The Vanguard Group, Inc. v. Pieter van Staden / Jobz4Afrika (Pty) Ltd
Claim Number: FA2202001983161
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Laura A. Alos of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is PIETER van Staden / Jobz4Afrika (Pty) Ltd (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguard-wealth.com>, registered with Tucows Domains Inc..
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2022; the Forum received payment on February 3, 2022.
On February 4th, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <vanguard-wealth.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 February 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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-wealth.com. Also on February 9, 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.
A response was submitted on March 2, 2022. The response was submitted after the deadline of March 1, 2022 and is therefore not in compliance with ICANN Rule #5 (a): “Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider”. The Respondent did not submit an extension request according to ICANN Rule #5 (b). Therefore, the Panel did not take the response into account.
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 a timely response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in 1975, Complainant (‘Vanguard’) is one of the world’s largest investment companies, with more than 30,000,000 investors in about 170 countries and total assets under management of approximately $8.5 trillion as of January 24, 2022, with 422 funds worldwide (215 funds in the U.S. and 207 funds in global markets).
Complainant owns numerous registrations for the VANGUARD mark and variations thereof in countries around the world, and its rights in the VANGUARD mark date back to at least as early as 1975. Complainant’s trademark rights in its VANGUARD mark and variations thereof long predate Respondent’s February 2020 registration of the Domain Name.
Under its VANGUARD trademark, Complainant offers various finance-related services, including mutual fund investments, investment brokerage, investment management, financial retirement plan consulting, and the financial administration of retirement plans. Complainant’s products and services are offered in numerous locations worldwide, namely, in the U.S. and additional locations in the Americas including Canada, Mexico, and South America; in the Asia-Pacific region including Australia, China, and Japan; and in Europe including the U.K., France, and Germany, among other countries.
Complainant has received numerous awards and accolades for its services, and has invested significant money, time, and resources in the advertisement and promotion of its products and services under its VANGUARD mark. Complainant has also advertised, promoted, and/or offered its products and services under its VANGUARD mark online for many years. Vanguard owns and uses many VANGUARD- formative domain names to advertise, promote, and/or offer Complainant’s products and services including the domain name VANGUARD.COM, which it has used since at least as early as 1997. Complainant also advertises and promotes products and services under its VANGUARD mark online via social media and has hundreds of thousands of followers. As a result of the tremendous commercial success of Complainant’s products and services, and Complainant’s extensive use, promotion, and registration of the VANGUARD trademark for decades, the VANGUARD trademark has long been internationally famous.
The Domain Name is confusingly similar to Complainant’s famous VANGUARD mark because it contains Complainant’s mark in its entirety combined with the generic/descriptive term “wealth” and the gTLD “.com.” Registrant’s inclusion of the generic/descriptive term “wealth” heightens the confusing similarity of the Domain Name because the term has an immediate and obvious connection to Complainant’s investment and financial services, which are offered in connection with the famous VANGUARD mark.
Respondent has no rights or legitimate interest in the Domain Name (1) because of its use of the Domain Name for a website advertising and/or offering directly competing services, which does not constitute a bona fide offering of services or a legitimate non-commercial use; (2) because Respondent is not and has not been commonly known by the Domain Name; and (3) Respondent’s use of the name “Vanguard Wealth” on its website does not demonstrate any legitimate interest because Respondent cannot justify its misappropriation of a trademark in a domain name by relying on concurrent infringing use of that same mark in a trade name.
Respondent’s registration and use of the Domain Name constitute bad faith, because
(1) Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its VANGUARD mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name and the associated website;
(2) Respondent unfairly disrupts Complainant’s business by
(a) advertising competing financial and investment services,
(b) unfairly competing with Complainant for Internet traffic,
(c) unfairly competing with Complainant for Internet traffic, including diversion of Complainant’s customers from Complainant’s URL VANGUARD.COM;
(d) interfering with Complainant’s ability to control the use of its federally registered VANGUARD mark. Respondent’s activities in opposition to Complainant are sufficient to define Respondent as a competitor; and
(3) Respondent registered the Domain Name in bad faith with knowledge of Complainant’s rights in the VANGUARD mark, given Complainant’s long- term prior use of its VANGUARD mark in connection with financial and investment services, the fame of Complainant’s VANGUARD mark, Respondent’s selection and registration of the Domain Name that contains the VANGUARD mark, and Respondent’s use of Vanguard Wealth as the company name on the Domain Name’s website, which relates directly to Complainant’s corporate name.
B. Respondent
Respondent did not submit a timely Response in this proceeding.
The Complainant submitted evidence that it is the registered owner of the following USPTO trademark registrations (hereafter: the “Vanguard Trademarks”), valid in the United States of America:
· “VANGUARD”, registration nr. 1,784,435, registered July 27th 1993, for “fund investment services” in Nice classification 36 (U.S. cl. 102); and
· “VANGUARD”, registration nr. 3,847,010, registered September 14th 2010, for Nice classifications 9, 16, 35, 36 and 41 (among which e.g. “providing information in the financial and investment fields”; “full line of financial and investment services”; etc.).
The Complainant submitted evidence that its services are being offered via the domain name www.vanguard.com, and that this domain name has been active since 1997.
The disputed domain name was registered on February 21st, 2020. At the time of this decision, the disputed domain name is inactive.
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.
The disputed domain name <vanguard-wealth.com> consists of the abovementioned VANGUARD trademark(s) of the Complainant, with the mere addition of the ‘-‘ symbol and the term ‘WEALTH’. In this case, the ‘-‘ symbol does not add distinctiveness to the disputed domain name. Moreover, the addition of the term ‘WEALTH’ to the disputed domain name enhances the similarity to the VANGUARD trademarks, since the VANGUARD trademarks are registered for investment and financial services (among others).
