The Vanguard Group Inc. v. Proven Financial
Solutions
Claim Number: FA0510000572937
PARTIES
Complainant is The Vanguard
Group Inc. (“Complainant”), 100 Vanguard Blvd., Malvern, PA 19355. Respondent is Proven Financial Solutions (“Respondent”), 4516 Steeplechase Drive,
Norman, OK 73072.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguardfinancialadvisors.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on October 6, 2005; the National Arbitration Forum received a hard copy of the
Complaint on October 10, 2005.
On October 7, 2005, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <vanguardfinancialadvisors.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 31, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@vanguardfinancialadvisors.com by e-mail.
A timely Response was received and determined to be complete on October
31, 2005.
On November 4, 2005 the National
Arbitration Forum received an Additional
Submission from Complainant, in reply to Respondent’s Response. This
additional submission complied with Supplemental
Rule 7. There was no additional submission by Respondent.
On November 4, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. In its Complaint, Complainant contends the following:
Complainant is one of the largest
mutual fund companies in the world. It
has approximately 18 million institutional and individual shareholder
accounts. Complainant is a registered
investment adviser under the Investment Advisers Act of 1940, providing
financial advisory services to consumers with respect to the purchasing,
selling and investment of securities.
The disputed domain name is confusingly similar to Complainant's registered
VANGUARD mark. Respondent has no
trademark rights in <vanguardfinancialadvisors.com>. It has no relationship with or permission
from Complainant for the use of the domain name, and is not commonly known by
the disputed domain name. Respondent
has no legitimate interest in or business purpose for the domain name because
Respondent has not made any legitimate use thereof. Respondent's only use of the domain name since at least as early
as April 2004 has been to direct users to a parking page, which does not
provide any explanation for Respondent's use of the VANGUARD mark and does not
offer any products or services.
Respondent's passive holding of the domain name is insufficient to
establish any rights or legitimate interest in the disputed domain name. Respondent had constructive notice that
Complainant's VANGUARD mark was a federally registered mark. Respondent’s passive holding of and failure
to use the domain name in issue weighs in favor of finding bad faith, as does
Respondent's refusal to transfer the domain name in the face of Complainant's
clear objection. People who may access
the disputed domain name in an attempt to reach Complainant's website may
incorrectly believe that Complainant is affiliated, sponsored or somehow
connected with the website used by Respondent.
B. In his Response, Respondent contends the following:
Respondent agrees that the domain name is confusingly similar to the VANGUARD mark. Respondent is a firm dedicated to using primarily passive/index mutual funds, ETFs, and other financial products and tools offered by Vanguard. Respondent is not a Vanguard affiliate, but is a proponent of Vanguard methodologies, products, and services. Respondent wants to be identified as a firm that utilizes Vanguard financial products and services, and it will clearly state such non-affiliation language into the website when developed. The disputed domain name is descriptive of Respondent’s purpose and mission. Prior to any notice concerning this dispute, Respondent had begun developing a series of websites focused on the financial services arena. Respondent owns approximately 96 domain names aimed at financial services. The concept of Proven Financial Solutions is still very much in its infancy, but much of the preplanning groundwork has been started (i.e. domain and toll free capture) as has exhaustive research on insurance and financial services including the requirements for beginning a startup Registered Investment Advisory firm, and the possibility of one day starting a securities broker-dealer. Respondent has recently been in contact with its accountant and a law firm as it explores the possibility of setting up a LLC or other business entity formation. This demonstrates that Respondent soon plans to offer services aligned with the disputed domain name. Respondent is not commonly known by the company name Vanguard Financial. The chances of a consumer actually arriving at the site and this causing a significant problem for the Vanguard Group is beyond any reasonable concern. Respondent has no intentions of selling, renting, or otherwise transferring said domain name to the Complainant or any other entity. Respondent has not attempted to prevent Vanguard Group from pursuing the registration of domain names, or of disrupting the Vanguard Group’s business. Respondent has no intentions of deceiving Internet users in regard to the source or affiliation of the domain name in dispute. Respondent understands that Complainant must control and protect the name of Vanguard, but not to the exclusion of a legitimate business that has a vested interest in promoting Vanguard investment methodologies and practices.
C. Complainant’s Additional Submission
In its Additional Submission, Complainant contends the following:
In light of Respondent’s concession that the disputed domain name is confusingly similar to Complainant’s mark, Complainant has met its burden of proof regarding this first element. Respondent concedes that it is not commonly known by the domain name in dispute. Respondent has not alleged or evidenced that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent is not a licensee of Complainant, and has not received permission or consent from Complainant to use Complainant’s VANGUARD mark. Respondent confirmed that it acquired the disputed domain name in July 2002, and has made no actual use of the disputed domain name in connection with a bona fide offering of goods or services. Respondent fails to disclose any demonstrable preparations to use the domain name. Respondent’s “capture” of domain names and toll free numbers beginning in 2002, “exhaustive research on insurance and financial services,” and “recent [] . . . contact with [an] accountant and a law firm . . . to explore the possibility of setting up a LLC or other business entity formation” do not demonstrate any preparations by Respondent to use the domain name. By incorporating Complainant’s VANGUARD trademark in the disputed domain name, immediately preceding the words “financial advisors,” Respondent is attempting to drive Internet users to Respondent’s website under the guise that Respondent is sponsored, affiliated with or endorsed by Complainant, when no such thing is true. Any reasonable Internet user seeing or attempting to access the disputed domain name is likely to assume that Respondent’s website is sponsored, affiliated with or endorsed by Complainant. Moreover, any such Internet users will be subject to initial interest confusion -- mistakenly believing they have reached a website that is sponsored, affiliated with or endorsed by Complainant -- long before seeing any disclaimer that Respondent proposes to utilize on its website. Although Respondent implies that its business model practically requires the use of Complainant’s VANGUARD trademark as part of Respondent’s domain name, it is worth noting that the “[h]undreds of advisors [who] utilize [Complainant]” are not compelled to make unauthorized use of Complainant’s VANGUARD trademark as part of their domain names in order to effectively and successfully conduct their respective financial services businesses. It is apparent that Respondent not only had constructive knowledge of Complainant’s VANGUARD mark, via Complainant’s federally registered trademarks, but also had actual knowledge thereof.
