DECISION

The Vanguard Group, Inc. v. david chan

Claim Number: FA1908001858060

PARTIES

Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is david chan (“Respondent”), Kazakhstan.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <investisseurpersonnelvanguard.com>, registered with TurnCommerce, Inc. DBA NameBright.com.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 19, 2019; the Forum received payment on August 30, 2019.

On August 20, 2019, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <investisseurpersonnelvanguard.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 September 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@investisseurpersonnelvanguard.com. Also on September 4, 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 September 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant:

1. Complainant is an investment advisor with over US$5.2 trillion in assets under management and 18 locations around the globe. Complainant has rights in the VANGUARD mark through registration of the mark with numerous trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,784,435, registered July, 27, 1993) and the World Intellectual Property Organization (“WIPO”) (e.g. Reg. No.1013189, April 14, 2009). See Compl. Ex. E. Respondent’s <investisseurpersonnelvanguard.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the term “investisseur personnel,” which in English means “personal investor,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s VANGUARD mark.

2. Respondent lacks rights or legitimate interests in the <investisseurpersonnelvanguard.com> domain name. Respondent is not commonly known by the disputed domain name nor does Respondent operate a legitimate business or other organization under the mark or own trademark or service mark rights in the words that make up the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <investisseurpersonnelvanguard.com> domain name resolves to a parked webpage displaying the message “investisseurpersonnelvanguard.com is coming soon.”

3. Respondent registered and uses the <investisseurpersonnelvanguard.com> domain name in bad faith. Respondent attempts to sell the <investisseurpersonnelvanguard.com> domain name at more than out-of-pocket costs. Respondent passively holds the <investisseurpersonnelvanguard.com> domain name. Respondent was well aware of Complainant’s rights in the VANGUARD mark when Respondent registered the disputed domain name based on the extensive, global use and fame of the mark and Respondent’s use of the highly relevant phrase “investisseur personnel,” in the disputed domain name.

B. Respondent:

1. Respondent failed to submit a response in this proceeding.

FINDINGS

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

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

3. Respondent registered or used the <investisseurpersonnelvanguard.com> domain name 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."

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”).

Identical and/or Confusingly Similar

Complainant asserts rights in the VANGUARD mark through registration of the mark with numerous trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,784,435, registered July, 27, 1993) and the World Intellectual Property Organization

(“WIPO”) (e.g. Reg. No. 1013189, April 14, 2009). See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel finds that Complainant has established rights in the VANGUARD mark for the purposes of Policy ¶ 4(a)(i).

Complainant next argues that Respondent’s <investisseurpersonnelvanguard.com> domain name is identical or confusingly similar to Complainant’s mark as adds the term “investisseur personnel,” which in English means “personal investor,” and the gTLD “.com” to Complainant’s VANGUARD mark. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining 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 Panel therefore finds that the <investisseurpersonnelvanguard.com> domain name is identical or confusingly similar to the VANGUARD mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues Respondent lacks rights or legitimate interests in the <investisseurpersonnelvanguard.com> domain name. Respondent is not commonly known by the disputed domain name nor does Respondent operate a legitimate business or other organization under the mark or own trademark or service mark rights in the words that make up the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “david chan.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Complainant also contends Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <investisseurpersonnelvanguard.com> domain name resolves to a parked webpage. Resolving a disputed domain name to a website which does not actively display content may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017)

(”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of the disptued domain name which displays the message “investisseurpersonnelvanguard.com is coming soon.” See Compl. Ex. F. The Panel therefore finds Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and uses the <investisseurpersonnelvanguard.com> domain name in bad faith because Respondent attempts to sell the <investisseurpersonnelvanguard.com> domain name at more than out-of-pocket costs. An offer to sell a disputed domain name in excess of out-of-pocket costs can evince bad faith registration and use per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant argues that Complainant contacted Respondent about the domain name, Respondent offered to sell the disputed domain name for $800.00. See Compl. Ex. G. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).

Complainant also contends that Respondent registered and uses the <investisseurpersonnelvanguard.com> domain name in bad faith as Respondent passively holds the disputed domain name. Passive holding of a disputed domain name can indicate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel may recall Complainant provides a screenshot of the resolving webpage of the disptued domain name which displays the message “investisseurpersonnelvanguard.com is coming soon.” See Compl. Ex. F. Therefore, the Panel finds additional evidence of bad faith under Policy ¶ 4(a)(iii).

Finally, Complainant contends Respondent registered the <investisseurpersonnelvanguard.com> domain name based on the extensive, global use and fame of the mark and Respondent’s use of the highly relevant phrase “investisseur personnel,” in the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Evidence of the fame and recognition of a mark can show a respondent had actual knowledge of a complainant’s rights in a mark at registration. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant provides various articles, screenshots from Complainant’s social media in support of Complainant’s contentions regarding the fame of the mark. See Compl. Ex. D. The Panel finds this evidence sufficient and therefore finds Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights, thus constituting bad faith per Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

John J. Upchurch, Panelist

Dated: October 7, 2019