The Vanguard Group, Inc. v. plo kim
Claim Number: FA2105001945084
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Laura A. Alos of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is plo kim (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xianflh.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2021; the Forum received payment on May 14, 2021.
On May 17, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xianflh.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 May 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2021 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@xianflh.com. Also on May 19, 2021, 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 June 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Vanguard Group, Inc., is a global investment company.
Complainant has rights in the 先锋领航 mark based on registration of the mark with the PRC State Administration of Industry and Commerce in China.
Respondent’s <xianflh.com> domain name is confusingly similar to Complainant’s mark since it is comprised of the transliteration of the first character of Complainant’s mark (XIAN for 先) and the letters “FLH” which are an abbreviation of the Latin names of the last three characters of Complainant’s mark (FLH as an abbreviation of FENG LING HANG for 先锋领航), appended by the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <xianflh.com> domain name as it is not commonly known by the at-issue domain name and Complainant has not authorized Respondent to use its 先锋领航 mark or the transliteration of its 先锋领航 mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name pass off as Complainant and offers directly competing financial and investment services on a website addressed by the domain name.
Respondent registered and uses the <xianflh.com> domain name in bad faith. Respondent uses the domain name to intentionally attract internet users by passing itself off as Complainant, and offering competing investment and financial services for commercial gain which disrupts Complainant’s business. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the 先锋领航 mark based on Complainant’s long-term prior use of its 先锋领航 mark, Respondent’s registration of a domain name that contains the transliteration of Complainant’s 先锋领航 mark, and Respondent’s featuring Complainant’s 先锋领航 mark on the domain name’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the 先锋领航 trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in 先锋领航 trademark.
Respondent uses the at-issue domain name to offer services which directly compete with Complainant’s offering.
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 demonstrates rights in the 先锋领航 mark per Policy ¶ 4(a)(i) through its registration of such mark with the PRC State Administration of Industry and Commerce in China. See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i).”).
Respondent’s <xianflh.com> domain name contains a transliteration of the first character of Complainant’s 先锋领航 trademark, XIAN, followed by the letters FLH which are English initials for the transliterations of the mark’s last three last three characters, FENG LING HANG. Respondent’s domain name concludes with “.com” ‑a domain name-necessary top-level. The differences between Complainant’s trademark and the at-issue domain name does nothing to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <xianflh.com> domain name is confusingly similar to Complainant’s 先锋领航 trademark. See Dow Corning Corporation v. zhongshan daokangning youjigui co.ltd, FA 1309001519356 (Forum Nov. 4, 2013) (“It is well-established that ‘domain names comprising phonetic transliterations of Chinese language trademarks are confusingly similar to such trademarks under the Policy’.”); see also McDonald's Corporation v. Fundacion Private Whois, Case No. D2012-1435 (WIPO Sept. 20, 2012) (finding that a disputed domain name comprised of a Pinyin phonetic transliteration of Roman script confusingly similar to the complainant’s trademark); see additionally Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see additionally Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “plo kim” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the 先锋领航 domain name or its Latin transliteration, XIAN FENG LING HANG. The Panel therefore concludes that Respondent is not commonly known by the <xianflh.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Respondent uses <xianflh.com> to pass itself off as Complainant and offer directly competing financial and investment services to internet users. It does so via a website addressed by the at-issue domain name that displays Complainant’s 先锋领航 trademark along with competing advertisements. Respondent’s use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent uses the confusingly similar <xianflh.com> domain name to address a website offering services that are in competition with Complainant’s product offering. Using a confusingly similar domain name in such manner disrupts Complainant’s business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent’s use of the domain name thus demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Jerie v. Burian, FA 795430 (Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the 先锋领航 mark when it registered <xianflh.com> as a domain name. Respondent’s prior knowledge is evident, inter alia, from Complainant’s long term use of its 先锋领航 trademark, from Respondent’s incorporation of the transliteration of Complainant’s mark into the at-issue domain name, from Respondent’s use of its <xianflh.com> website in furtherance of promoting services that compete with those services offered by Complainant, and from Respondent’s display of Complainant’s trademark on said website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of the <xianflh.com> domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xianflh.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 15, 2021
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