The Vanguard Group Inc. v. Digi Real Estate Foundation
Claim Number: FA0605000701259
Complainant is The Vanguard Group Inc. (“Complainant”), 100 Vanguard Blvd., V-26, Malvern, PA 19355. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <vangardmutualfunds.com> and <vamguard.com>, registered with Enom, Inc., <vanguardcom.com> registered with Allindomains.com, and <vangaurdfunds.com>, registered with Coolhosting.ca.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2006.
On May 5, 2006, Enom, Inc., confirmed by e-mail to the National Arbitration Forum that the <vangardmutualfunds.com> and <vamguard.com> domain names are registered with Enom, Inc., and that Respondent is the current registrant of the names. Enom, Inc., has verified that Respondent is bound by the Enom, 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 May 5, 2006, Allindomains.com confirmed by e-mail to the National Arbitration Forum that the <vanguardcom.com> domain name is registered with Allindomains.com, and that Respondent is the current registrant of the name. Allindomains.com has verified that Respondent is bound by the Allindomains.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May 5, 2006, Coolhosting.ca confirmed by e-mail to the National Arbitration Forum that the <vangaurdfunds.com> domain name is registered with Coolhosting.ca and that Respondent is the current registrant of the names. Coolhosting.ca has verified that Respondent is bound by the Coolhosting.ca registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 30, 2006 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@vangardmutualfunds.com, postmaster@vamguard.com, postmaster@vanguardcom.com, and postmaster@vangaurdfunds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names are confusingly similar to Complainant’s VANGUARD mark.
2. Respondent does not have any rights or legitimate interests in the <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names.
3. Respondent registered and used the <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Vanguard Group Inc., is one of the leading financial investment companies in the United States, and has engaged in the business of providing financial investment and financial advisory services using the VANGUARD mark since at least as early as 1974. Complainant also holds a federal trademark registration for its VANGUARD mark with the United States Patent and Trademark Office (“USPTO”). Complainant first registered the VANGUARD mark with the USPTO on July 27, 1993 (Reg. No. 1,784,435). Additionally, Complainant holds trademark registrations for the VANGUARD mark in several countries throughout the world, including Australia, Benelux, Canada, Hong Kong, Ireland, Japan, New Zealand, Singapore, Switzerland, and the United Kingdom. Furthermore, Complainant owns the registration for the <vanguard.com> domain name, through which it offers financial services and information with respect to its financial services business.
Respondent registered the disputed domain names on the following dates: <vangardmutualfunds.com> on April 29, 2005; <vamguard.com> on September 27, 2004; <vanguardcom.com> on June 30, 2005; and <vangaurdfunds.com> on October 2, 2005. Each of Respondent’s disputed domain names resolve to websites providing Internet search engines with links to third-party websites offering financial services in direct competition with Complainant. Furthermore, each of the websites located at the disputed domain names feature at least one pop-up advertisement.
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’s trademark registrations
for the VANGUARD mark with the USPTO and throughout the world establish
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v.
Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has
established rights in the AIG mark through registration of the mark with
several trademark authorities throughout the world, including the Untied States
Patent and Trademark office (‘USPTO’). . . .”); see also 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.”).
Moreover, the Panel finds that Respondent’s <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names are confusingly similar to Complainant’s VANGUARD mark under Policy ¶ 4(a)(i). The disputed domain names consist of common misspellings of Complainant’s VANGUARD mark, with the addition of the generic top-level domain “.com.” Additionally, Respondent’s <vangardmutualfunds.com> and <vangaurdfunds.com> domain names feature the addition of terms that describe Complainant’s financial services business. In addition to the aforementioned alterations, Respondent’s <vanguardcom.com> also features the addition of the generic term “com” to Complainant’s mark. Consequently, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s VANGUARD mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); cf. Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts in its Complaint that Respondent lacks rights or legitimate interests in the disputed domain names. Initially, Complainant bears the burden of establishing that Respondent lacks rights and legitimate interests in the disputed domain names. Nevertheless, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also 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). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests with regard to the <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names pursuant to Policy ¶ 4(c).
Upon examining the evidence on record, the Panel finds that
Respondent is not commonly known by any of the disputed domain names. Nothing in the evidence suggests that
Respondent was authorized to register the disputed domain names featuring
Complainant’s VANGUARD mark, either as a licensee or otherwise. Moreover, according to the WHOIS information
for the disputed domain names, Respondent conducts its business under the name
“Digi Real Estate Foundation.” Thus,
the Panel finds that Respondent has not established rights or legitimate
interests in connection with any of the disputed domain names pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the
respondent was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”).
Furthermore, each of Respondent’s disputed domain names resolve to a website providing an Internet search engine that features links to third-party websites of Complainant’s competitors, as well as pop-up advertisements. As a result, the evidence on record suggests that Respondent registered the <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names with the intention of diverting Internet users seeking Complainant’s financial services to Respondent’s websites featuring links to Complainant’s competitors. Such use by Respondent constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names); see also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <vangardmutualfunds.com>, <vamguard.com>,
<vanguardcom.com> and <vangaurdfunds.com> domain
names resolve to search engine websites featuring links to the websites of
Complainant’s competitors.
Consequently, the Panel finds that Respondent registered and used the
disputed domain names to capitalize on the likelihood of confusion between
Respondent’s confusingly similar domain names and Complainant’s VANGUARD
mark. Therefore, the Panel finds that
Respondent registered the disputed domain names in bad faith under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of Respondent’s
website.”); see also State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
Moreover, the confusing similarity between Respondent’s <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names and Complainant’s VANGUARD mark, as well as Respondent’s use of the disputed domain names to offer links to websites of Complainant’s competitors, suggest that Respondent has registered and used the disputed domain names for the purpose of disrupting the business of a competitor under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <vangardmutualfunds.com>, <vamguard.com>, <vanguardcom.com> and <vangaurdfunds.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 16, 2006
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