National Arbitration Forum

 

DECISION

 

The Vanguard Group Inc. v. Investors FastTrack

Claim Number: FA0612000863257

 

PARTIES

Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Robyn Y. Ettricks, of The Vanguard Group, Inc., 100 Vanguard Blvd. V-26, Malvern, PA 19355.  Respondent is Investors FastTrack (“Respondent”), represented by Paul Charbonnet, of Investors FastTrack, P.O. Box 77577, Baton Rouge, LA 70879.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <best-of-vanguard.com>, registered with Easydns Technologies, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2006.

 

On December 12, 2006, Easydns Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <best-of-vanguard.com> domain name is registered with Easydns Technologies, Inc. and that the Respondent is the current registrant of the name.  Easydns Technologies, Inc. has verified that Respondent is bound by the Easydns Technologies, 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 December 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 2007 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@best-of-vanguard.com by e-mail.

 

A timely Response was received and determined to be complete on January 2, 2007.

 

A timely Reply was received and determined to be timely on January 5, 2007.

 

A timely Additional Submission by Respondent was received and determined to be timely on January 10, 2007.

 

On January 5, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant relies on its trademark registration of the VANGUARD mark, which was issued July 27, 1993.  In addition, Complainant contends Respondent is not commonly known by the contested domain name <best-of-vanguard.com> and is not licensed to use it.  Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to its own website at the <fastrack.net> domain name, where Respondent sells investment software.  Complainant contends Respondent’s use of the disputed domain name is in bad faith because he uses it to divert Internet users to its own website selling competing products.  Complainant contends Respondent is attempting to profit by appropriating Complainant’s goodwill to sell its competing products.

 

B. Respondent

 

Respondent contends its use of the <best-of-vanguard.com> domain name is not confusingly similar to the VANGUARD mark because it refers only to an evaluation of Vanguard funds compared to each other, which is one of the things Respondent’s software does, and the domain name as a whole is descriptive of Respondent’s business.  Respondent also contends this is a legitimate use because it is for a bona fide offering of goods and services.  Respondent denies its use of the disputed domain name is in bad faith, pointing to its disclaimer of any relationship with Complainant and his legitimate use of the domain name in providing investment advice to persons desiring to purchase mutual funds from Complainant.  Respondent also asserts the domain name is comprised of generic terms.

 

C. Additional Submissions

 

In its Reply, Complainant asserts the words “best-of” do not avoid the confusing similarity of the disputed domain name.  Complainant contends Respondent is commonly known as Investors FastTrack rather than by the disputed domain name and seeks to pretend it is licensed by or affiliated with Complainant without any use or demonstrable preparations for use of the domain for a bona fide offering of goods or services.  Complainant continues its argument that Respondent is in bad faith because he seeks to divert Internet users to his website for commercial gain under the guise of an affiliation with Complainant.

 

In his Additional Submission, Respondent contends a Google search demonstrates nothing on Complainant’s website would be confused with Respondent’s domain name.

 

Respondent contends precedent supports his position and Complainant did not show otherwise.  Respondent states that he has used the best of Vanguard evaluation in every aspect of his business without misleading customers.  He acknowledges lack of affiliation with Complainant and asserts he has not pretended otherwise.  He contends he has for years popularized techniques for picking the best of Vanguard funds and offers products and services for doing so.

 

FINDINGS

Complainant has a valid trademark registration of its VANGUARD mark, issued July 27, 1993.  It uses the mark in marketing its family of financial products, and primarily mutual funds, which are available for purchase either directly or through brokers and other third parties.  Complainant also offers financial advising services.  Respondent does not sell mutual funds but, instead, offers services and products intended to help investors evaluate mutual funds for investment, including Vanguard funds.  Respondent has since at least 1990 offered investment tools to assist investors in choosing among Vanguard funds.  Respondent is an individual who does business under the name Investors FastTrack.

 

Respondent has a website at the <fastrack.net> domain name.  On March 8, 2006, Respondent registered the disputed domain name <best-of-vanguard.com>, which is linked to the Investors FastTrack website.  When Complainant asked Respondent to desist using the disputed domain name, Respondent refused, but placed a disclaimer of any affiliation with Complainant on its website.  Complainant offered Respondent $25 to transfer his registration, which Respondent refused. 

 

No dispute exists that Respondent among other services offers products and services that investors can use to evaluate Complainant’s funds for investment.  No dispute exists that Respondent does not sell Vanguard funds or other investments.

 

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.

 

Identical and/or Confusingly Similar (Policy ¶4(a)(i)) 

 

Even though Respondent’s <best-of-vanguard.com> domain name incorporates the VANGUARD mark, the words “best-of” plainly show the term is purely nominative and is descriptive of the Respondent’s business, especially when Respondent’s website contains an express disclaimer of any affiliation with Complainant.  See Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001); see also Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000). 

 

Rights or Legitimate Interests (Policy 4(a)(ii))

 

Complainant has failed to establish a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain name.  Respondent makes a bona fide offering of goods and services in providing investment products and services to people wishing to consider investment in Complainant’s financial products and services.  See The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006); see also Secondary School Admission Test Bd., Inc. v. Severino, FA 408094 (Nat. Arb. Forum Mar. 24, 2005).

 

Registration and Use in Bad Faith (Policy 4(a)(iii))

 

Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.  See Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005); see also Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005).

 

DECISION

Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Mark McCormick, Panelist
Dated:  January 18, 2007