The Vanguard Group Inc v. Private Registration
Claim Number: FA0808001221467
Complainant is The Vanguard Group Inc (“Complainant”), represented by Diane
E
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vanguardcharity.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2008.
On August 22, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <vanguardcharity.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@vanguardcharity.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <vanguardcharity.com> domain name is confusingly similar to Complainant’s VANGUARD mark.
2. Respondent does not have any rights or legitimate interests in the <vanguardcharity.com> domain name.
3. Respondent registered and used the <vanguardcharity.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a financial services company that markets those services under the VANGUARD mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on July 27, 1993 (Reg. No. 1,784,435). Complainant has used the VANGUARD mark continuously in commerce since at least as early as 1974. Complainant currently manages approximately $1.25 trillion in assets, and has approximately 21.5 million institutional and individual shareholder accounts. Complainant has also licensed the VANGUARD mark to the independent public charity Vanguard Charitable Endowment Program, which operates at the website resolving from the <vanguardcharitable.org> domain name.
Respondent registered the <vanguardcharity.com> domain name on May 21, 2003. The disputed domain name does not currently resolve to an active website; previously, the disputed domain name resolved to a website that allowed Internet visitors to make purchases via links to third-party websites, and that purported to donate a portion of the revenues to charity.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 Panel finds that Complainant has established rights in
the VANGUARD mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that
Respondent’s <vanguardcharity.com> domain name is confusingly similar to its VANGUARD mark. The <vanguardcharity.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “charity” has been added to the end of the mark; and
(2) the generic top-level domain (gTLD) “.com” has been added. The addition of a descriptive term does not
sufficiently distinguish a domain name from an incorporated mark for the
purposes of Policy ¶ 4(a)(i), nor does the addition of the gTLD “.com”. See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9,
2000) (finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that because these changes do
not minimize or eliminate the resulting likelihood of confusion, Respondent’s
disputed domain name is not sufficiently distinguished from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v.
Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that
the domain name <bramblesequipment.com> is confusingly similar because
the combination of the two words "brambles" and "equipment"
in the domain name implies that there is an association with the complainant’s
business); see
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022
(WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive
words "fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <vanguardcharity.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <vanguardcharity.com>
domain name nor has it ever been the owner or licensee of the VANGUARD
mark. Although Respondent had listed
itself as “VanguardCharity.com, LLC” on
the website that resolved from <vanguardcharity.com>
when it was
active, Respondent is not currently listed as such on the website now
that it is inactive. Respondent also has
failed to show that they are known by that name or by any variation on the
VANGUARD mark. The Panel therefore finds
that Respondent is not commonly known by the <vanguardcharity.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb.
Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE
ELECTRONICS mark on its web page and in its domain name . . . , there is no
evidence that Respondent is commonly known by the
<ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that
there is any other entity besides Complainant authorized to trade as ULTIMATE
ELECTRONICS.”); see
also Target Brands, Inc. v. Hosting Provider Serv., FA 187396
(Nat. Arb. Forum Sept. 30, 2003) (“While
Respondent may have held itself out as TARGETPILLS.COM on its website at
<targetpills.com>, there is no evidence that Respondent was actually or
commonly known by the disputed domain name.
Both the fact that Respondent declined to respond to Complainant’s charge
and the fact that Respondent’s operations suddenly ceased suggest that
Respondent was not legitimately known as <targetpills.com>.”).
The <vanguardcharity.com> domain name does not currently resolve to an active website. The Panel finds that Respondent’s failure to make active use of the <vanguardcharity.com> domain name is 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). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent was using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website that resolves from the disputed domain name, through the
confusion caused by the similarity between the VANGUARD mark and the <vanguardcharity.com> domain
name. Complainant also contends that
Respondent intended to disrupt Complainant’s business by diverting confused
customers to Respondent’s website, where they would be under the impression
that they would be making charitable contributions to the philanthropic
endeavors of the Vanguard Charitable Endowment Program. The Panel finds that Respondent’s disruption
of Complainant’s business by appearing to do charitable work associated with
Complainant is evidence of Respondent’s registration and use of the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2
Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Wall
v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite
respondent’s claim that it used the
<josephinewall.com> domain name, which was identical to complainant’s
JOSEPHINE WALL mark, to help complainant become popular in the United States,
the Panel found that the respondent’s use of the domain name to sell the
complainant’s artwork in the United States constituted disruption pursuant to
Policy ¶ 4(b)(iii)).
Currently, Respondent is not
making active use of the <vanguardcharity.com>
domain name. The Panel finds that
Respondent’s failure to make active use of the disputed domain name is evidence
of Respondent’s registration and use of the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii)). See DCI
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardcharity.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 28, 2008
National
Arbitration Forum