The Vanguard Group, Inc. v. Vanguards Vanguards / Vanguard Global Holdings Corp
Claim Number: FA1910001865172
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Vanguards Vanguards / Vanguard Global Holdings Corp (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguardscapital.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2019; the Forum received payment on October 2, 2019.
On October 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vanguardscapital.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2019 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@vanguardscapital.com. Also on October 8, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is an investment advisor with nearly $5.2 trillion in assets under management. Complainant has rights in the VANGUARD mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,784,435, registered Jul. 27, 1993).
2. Respondent’s <vanguardscapital.com>[i] domain name is confusingly similar to Complainant’s VANGUARD mark as it incorporates the mark in its entirety, along with the additional letter “s,” the descriptive term “capital” and a “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <vanguardscapital.com> domain name. Respondent is not authorized to use Complainant’s VANGUARD mark and is not commonly known by the domain name.
4. Additionally, Respondent fails to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website that offers branded investment and financial services under the VANGUARD mark.
5. Furthermore, Respondent uses the domain name in furtherance of a phishing scheme.
6. Respondent registered and uses the <vanguardscapital.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s website.
7. Furthermore, Respondent registered the domain name with a privacy service and failed to respond to Complainant’s cease and desist letters.
8. Finally, Respondent had actual knowledge of Complainant’s rights in the VANGUARD mark prior to registering the <vanguardscapital.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VANGUARD mark. Respondent’s domain name is confusingly similar to Complainant’s VANGUARD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vanguardscapital.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the VANGUARD mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,784,435, registered Jul. 27, 1993). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel holds that Complainant’s registration of the VANGUARD mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <vanguardscapital.com> domain name is confusingly similar to the VANGUARD mark, as the name incorporates the mark, merely adding the extra letter “s,” the descriptive term “capital” and a “.com” gTLD. Such changes are not sufficient to distinguish the domain name from the mark under a Policy ¶ 4(a)(i) analysis. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel holds that the <vanguardscapital.com> domain name is confusingly similar to the VANGUARD mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vanguardscapital.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <vanguardscapital.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the VANGUARD mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information in the record identifies the registrant of the <vanguardscapital.com> domain name as “Vanguards Vanguards / Vanguard Global Holdings Corp,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Although Respondent may be commonly known by the <vanguardscapital.com> domain name, Respondent failed to provide affirmative evidence to support the WHOIS information. See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel holds that under Policy ¶ 4(c)(ii) Respondent is not been commonly known by the <vanguardscapital.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <vanguardscapital.com> domain name is demonstrated by its failure to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain name resolves to a website that purports to offer investment and financial services under the VANGUARD mark. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant contends that the domain name resolves to a website in both English and Chinese, in which Respondent offers investment and financial services in connection with the VANGUARD mark. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel agrees. For this reason, the Panel holds that Respondent does not have rights or legitimate interests in the <vanguardscapital.com> domain name.
Complainant further contends that Respondent’s lack of rights in the <vanguardscapital.com> domain name is demonstrated by Respondent’s behavior of engaging in fraudulent activity. Use of a domain name incorporating the mark of another in connection with fraudulent or phishing activity is not indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”); see also United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) . . . .“). Complainant has provided persuasive evidence that Respondent has engaged in fraudulent activity. The Panel agrees with Complainant that Respondent lacks rights or legitimate interests in the <vanguardscapital.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent’s use of the <vanguardscapital.com> domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and uses the domain name in bad faith. Use of a domain name incorporating the mark of another to create a false impression of affiliation with that party in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant has provided evidence that the <vanguardscapital.com> domain name resolves to a website in both English and Chinese, in which Respondent offers investment and financial services in connection with the VANGUARD mark. The Panel holds that Respondent registered and uses the <vanguardscapital.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that Respondent’s bad faith is demonstrated by its behavior to engage in fraudulent activity. Use of a domain name incorporating the mark of another to engage in fraudulent or phishing activities is evidence of bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Complainant has provided evidence that Respondent has used the email address, romanos@fxmoneyworld.com, to register the <vanguardscapital.com> domain name in furtherance of fraud. This is another reason why Respondent registered and uses the <vanguardscapital.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's VANGUARD mark, it is inconceivable that Respondent was well aware of Complainant's rights in the mark. The Panel agrees that the record supports Complainant’s contention that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <vanguardscapital.com> domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardscapital.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 6, 2019
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