The Vanguard Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1906001849317
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vtswebvanguard.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2019; the Forum received payment on June 24, 2019.
On June 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vtswebvanguard.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2019 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@vtswebvanguard.com. Also on June 26, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest provider of mutual funds and the second-largest provider of exchange-traded funds. Complainant has rights in the VANGUARD mark through its registration with the USPTO (e.g. Reg. No. 1,784,435 registered July 27, 1993). Respondent’s <vtswebvanguard.com> domain name is confusingly similar to Complainant’s VANGUARD mark as it contains the mark in its entirety and adds the generic words “vts” and “web,” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <vtswebvanguard.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent’s <vtswebvanguard.com> domain name resolves to a pay-per-click page displaying links to other websites that are unassociated and/or competing with Complainant.
Respondent registered and uses the <vtswebvanguard.com> domain name in bad faith by attempting to intentionally attract, for commercial gain, Internet searchers to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Respondent engages in a long-standing pattern of registering domain names that infringe on the marks of brand owners. Finally, Respondent had actual knowledge in Respondent’s rights in the VANGUARD mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the world’s largest provider of mutual funds and the second-largest provider of exchange-traded funds. Complainant has rights in the VANGUARD mark through its registration with the USPTO (e.g. Reg. No. 1,784,435 registered July 27, 1993). Respondent’s <vtswebvanguard.com> domain name is confusingly similar to Complainant’s VANGUARD mark.
Respondent has no rights or legitimate interest in the <vtswebvanguard.com> domain name. Respondent’s <vtswebvanguard.com> domain name resolves to a pay-per-click page displaying links to other websites that are unassociated and/or competing with Complainant.
Respondent registered the <vtswebvanguard.com> domain name on May 8, 2019.
Respondent registered and uses the <vtswebvanguard.com> domain name in bad faith.
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.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the VANGUARD mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <vtswebvanguard.com> domain name is confusingly similar to Complainant’s VANGUARD as it contains the mark in its entirety and adds the generic words “vts” and “web” along with the “.com” gTLD.
Respondent has no rights or legitimate interests in the <vtswebvanguard.com> domain name. The WHOIS information identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as Registrant of the domain name. Respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name. Instead, Respondent’s <vtswebvanguard.com> domain name resolves to a pay-per-click page that displays links to other websites that are unassociated and/or competing with Complainant. Use of a domain name to resolve to a webpage that provides links to unassociated and/or competing websites is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Further, Respondent engages in a long-standing pattern of registering domain names in bad faith under Policy ¶ 4(b)(ii). Prior successful UDRP decisions have been entered against Respondent. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii)).
Prior to registering the domain name, Respondent had actual knowledge of Complainant’s rights in the VANGUARD mark through its extensive, global use and fame of the mark; therefore, Respondent registered and used the <vtswebvanguard.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding Policy ¶ 4(a)(iii) bad faith from actual knowledge through the name used for the domain and the use made of it.).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vtswebvanguard.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 31, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page