional Submissions
a. Complainant’s Additional Submission
The USPTO issued U.S. service mark Registration No. 4,478,978 for THE BANK ROLL to Complainant, Webster Financial Corporation, on February 4, 2014. A copy of the USPTO Certificate of Registration for this service mark is attached as Exhibit 1 to the Complaint. Under U.S. trademark law, this Certificate of Registration serves as “prima facie” evidence of the validity of THE BANK ROLL mark, that Complainant owns THE BANK ROLL mark, and that Complainant has the exclusive right to use the BANK ROLL mark in commerce to describe the services identified in the Certificate of Registration. See 15 U.S.C. § 1057(b). Thus, THE BANK ROLL is a valid, registered service mark in which Complainants have legal rights pursuant to UDRP Rule 3(b)(ix)(1) and UDRP Policy ¶ 4(a)(i).
Complainant asserts that the omission of the word “the” and the elimination of the space between the words “bank” and “roll” are insufficient to distinguish the Domain Names from THE BANK ROLL. See the Complaint at pp. 6-7 along with supporting cases attached as Exhibit 13 to the Complaint. The Domain Names are virtually identical to THE BANK ROLL mark.
The USPTO (including the Trademark Trial and Appeal Board of the USPTO) decides only the issue of U.S. trademark registration, not whether Respondent’s registration and use of the Domain Names violate THE BANK ROLL mark under the UDRP.
In addition, Respondent’s conclusion that equity crowdfunding and new Regulation A+ financing services are a marked departure from the traditional banking and securities services is incorrect. Businesses (start-ups and otherwise) seeking financing may wish to obtain financing from a bank and/or from another lender, such as through crowdfunding or equity crowdfunding
Under UDRP Policy, ¶ 4c), Respondent is unable to demonstrate legitimate rights or interests in the domain names because, inter alia, prior to receiving notice from the Complainants, the domain names were not used in connection with the bona fide offering of services (see discussions above in this paragraph 10), and Respondent was not commonly known by any of the domain names.
The domain names have been used, and continue to be used, to interfere with and violate Complainants’ legitimate rights in THE BANK ROLL mark, including as evidenced by the cybersquatting links displayed at the websites associated with the domain names. Internet users may reasonably but mistakenly believe they can obtain Complainants’ services through Respondent’s websites.
Respondent as the owner of the domain names is responsible for the content at Respondent’s websites, even if Respondent did not post the content that appears on the websites and did not profit directly from the content.
Complainants have been using THE BANK ROLL mark since at least as early as December 5, 2011, and the U.S. registration for THE BANK ROLL was issued on February 4, 2014. Complainants use the encircled R symbol with THE BANK ROLL mark, which provides notice that the mark is registered with the USPTO. The registration for THE BANK ROLL was therefore issued well before Respondent’s purchase of the domain names and filing the application to register BANKROLL with the USPTO.
Respondent is a licensed attorney for over 25 years (see Exhibit I for website bios of Kendall Almerico). As such, Respondent would have conducted a search of the USPTO register in advance of purchasing the domain names and filing the application to register BANKROLL with the USPTO. Because Respondent reasonably should been aware of Complainants’ registered mark, both actually and constructively, Respondent has registered, used, and continues to use the domain names in bad faith pursuant to UDRP Policy ¶ 4(a)(iii).
Complainant lastly asserts that even if the panel should determine that Respondent had only constructive knowledge, “panels have inferred actual knowledge based on the totality of the circumstances in order to find bad faith.”
b. Respondent’s Additional Submission
The mark being asserted by Complainant, THE BANK ROLL, is registered in a single class for “a blog featuring information, news and commentary concerning financial goals and managing finances; providing an online journal featuring information, news and commentary concerning financial goals and managing finances.” Complaint Exhibit 1. There is no indication that Complainant has ever used the mark in any manner other than as described in its registration.
Complainant’s THE BANK ROLL blog appears on an interior page of its website. The blog is accessed via Complainant’s home page, located at www.websteronline.com, “personal” banking page, or “business” banking page. The mark does not appear on any of these pages; a user clicks a link identified either by a headline or the word “blog,” which takes the user to THE BANK ROLL blog, located at https://public.websteronline.com/blog.
Complainant’s website also includes “commercial & institutional” and “private bank” pages, but the blog is not accessible from these pages. See, generally, www.websteronline.com. There is no indication that Complainant uses THE BANK ROLL separate and independent from its WEBSTERBANK mark and associated logo.
Respondent is the Chief Executive Officer of Bankroll Ventures LLC, a Delaware limited liability company. Exhibit 2, ¶ 2. Bankroll Ventures offers its services by and through the website located at www.bankroll.ventures, one of the domain names in dispute. The Bankroll Ventures website is a funding platform for equity
crowdfunding and JOBS Act related securities transactions. Bankroll Ventures specializes in equity crowdfunding, and the related recently-adopted Regulation A+ security rules, and Respondent is recognized as a leading authority in these areas. Exhibit 2, ¶ 5. Bankroll Ventures does not compete with Complainant. Bankroll Ventures does not offer traditional banking services, such as those offered by Complainant. Bankroll Ventures also does not offer brokerage services such as those offered by Complainant.
The domain names <bankrollfunds.com>, <bankrollbusiness.com>, and <bankrollstartups.com>, while owned by Respondent, are maintained by GoDaddy.com. Any ads or links are placed on the landing pages for those domains by GoDaddy. Neither Registrant nor his company control the placement of ads or links on the landing pages, and neither receives any payments for placement of the ads. Exhibit 2, ¶ 10. j. Exhibit 2, ¶¶ 6-7.
