The Vanguard Group, Inc. v. Carolina Rodrigues
Claim Number: FA2007001904234
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Carolina Rodrigues (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sponsorvanguardplan.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2020; the Forum received payment on July 14, 2020.
On July 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sponsorvanguardplan.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 July 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2020 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@sponsorvanguardplan.com. Also on July 16, 2020, 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 August 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Vanguard, is one of the largest investment companies in the world..
Complainant has rights in the VANGUARD mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <sponsorvanguardplan.com> domain name is confusingly similar to Complainant’s VANGUARD mark, as the domain name incorporates the mark in its entirety and simply adds the generic and/or descriptive terms “sponsor” and “plan” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <sponsorvanguardplan.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use the VANGUARD mark in any manner. Respondent’s use of the at-issue domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name hosts pay-per-click website advertisements to third party websites. Further, Respondent engages in typosquatting.
Respondent registered and is using the <sponsorvanguardplan.com> domain name in bad faith. Respondent has a pattern of bad faith domain name registrations. Respondent disrupts Complainant’s business and attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its marks. Respondent had actual or constructive knowledge of Complainant’s rights in the VANGUARD mark prior to its registration of the domain name. Finally, Respondent engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the VANGUARD mark.
Respondent has not been authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in VANGUARD.
Respondent uses the at-issue domain name to address a website offering pay-per-click links to third parties.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its VANGUARD mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain name contain Complainant’s VANGUARD trademark preceded by the term “sponsor” and followed by the term “plan.” The domain name is concluded with the top level domain name “.com.” The differences between Respondent’s <sponsorvanguardplan.com> domain name and Complainant’s VANGUARD trademark are insufficient to distinguish either domain name from Complainant’s mark under Policy ¶ 4(a)(i). Moreover, the at-issue domain name mimics Complainant’s official domain names <vanguardplan.com> and <sponsor.vanguardplan.com>. Therefore, the Panel finds that Respondent’s <sponsorvanguardplan.com> domain name is confusingly similar to Complainant’s VANGUARD trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of <sponsorvanguardplan.com>.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Carolina Rodrigues” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <sponsorvanguardplan.com>. The Panel therefore concludes that Respondent is not commonly known by the <sponsorvanguardplan.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <sponsorvanguardplan.com> domain name to address a webpage offering pay-per-click links. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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 domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Likewise, Respondent’s use of the domain name for typosquatting, as further discussed below regarding bad faith, shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the <sponsorvanguardplan.com> domain name pursuant to Policy ¶ 4(c)(iii). See The Vanguard Group Inc. v. Alvaro Collazo, NAF FA0410000349074 (December 1, 2004) (“. . . where a Respondent has engaged in typosquatting by registering a domain name that takes advantage of inadvertent errors made by Internet users who attempt to access Complainant online, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name [<vanugard.com>].”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <sponsorvanguardplan.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has suffered multiple adverse UDRP decisions as a respondent thereby suggesting both a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii) and bad faith in the instant case. 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 and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Second, Respondent uses the at-issue confusingly similar domain name to offer links to third parties, some of which compete with Complainant. Respondent’s use of the at-issue domain name to address a webpage of third-party pay-pre-click links, including competitive links, demonstrates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Further, Complainant points out that Respondent engages in a form of typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark or as here a domain name sponsored by Complainant, and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or, 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target trademark’s goodwill. As mentioned above Respondent’s <sponsorvanguardplan.com> domain name is nearly identical to Complainant’s <sponsor.vanguardplan.com>. Respondent’s domain name only differs from Complainant’s official domain name by a single omitted period. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <sponsorvanguardplan.com> knowing that Complainant had trademark rights in the VANGUARD mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent mimicking of Complainant’s official domain names in the at-issue domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark rights further indicates that Respondent registered and used the <sponsorvanguardplan.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sponsorvanguardplan.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 9, 2020
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