FINDINGS
1. The disputed domain name is confusingly similar to the VANGUARD and VANGUARD.COM marks, in which Complainant has rights.
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. The disputed domain was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Complainant owns the VANGUARD mark, registered on the Principal Register in the USPTO for “fund investment services” with Registration No. 1,784,435 issued on July 27, 1993, thus pre-dating the registration of the disputed domain name by Respondent. Complainant also owns U.S. Registration No. 2,573,723 for the VANGUARD.COM mark, covering “financial services” (“provision of financial and investment information by means of a global computer network”).
Respondent admits that the disputed domain name is confusingly similar to Complainant’s VANGUARD marks. Independently from such admission the Panel believes that the domain name is confusingly similar to Complainant’s mark since the name is simply the addition of the generic words “financial” and “advisors” to the VANGUARD mark, plus the (irrelevant to avoid confusing similarity) ".com" gTLD. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where disputed domain names contain the identical mark of the complainant combined with a generic word).
The Panel concludes
that Complainant has made out its case under the first requirement of the
Policy.
Rights or
Legitimate Interests
Respondent states that it has undertaken “preplanning groundwork” for Proven Financial Solutions, such as “domain and toll free capture,” and that exhaustive research on insurance and financial services has been made, including the requirements for beginning a startup Registered Investment Advisory firm, and the possibility of one day starting a securities broker-dealer. Respondent also states that it has recently been in contact with its accountant and a law firm as it explores the possibility of setting up a LLC or other business entity formation. In Respondent’s view, this should demonstrate that Respondent “soon plans to offer services that are very much aligned with disputed domain name.”
These allegations of
Respondent, unsupported by any kind of evidence, cannot establish that before
any notice of the dispute, Respondent used or had demonstrable preparations to
use the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services, pursuant to Policy ¶
4(c)(i). See Compagnie Générale des Etablissements
MICHELIN-MICHELIN & Cie v. Mr Kristian Marjin van Wezel, D2001-0598 (WIPO June 20, 2001) (finding
that the fact that the respondent has been involved in the cooking industry and
that he has a project about a website dedicated to fine food and restaurants
rewarded by the Michelin stars is completely irrelevant to justify respondent’s
use of the MICHELIN mark without any consent from his legitimate owner); see
also Inter-Continental Hotels Corp. v. Khaled Ali Soussi, D2000-0252
(WIPO, July 5, 2000) (finding that respondent failed to provide documentary or
other demonstrable evidence of his supposed plans to create a legitimate
website, while the Policy plainly requires such demonstrable evidence, and
therefore mere assertions of intent are insufficient to meet the burden).
Respondent’s lack of any use of the domain name (excepting that the
domain name has been merely “parked” in Go Daddy’s web site) also does not help
Respondent in showing that it has rights or legitimate interests in the domain
name.
In absence of any other element that may show that Respondent has some
rights or legitimate interests in the domain name, the Panel concludes that
Complainant has proved the second prong of the Policy.
Because Complainant registered its VANGUARD marks with the USPTO Principal Register, Respondent had constructive notice of the marks. Respondent also had actual notice of such marks since he states in his response that he “wants to be identified as a firm that utilizes Vanguard financial products and services.” Although Respondent contends to be willing to insert language stating his un-affiliation with Complainant into the website when developed, the fact is that he failed to post any such text until this very moment. This means that since he registered the disputed domain name Respondent knew or should have known that Internet surfers who may access the domain name in dispute in an attempt to reach Complainant's website may incorrectly believe that Complainant is affiliated, sponsored or somehow connected with the website used by Respondent.
As Respondent admits that he
intended to use the website under the disputed domain name for purposes that
are indisputably commercial, and directly related to the financial products of
Complainant, it is clear that Respondent “by using the domain name, [has]
intentionally attempted to attract, for commercial gain, Internet users to
[his] web site or other on-line location, by creating a likelihood of confusion
with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of his] web site or location or of a product or service on
[Respondent’s] web site or location”, according to Policy ¶ (4)(b)(iv). According to Policy ¶ (4)(a)(iii) this is a
circumstance of bad faith registration and use of the domain name.
Further, considering that Respondent had constructive and actual knowledge of the VANGUARD marks, and that it is not conceivable that Respondent could use the domain name except in infringement of Complainant’s marks, the passive holding of the domain name, following its registration in bad faith, amounts to bad faith registration and use, pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb 18, 2000); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
For these reasons, the Panel believes that Complainant has proved the third requirement of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardfinancialadvisors.com>
domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi,
Panelist
Dated: November 18, 2005
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