national arbitration forum

 

DECISION

 

The Vanguard Group, Inc. v. Nevis Domains

Claim Number: FA0612000864835

 

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 Nevis Domains (“Respondent”), P.O. Box 626, Charlestown Nevis 00000 KN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vanguarc.com>, registered with Moniker Online Services, 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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 13, 2006.

 

On December 12, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <vanguarc.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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@vanguarc.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is one of the leading investment compaines in the United States and is the largest no-load mutual fund company in the world. 

 

Complainant has used its VANGUARD mark since at least 1974 in connection with its offering of a variety of financial products and services. 

 

Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the VANGUARD mark (Reg. No. 1,784,435, issued July 27, 1993). 

 

Complainant also holds several international mark registrations for the VANGUARD mark, and it operates a website at the <vanguard.com> domain name. 

 

Respondent is not authorized to use Complainant’s mark, and Respondent is not associated with Complainant in any way. 

 

Respondent registered the <vanguarc.com> domain name on February 12, 2006. 

 

Respondent’s disputed domain name resolves to a website that displays hyperlinks to a variety of third-party websites that are unrelated to Complainant. 

 

Respondent has also been the respondent in several other UDRP proceedings in which the disputed domain names in those cases were transferred from Respondent to the complainants in those proceedings.   

 

Respondent’s <vanguarc.com> domain name is confusingly similar to Complainant’s VANGUARD mark.

 

Respondent does not have any rights to or legitimate interests in the <vanguarc.com> domain name.

 

Respondent registered and used the <vanguarc.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

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:

 

i.   the domain name registered by Respondent is identical or confusingly similar to a

     trademark or service mark in which Complainant has rights; and

ii.  Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant’s registration with the USPTO sufficiently establishes its rights in the VANGUARD mark.  See, for example, Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”

 

Respondent’s <vanguarc.com> domain name is confusingly similar to Complainant’s VANGUARD mark under Policy ¶ 4(a)(i) inasmuch as it merely contains a slightly misspelled version of Complainant’s mark.  The disputed domain name replaces the last letter of Complainant’s mark with the letter “c” which is located just below the letter “d” on a standard keyboard.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but renders the domain name confusingly similar to a complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). 

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.      

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <vanguarc.com> domain name.  Under the Policy, Complainant must first make out a prima facie case in support of its allegations.  The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

Complainant also asserts that Respondent is not authorized to use Complainant’s mark and that Respondent is not associated with Complainant in any way.  Respondent does not deny these allegations. Further, Respondent’s WHOIS information does not indicate that it is commonly known by the <vanguarc.com> domain name, and there is no other evidence in the record to indicate that Respondent is or has ever been known by the disputed domain name.  In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), a panel found that a respondent did not have rights in a domain name where that respondent was not known by the mark.  See also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”  The Panel therefore finds that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). 

 

It is also alleged without contradiction that Respondent is using the disputed domain name to operate a website that displays hyperlinks to various third-party websites unrelated to Complainant, presumably for Respondent’s commercial benefit through the earning of click-through fees.  Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to a complainant, presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in that domain name).

 

We also note that Complainant’s lack of rights and legitimate interests in the disputed domain name is evidenced by the typo-squatted nature of the domain, as it takes advantage of a common typing error by replacing the “d” of Complainant’s mark with a “c.”  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in a disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.         

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent acted in bad faith by registering the disputed domain name.  Based on the uncontested evidence presented by Complainant, we may infer that Respondent receives click-through fees for traffic to the links displayed on the website that resolves from the disputed domain name.  Such commercial benefit constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  Additionally, we conclude that Respondent’s disputed domain name creates a likelihood of confusion as to Complainant’s possible affiliation with the <vanguarc.com> domain name and corresponding website, which is further evidence of bad faith registration and use.  See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where a respondent registered the domain name <bigtex.net> to infringe on a complainant’s goodwill and attract Internet users to that respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).

 

The Panel additionally finds bad faith registration and use as the disputed domain name contains a typosquatted version of Complainant’s mark, which is in itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003): “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”  See also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that a respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on common typographical errors of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evidencing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

 

Moreover, we see evidence of bad faith registration and use in Respondent’s pattern of behavior.  As has been alleged by Complainant, Respondent has been found responsible for typo-squatting in numerous UDRP proceedings.  See, for example, WHYY Inc. v. Nevis Domains, FA 756834 (Nat. Arb. Forum Sept. 20, 2006); see also Symantec Corp. v. Nevis Domains, D2006-0747 (WIPO Aug. 16, 2006).  Such findings are evidence of bad faith registration and use. 

 

Finally, it appears that Respondent registered the contested domain name with either actual or constructive knowledge of Complainant’s rights in the VANGUARD mark by virtue of Complainant’s prior registration of that mark with the pertinent national authorities worldwide.  Registration and use of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.          

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <vanguarc.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  January 26, 2007

 

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