The Vanguard Group, Inc. v. web develop
Claim Number: FA2112001976917
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Laura A. Alos of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is web develop (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <investor-vanguardgroup.com>, registered with NameCheap, Inc.
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 December 13, 2021; the Forum received payment on December 13, 2021.
On December 13, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <investor-vanguardgroup.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@investor-vanguardgroup.com. Also on December 20, 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 January 14, 2022, 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 provides a variety of investment and finance-related services, including mutual fund investments, investment brokerage, and investment management, among others.
Complainant asserts rights in the VANGUARD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <investor-vanguardgroup.com> domain name is identical or confusingly similar to Complainant’s VANGUARD mark, as it incorporates the mark in its entirety, only adding the generic terms “investor” and “group”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the at-issue domain name. Complainant has not authorized or licensed Respondent to use the VANGUARD mark, nor is Respondent commonly known by the at-issue domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain name addresses a website that offers competing services.
Respondent registered and uses the <investor-vanguardgroup.com> domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain by offering competing services and redirecting users to Respondent’s website. Finally, Respondent had actual notice of Complainant’s rights in the mark, evidenced by the fame and notoriety of Complainant’s mark, as well as Respondent’s use of Complainant’s mark and logo in the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the VANGUARD 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 VANGUARD 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 VANGUARD mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <investor-vanguardgroup.com> domain name contains Complainant’s VANGUARD trademark prefixed by the suggestive term “investor” and a hyphen, and followed by the term “group”. The domain name concludes with the top-level domain name “.com”. The differences between Complainant’s trademark and the at-issue domain name do not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <investor-vanguardgroup.com> domain name is confusingly similar to Complainant’s VANGUARD trademark. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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 “web develop” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the VANGUARD domain name or by VANGUARD. The Panel therefore concludes that Respondent is not commonly known by the <investor-vanguardgroup.com> domain name for the purposes of Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
Respondent uses <investor-vanguardgroup.com> to offer financial and investment services directly competing with those services offered by Complainant. The website also displays the name “Vanguard Group” further confusing internet users visiting the website into believing they are dealing with Complainant, when they are not. 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.”); see also, 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).”).
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 <investor-vanguardgroup.com> domain name to address a website displaying Complainant’s trademark in its title and 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 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 VANGUARD mark when it registered <investor-vanguardgroup.com> as a domain name. Respondent’s prior knowledge is evident, inter alia, from Complainant’s long term use of its VANGUARD trademark, from Respondent’s incorporation of Complainant’s mark into the at-issue domain name, from Respondent’s use of its <investor-vanguardgroup.com> website in furtherance of promoting services that compete with those services offered by Complainant, and from Respondent’s attempt to pass itself off as Complainant. 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 <investor-vanguardgroup.com> domain name pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico (FA1906001849317) (Forum July 31, 2019) (“Prior to registering the domain name, Respondent had actual knowledge of Complainant’s rights in the VANGUARD mark through its extensive, global use and fame of the mark; therefore, Respondent registered and used the <vtswebvanguard.com> domain name in bad faith under Policy ¶ 4(a)(iii).”); 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); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <investor-vanguardgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 17, 2022
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