The Vanguard Group, Inc. v. Widmann, Siff & Company, Inc.
Claim Number: FA0605000716534
Complainant is The Vanguard Group, Inc. (“Complainant”), 100 Vanguard Blvd., Malvern, PA 19355. Respondent is Widmann, Siff & Company, Inc. (“Respondent”), 551 West Lancaster Avenue, Suite 304, Haverford, PA 19041-1419.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vanguardadvice.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.
On May 31, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <vanguardadvice.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 June 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 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@vanguardadvice.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 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <vanguardadvice.com> domain name is confusingly similar to Complainant’s VANGUARD mark.
2. Respondent does not have any rights or legitimate interests in the <vanguardadvice.com> domain name.
3. Respondent registered and used the <vanguardadvice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Vanguard Group, Inc., is a financial investment
and advisory company. Complainant holds
a registration with the United States Patent and Trademark Office (“USPTO”) for
its VANGUARD mark (Reg. No. 1,784,435 issued July 27, 1993) which it has used
since at least 1974. Complainant also
holds a USPTO registration for its VANGUARD.COM mark (Reg. No. 2,753,723 issued
May 28, 2002).
Respondent
registered the <vanguardadvice.com> domain name December
22, 1999. Respondent has not made any
use of the disputed domain name since registering it over six years ago. Additionally, the Respondent offered to sell
the disputed domain name for $10,000 to Complainant. Complainant declined and offered to buy the disputed domain name
for $175 instead, which Respondent declined.
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 federal mark registration
with the USPTO sufficiently establishes Complainant’s rights in the VANGUARD
mark. 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 Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Respondent’s <vanguardadvice.com> domain name is confusingly similar to Complainant’s VANGUARD mark pursuant to Policy ¶ 4(a)(i) as it uses the Complainant’s mark and adds the term “advice.” The Panel finds that the addition of this term is not enough to negate the confusing similarity between the Complainant’s mark and the disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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 Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <vanguardadvice.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s VANGUARD mark, and that Respondent is not associated with Complainant in any way. Respondent’s WHOIS information also does not suggest that Respondent is commonly known by the disputed domain name and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found that there were no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record shows that Respondent is not actively using the <vanguardadvice.com> domain name, and has not come forward with any demonstrable preparations to use the disputed domain name since registering it in 1999. In Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000), the panel found that the respondent had no rights or legitimate interests in the domain name where there was no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent was not commonly known by the domain name. See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). As such, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith by registering and using the disputed domain name. The Panel finds that Respondent has not made any use of the <vanguardadvice.com> domain name, since registering it in 1999. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); se also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Additionally, Respondent offered to sell the disputed domain
name to Complainant for $10,000 following Complainant’s request to transfer the
disputed domain name from Respondent to Complainant. The Complainant rejected this offer and instead made an offer
that it felt would compensate the out-of-pocket expenses of Respondent. Respondent refused such an offer. The Panel finds that Respondent’s offer to
sell the disputed domain name for a price clearly exceeding out-of-pocket
expenses constitutes bad faith under Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated
in communication with the complainant that it would be ready to sell the
<matmut.com> domain name registration for $10,000); see also World
Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(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).
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 <vanguardadvice.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 7, 2006
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