The disputed domain name also consists of the generic “.com” Top-Level Domain (gTLD), which may be disregarded when it comes to considering whether a domain name is confusingly similar to a trademark to which the Complainant has rights.
The Panel concludes that the disputed domain name is confusingly similar to the registered VANGUARD trademark(s) of the Complainant under the first element of paragraph 4(a) of the Policy.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy paragraph 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy paragraph 4(a)(ii)).
First, the fact that Respondent offers services similar to Complainant does not automatically in itself constitute a lack of bona fide offering of goods or services by the Respondent. Also, the fact that Respondent was not authorized to use the VANGUARD mark does not automatically imply a lack of rights or legitimate interests. The same is true for the statement of Complainant that Respondent is not commonly known by the disputed domain name. The Panel would need more factual elements and more detailed argumentation why these are relevant elements in light of the circumstances of the case (especially, the fact that the words ‘vanguard’ and ‘wealth’ are common words in the English language and Respondent seems to use these terms in their dictionary meaning – see below).
Second, the term ‘VANGUARD’ is an existing English word, meaning “advance guard” or “the forefront in any movement, field, activity, or the like” (according to Dictionary.com and other dictionaries). From the screenshots of the website of Respondent (as submitted by Complainant), it seems that Respondent presents itself as “a group of people leading the way in new developments or ideas”. On its website, Respondent further mentions: “Vanguard Wealth is leading the way in building wealth for everyone. We enable everyone to own a share in property asset classes previously reserved for the select few.” In other words, it seems that Respondent is using the term ‘VANGUARD’ in its dictionary meaning, specifically in relation to wealth creation services.
Third, the Complainant did not submit any evidence of trademark rights for the term ‘VANGUARD’ in South-Africa (i.e., the country where the Respondent has his residence). The Complainant did not argue or substantiate that it operates its business in South-Africa. From the website of the Complainant (https://global.vanguard.com/portal/site/home), it seems that the Complainant is active in the Americas, in Asia Pacific, and in Europe, but not in Africa.
Fourth, the Complainant states that its VANGUARD trademarks are famous, but did not submit any evidence of this statement. It might well be that these trademarks have a certain fame or status, but it is up to the Complainant to provide evidence thereof. The Panel finds that the Complainant did not provide sufficient argumentation or evidence that the Respondent had knowledge or should have had knowledge of its trademark rights. In particular, the Complainant did not substantiate that its trademarks are “well-known” or “famous” trademarks, let alone in South-Africa, i.e., the home country of the Respondent.
The burden of proof under Paragraph 4(a)(ii) of the Policy lies ultimately and predominantly with the Complainant and the Panel believes that the Complainant did not meet this burden. The Panel emphasises that it is bound by Article 15 (a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
From a combination of the factors mentioned above, the Panel finds that Complainant did not to make out a prima facie case that Respondent lacks rights or legitimate interests.
In light of the above, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name.
In view of the Panel's finding that the Complainant failed to establish the second element of Paragraph 4(a) of the Policy, the Panel does not need to consider the Complainant's assertions that the Respondent registered and uses the disputed domain name in bad faith. Nevertheless, the Panel will state for the record its conclusions on the third element of Paragraph 4(a) of the Policy as well.
As a preliminary remark, this Panel finds that one should not lightly conclude that a respondent registered and/or used a domain name in bad faith. Also, the overall principle is that the burden of proof is on the Complainant to prove, on the balance of probabilities, that the domain name was registered and used in bad faith.
First, Complainant mentioned that its VANGUARD trademarks are ‘famous’ but did not provide evidence of this claim. Complainant did not substantiate that its trademarks are ‘well-known’ or ‘famous’ or have a particular name or reputation. The Panel did not see any evidence of any presence of the Complainant and its trademarks in the country where the Respondent is based (South-Africa). The Complainant did not submit evidence that its trademarks are registered or used in the home country of the Respondent (South-Africa). The Complainant submitted evidence that it owns two registered trademarks VANGUARD which are valid in the United States of America, but the Complainant did not submit evidence that it owns exclusive rights to the term VANGUARD in the country of residence of Respondent (South-Africa). From the evidence submitted by the Complainant, it seems that the Complainant focuses its activities on the Americas, Asia, the Pacific, and Europe, but not Africa.
It might be the case that the VANGUARD trademarks of Complainant are in fact ‘well-known’ or ‘famous’, but it is up to the Complainant to formulate such claim in a convincing manner and to provide evidence of such claim.
In sum, the Panel finds that the Complainant failed to substantiate that the Respondent had constructive or prior knowledge of the Complainant’s VANGUARD trademark rights.
Second, as mentioned above, the term VANGUARD is a common term in the English language, and it seems that Respondent is using this term in its dictionary meaning for providing its services related to wealth creation. The Panel believes that the disputed domain name is comprised of common terms in the English language (‘vanguard and ‘wealth’) that have a meaning apart from the use of the word ‘vanguard’ in the Complainant’s USPTO VANGUARD trademarks. The registration and use of a domain name comprising such common terms is not necessarily done in bad faith. Thus, from the elements of fact, it is not unlikely that the Respondent registered and used the disputed domain name without knowledge of Complainant and its trademarks.
The Panel finds that the Complainant did not provide sufficient convincing argumentation and evidence that any of the circumstances of Policy paragraph 4(b) are present.
The Panel reiterates that it is bound by Article 15 (a) of the Rules and that it should thus decide the complaint based on the statements and documents submitted by the parties. On the balance of probabilities and given the lack of convincing evidence of bad faith, the Panel concludes that the Complainant failed to establish the third element of Paragraph 4(a) of the Policy.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vanguard-wealth.com> domain name REMAIN WITH Respondent.
Bart Van Besien, Panelist
Dated: March 21, 2022
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