The Vanguard Group Inc. v. Alvaro Collazo
Claim
Number: FA0410000349074
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Robyn
Y. Ettricks, P.O. Box 2600 V-26, Valley Forge, PA 19482-2600. Respondent is Alvaro Collazo, Manuel Oribe 2028, Tarariras, Colonia 70000, REPUBLIC OF URUGUAY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <vanugard.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
25, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 26, 2004.
On
October 26, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain name <vanugard.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
October 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 16, 2004 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@vanugard.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 23, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (Ret.) 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 <vanugard.com>
domain name is confusingly similar to Complainant’s VANGUARD mark.
2. Respondent does not have any rights or
legitimate interests in the <vanugard.com> domain name.
3. Respondent registered and used the <vanugard.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding.
Complainant is
in the business of providing financial investment and financial advisory
services.
Complainant owns
numerous trademark registrations with the United States Patent and Trademark
Office for the VANGUARD mark (Reg. No. 1,784,435 issued July 27, 1993), the
VANGUARD.COM mark (Reg. No. 2,573,723 issued May 28, 2002) and other various
VANGUARD marks.
Complainant has
used the VANGUARD mark continuously and extensively in commerce since at least
as early as 1974. Complainant manages a
portfolio of over $700 billion in assets and has approximately 17 million
institutional and individual shareholder accounts.
Additionally,
Complainant maintains a website at the <vanugard.com> domain name,
which provides financial services to its investors and to the public at
large. Complainant’s website was named
a “Forbes Favorite” in the 2001, 2002 and 2004 “Best of the Web” issues of
Forbes magazine, which is the highest ranking in the mutual fund family
category for investing websites. The
website also won top honors in Forbes’ 2000 “Best of the Web” issue.
Respondent
registered the disputed domain name <vanugard.com> on or about
September 19, 2003. Complainant became
aware of Respondent’s website in May 2004.
Users mistyping “VANUGARD” instead of “VANGUARD” would be directed to a
website containing an Internet search engine with links to third-party
financial service websites.
Additionally, Complainant discovered that at least ten pop-up advertisements
were generated upon accessing Respondent’s website. Complainant sent a letter to Respondent on May 18, 2004,
demanding immediate transfer of the <vanugard.com> domain
name. Upon Respondent’s failure to
respond, Complainant sent another letter on July 6, 2004. Respondent has failed to respond to either
letter.
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.
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.
Complainant has
established rights in the VANGUARD mark through registration and continuous use
of the mark in commerce since at least as early as 1974. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); 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 and have acquired secondary meaning”).
Respondent’s <vanugard.com>
domain name is confusingly similar to Complainant’s VANGUARD mark because
the domain name merely misspells the mark by transposing the letters “g” and
“u” in the word vanguard. The
intentional misspelling of a famous mark in a domain name does not create a
distinct mark, but is nevertheless confusingly similar to Complainant’s
mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w” or the omission of periods or other such
generic typos do not change respondent’s infringement on a core trademark held
by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat.
Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response in this proceeding. Therefore, Complainant’s submission has gone unopposed and the
arguments undisputed. In the absence of
a Response, the Panel accepts as true all reasonable allegations contained in
the Complaint unless clearly contradicted by the evidence. Further, because Respondent has failed to
submit a Response, Respondent has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the disputed
domain name. See Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by
not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 21, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant
argues that Respondent’s <vanugard.com> domain name is confusingly
similar to Complainant’s mark.
Additionally, Complainant contends that the domain name redirects users
to a website containing links to third party financial service providers as
well as numerous pop-up advertisements.
Since Respondent has commercially gained through use of a domain name
confusingly similar to Complainant’s mark, the Panel concludes that Respondent
has not used the domain name to make a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name
to redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee, did not evidence rights or legitimate in the domain name); see also
MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website).
Furthermore,
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.
See Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330
(WIPO June 7, 2000) (finding that fair use does not apply where the domain
names are misspellings of a Complainant’s mark); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
Nothing in the
record suggests, and Respondent has proffered no proof, that Respondent is
commonly known by the disputed domain name.
Therefore, in light of Respondent’s failure to Respond to the
Complainant, it can be established that Respondent has no rights or legitimate
interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
asserts that Respondent’s <vanugard.com> domain name is
confusingly similar to Complainant’s mark and is used for commercial gain. Respondent’s commercial use of a domain name
confusingly similar to Complainant’s mark is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding
that, if Respondent profits from its diversionary use of Complainant’s mark
when the domain name resolves to commercial websites and Respondent fails to
contest the Complaint, it may be concluded that Respondent is using the domain
name is bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where Respondent directed Internet users seeking Complainant’s site to
its own website for commercial gain).
By engaging in
typosquatting, Respondent has registered and used the <vanugard.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional
misspelling of word with intent to intercept and siphon off traffic from its
intended destination, by preying on Internauts who make common typing
errors. Typosquatting is inherently
parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the <zonelarm.com> domain name in bad
faith pursuant to Policy ¶ 4 (a)(iii) because the name was merely a
typosquatted version of Complainant’s ZONEALARM mark. “Typosquatting, itself is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii).”)
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 <vanugard.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
December 1, 2004
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