Complainant and Respondent are not competitors. The respective services offered by Complainant and Respondent’s company are distinct as the express language of their respective websites makes clear. Unlike Complainant, neither Respondent nor Respondent’s company offer traditional banking services or brokerage services. Unlike Respondent’s company, Complainant does not offer equity crowdfunding or Regulation A+ funding services. As a result, there is no overlap in the respective services.
Bankroll Ventures filed Application No. 86/626,760 to register BANKROLL with the United States Patent and Trademark Office (USPTO) (the BANKROLL application) in connection with “financial services, namely, providing on-line business fundraising services to companies,” in Class 36, and “computer services, namely, creating an online platform for fundraising for businesses; hosting an on-line community web site featuring people raising money for businesses; providing a web site featuring technology that enables users to raise money for businesses; providing temporary use of non-downloadable software applications for fundraising,” in Class 42. Exhibit 2, ¶ 4; Exhibit 6. The descriptions of the BANKROLL Application are consistent with the equity crowdfunding and Regulation A+ services described above. Exhibit 2, ¶ 5.
Respondent finally alleges that the BANKROLL Application was filed on May 12, 2015, Exhibit 7, a little over a month before Registrant received the first communication from Complainant in which Registrant learned for the first time of Complainant’s claim in THE BANKROLL mark. The USPTO examiner reviewing the BANKROLL Application has concluded that the mark as used by Respondent’s company does not conflict or present a likelihood of confusion with any pending or registered marks, including Complainant’s THE BANK ROLL registration. Exhibit 2, ¶ 9; Exhibit 6.
Panel rules that Complainant has not proved that the disputed domain names of
<bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> have been registered and
used in bad faith.
As paragraph 4(a) of the Policy requires that Complainant must prove each of the three elements listed below under Discussion, to obtain an order that a domain name should be cancelled or transferred, therefore, the Panel declines to rule on whether or not the disputed domain names of <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and on whether or not Respondent has rights or legitimate interests in respect of the disputed domain names of <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures.>
Panel further rules that Complainant has not engaged in reverse domain name hi-jacking.
Complainants purchased the domain names <thebankroll.net>, <thebankroll.info>, <thebankroll.biz>, <thebankroll.us>, <thebankroll.finance>, <bankroll.biz> and <bankroll.info> after Respondent’s web site launched at www.bankroll.ventures, and Complainants have not linked any of these domain names to an active website.
Following Respondent’s failure to reply to correspondence from Complainants’ counsel dated August 3, 2015, and on advice of Complainants’ counsel, Complainants purchased several “BANKROLL” domain names to help avoid potential new violations of Complainants’ rights in THE BANK ROLL mark by Respondent and others. Copies of the correspondence between Complainants’ counsel and Respondent are attached as Exhibit 12 to the Complaint.
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
As stated under Findings, Panel declines to rule on whether or not the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Rights or Legitimate Interests
As stated under Findings, Panel declines to rule on whether or not Respondent has rights or legitimate interests in respect of the disputed domain names.
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Here, Complainant has offered no credible evidence to prove that Respondent registered the disputed domain names in bad faith. Complainant states in its Additional Submission that Respondent is a licensed attorney for over 25 years (see Exhibit I for website bios of Kendall Almerico) and as such, “would have conducted a search of the USPTO register in advance of purchasing the Domain Names and filing the application to register BANKROLL with the USPTO.” Then, Complainant merely asserts that “because Respondent reasonably should been aware of Complainants’ registered mark, both actually and constructively, Respondent has registered, used, and continues to use the Domain Names in bad faith pursuant to UDRP Policy ¶ 4(a)(iii).” Panel finds this general allegation of bad faith, without supporting facts, to be without merit.
Complainant has not credibly established any of the factors under Policy ¶ 4(b) that establish bad faith, and the facts and circumstances demonstrate that no such bad faith registration can be established.
Complainant has offered no credible evidence that Respondent was aware of Complainant’s alleged mark until well after he registered his domain names, nor that Respondent has sought to register his domain names to prevent Complainant from using its mark as part of a domain name. There has been no allegation that Respondent has offered to sell his domain names to Complainant or anyone else.
The parties are not competitors. Unlike Complainant, Respondent’s company does not offer traditional banking services or brokerage services. Unlike Respondent’s company, Complainant does not offer equity crowdfunding or Regulation A+ funding services.
In its Complaint, Complainant claims that three of the domains in dispute, <bankrollfunds.com>, <bankrollbusiness.com>, and <bankrollstartups.com>,
are competing directly with their bank because of ads on those pages at the time of the Complaint. However, as Respondent credibly asserted in its Additional Submission, these are parked pages, and the ads being served were not served by Respondent. The ads were placed by GoDaddy, the company from whom the domains were purchased and which hosts the domains. Respondent stated in its Additional Submission that it has since redirected each of those domains to its primary website, so that no further ads will be served by GoDaddy. Thus, there is no credible evidence that Respondent has sought to disrupt Complainant’s business.
Finally, Complainant has offered no credible evidence that Respondent has intentionally attempted to attract online users for commercial gain by creating a likelihood of confusion as to Complainant’s mark. Nor has Complainant offered any direct proof of actual confusion.
And, although not dispositive as to the issue of confusion, the United States Patent and Trademark Office has not cited any confusingly similar marks, including Complainant’s registered trademark, of THE BANK ROLL, as a bar to the registration of Respondent’s mark BANKROLL for a different service.
The Panel thus concludes that Respondent has not registered or used the <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> domain names in bad faith, as the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bankrollco.com>, <bankrollfunds.com>, <bankrollbusiness.com>, <bankrollstartups.com>, and <bankroll.ventures> domain names REMAIN WITH Respondent.
Carol Stoner, Esq., Panelist
Dated: December 7, 2015
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