The Vanguard Group, Inc. v. Manan Shahbaz
Claim Number: FA2207002005110
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by The Vanguard Group, Inc., Pennsylvania, USA. Respondent is Manan Shahbaz (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguard-fi.co>, registered with eNom, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2022; the Forum received payment on July 21, 2022.
On July 21, 2022, eNom, LLC confirmed by e-mail to the Forum that the <vanguard-fi.co> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 July 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@vanguard-fi.co. Also on July 25, 2022, 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 August 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant, The Vanguard Group, Inc. is in the business of financial services. Complainant asserts rights in the VANGUARD mark based upon registration with the USPTO (e.g., reg. No. 1,784,435, registered July 27, 1993) and other trademark agencies. See Compl. Ex. 11. Respondent’s <vanguard-fi.co> is confusingly similar to Complainant’s VANGUARD trademark because it contains the mark in its entirety with a hyphen and the letters “FI” and adds the country code top-level domain name (“ccTLD”) “.co” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <vanguard-fi.co> domain name. Respondent is not licensed or authorized to use Complainant’s VANGUARD mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name for competing use.
Respondent registered and uses the <vanguard-fi.co> domain name in bad faith. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business. Respondent uses the disputed domain name as an attraction for commercial gain and competing use. Respondent had actual notice of Complainant’s rights in the VANGUARD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is in the business of providing financial services.
2. Complainant has established its rights in the VANGUARD mark based upon registration of the mark with the USPTO (e.g., reg. No. 1,784,435, registered July 27, 1993).
3. Respondent registered the disputed domain name on March 23, 2022.
4. Respondent has caused the disputed domain name to be used to compete with the goods and services offered by Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the VANGUARD mark based upon registration of the mark with the USPTO (e.g., reg. No. 1,784,435 registered July 27, 1993) and other trademark agencies. See Compl. Ex. 11. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the VANGUARD mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VANGUARD mark. Complainant argues Respondent’s <vanguard-fi.co> is confusingly similar to Complainant’s VANGUARD trademark because it contains the mark in its entirety with a hyphen and the letters “FI” and adds the ccTLD “.co” to form the disputed domain name. Hyphens and top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Thomson Reuters Global Resources v. Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Slight 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). Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Here, the letters “FI” are a common abbreviation for the term “finance,” which relates to the goods and services of Complainant. Therefore, the panel finds the disputed domain name is confusingly similar to Complainant’s VANGUARD mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s VANGUARD mark and to use it in its domain name adding a hyphen and the letters “FI” to the mark;
(b) Respondent registered the disputed domain name on March 23, 2022;
(c) Respondent has caused the disputed domain name to be used to compete with the goods and services offered by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <vanguard-fi.co> domain name because Respondent is not licensed or authorized to use Complainant’s VANGUARD mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Manan Shahbaz.” See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name for competing use. 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). SeeVanguard 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.”). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing offerings of decentralized finance services and a cryptocurrency investment scheme, both of which are highly related to the legitimate investment products and financial services Complainant offers under the VANGUARD mark and are competitive with Complainant’s products and services. See Compl. Ex. 12. Therefore, the Panel finds Respondent does not provide 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).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <vanguard-fi.co> domain name in bad faith because it disrupts Complainant’s business. Appropriating a complainant’s mark to divert its customers to respondent’s competing business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, Complainant submits that the disputed domain name disrupts Complainant’s business by (a) advertising a competitive financial investment product, (b) unfairly competing with Complainant for Internet traffic, (c) diversion of Complainant’s customers from Complainant’s URL VANGUARD.COM and (d) interfering with Complainant’s ability to control the use of its federally registered VANGUARD mark. To support this, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing Complainant’s mark and related services. See Compl. Ex. 12. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues Respondent uses the disputed domain name as an attraction for commercial gain and competing use. A respondent’s use of a disputed domain name to direct Internet users to a website which competes with a complainant is evidence of bad faith pursuant to 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.”). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing its VANGUARD mark and related services. See Compl. Ex. 12. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant's rights in the VANGUARD mark. Complainant argues that the fame of Complainant’s mark and Respondent's offering of competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. See Compl. Ex. 12. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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 "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing its VANGUARD mark and related services. See Compl. Ex. 12. As such, the Panel determines Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguard-fi.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: August 18, 2022
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