The Vanguard Group, Inc. v. Gray Jones / Web Development Wales / Long Blair / Bart Watts / charles baxter
Claim Number: FA2211002021443
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by The Vanguard Group, Inc., Pennsylvania, USA. Respondents are Gray Jones / Web Development Wales / Long Blair / Bart Watts / charles baxter.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguard-ireland.com>, <vanguard-accounts.com>, <vanguard-clients.com>, <v-gclientsireland.com>, <v-gmarketingireland.com> registered with NICENIC INTERNATIONAL GROUP CO., LIMITED or Atak Domain Bilgi Teknolojileri A.S..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on November 23, 2022; Forum received payment on November 23, 2022.
On November 23, 2022; Nov 24, 2022, NICENIC INTERNATIONAL GROUP CO., LIMITED; Atak Domain Bilgi Teknolojileri A.S. confirmed by e-mail to Forum that the <vanguard-ireland.com>, <vanguard-accounts.com>, <vanguard-clients.com>, <v-gclientsireland.com> and <v-gmarketingireland.com> domain names are registered with NICENIC INTERNATIONAL GROUP CO., LIMITED; Atak Domain Bilgi Teknolojileri A.S. and that respondents are the current registrants of the names. NICENIC INTERNATIONAL GROUP CO., LIMITED; Atak Domain Bilgi Teknolojileri A.S. have verified that the respondents are bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED; Atak Domain Bilgi Teknolojileri A.S. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2022 by which the respondents could file Responses to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@vanguard-ireland.com, postmaster@vanguard-accounts.com, postmaster@vanguard-clients.com, postmaster@v-gclientsireland.com, postmaster@v-gmarketingireland.com. Also on November 28, 2022, the Written Notice of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, was transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registration as technical, administrative and billing contacts.
Having received no response from any respondent, Forum transmitted to the parties Notifications of Respondent Default.
On December 22, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from any respondent.
Complainant requests that the domain names be transferred from the respondents to Complainant.
A. Complainant
Complainant asserts trademark rights in VANGUARD. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that the respondents have no rights or legitimate interests in the disputed domain names because they have no trademark rights; are not known by the same names; and the domain names have not been used other than for nefarious purposes.
Complainant alleges that the respondents registered the disputed domain names in bad faith having targeted Complainant’s business.
B. Respondent
The respondents failed to submit Responses in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial services by reference to the trademark, VANGUARD, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 1,784,435, from July 27, 1993;
2. the disputed domain names were registered between September 30 and October 20, 2022; and
3. the domain names have been used to send emails which pose as having originated from 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."
Preliminary Procedural Issue: Multiple Respondents
Rule 1 provides that “[t]he Holder of a Domain Name Registration” means the single person or entity listed in the WHOIS registration information at the time of commencement. In this case, the disputed domain names are listed to separate holders. The Forum’s Supplemental Rules 1 and 4(c) provide that if a complainant wishes to make an argument for a single respondent having multiple aliases it must present that argument in the complaint for the Panel’s consideration.
Complainant notes that the domain names were registered in the same three-week period and that four of the five names were registered through the same Registrar. Further, that two of the names have the same email address and that all have been used to impersonate Complainant and to promote the same fraudulent investment scheme. Furthermore, the three domain names which combine the VANGUARD trademark with other matter were registered in a three -day period, whilst the remaining two names were registered on October 20, 2022, immediately after Complainant reported the first three domain names to the Registrars and hosting providers.
The WIPO Jurisprudential Overview 3.0 states at paragraph 4.11.2 that where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. It notes that Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate. Those listed factors include “any changes by the respondent … following communications regarding the disputed domain name(s).
In the circumstances as outlined above, the Panel finds that in all likelihood the domain names are under the control of a single person or entity and so for the purposes of application of this Policy regards the named respondents as aliases of a single party referred to hereinafter as “Respondent”.
Substantive Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in VANGUARD since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark the gTLD, “.com”, can be disregarded. So, too, the Panel finds the words “ACCOUNTS”, “CLIENTS” and “MARKETING”, and the country name “IRELAND”, to be of almost no distinctive value (see, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”; Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark."); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding 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; The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light 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).”)).
The Panel finds the domain names, <vanguard-ireland.com>, <vanguard-accounts.com> and <vanguard-clients.com>, to be confusingly similar to the trademark.
However, the Panel has difficulty with regard to Complainant’s argument concerning <v-gclientsireland.com> and <v-gmarketingireland.com>. The Complaint states that these domain names “use the character string V-G in lieu of Complainant’s VANGUARD mark”, submitting that “UDRP panels have held that a domain name containing an obvious abbreviation of a mark are confusingly similar to the mark.” Once more, it is said that the domain names “pair VANGUARD (or an obvious abbreviation thereof) with additional generic wording.”
The Panel does not find V-G to be either an obvious or an intuitive abbreviation of the word “vanguard”. There is no trademark registration for V-G; no evidence that the trademark is commonly abbreviated to V-G; and any argument that V-G may, instead, be understood as a reference to “Vanguard Group” companies is left undeveloped. The Panel does not find either domain name, <v-gclientsireland.com> or <v-gmarketingireland.com>, confusingly similar to the trademark and so the Complaint fails against those two names (see, for example, Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of the domain names, <vanguard-ireland.com>, <vanguard-accounts.com> and <vanguard-clients.com>, only. The remaining analysis applies only to those names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The registrant names do not in any way indicate that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties. Further, the use of the domain names as described to send emails promoting a fraudulent investment scheme is clearly in bad faith and cannot give rise to any rights or legitimate interests (see, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). interests within the meaning of the Policy.”).
A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel has already found the domain names confusingly similar to the trademark. Respondent’s use of the disputed domain names as described to perpetrate a fraud is for commercial gain. The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above (see, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the <vanguard-ireland.com>, <vanguard-accounts.com> and <vanguard-clients.com> domain names. Accordingly, it is Ordered that those names be TRANSFERRED from Respondent to Complainant.
Having failed to establish at least one element required under the ICANN Policy, the Panel concludes that relief shall be DENIED in respect of the <v-gclientsireland.com> and <v-gmarketingireland.com> domain names. Accordingly, it is Ordered that those names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: January 5, 2023
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