The Vanguard Group, Inc. v. Henry Roberts / hank rober / Peter Zombori
Claim Number: FA1709001748408
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Alexis Arena of Flaster/Greenberg, P.C., Pennsylvania, USA. Respondent is Henry Roberts / hank rober / Peter Zombori (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, <vanguardfinancialgroupllc.com>, and <vanguardbrokeragellc.com>, registered with Tucows Domains Inc.; Register.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; Network Solutions, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2017; the Forum received payment on September 11, 2017.
On September 12, 2017; Sep 13, 2017, Tucows Domains Inc.; Register.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; Network Solutions, LLC confirmed by e-mail to the Forum that the <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, <vanguardfinancialgroupllc.com>, and <vanguardbrokeragellc.com> domain names are registered with Tucows Domains Inc.; Register.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; Network Solutions, LLC and that Respondent is the current registrant of the names. Tucows Domains Inc.; Register.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; Network Solutions, LLC has verified that Respondent is bound by the Tucows Domains Inc.; Register.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; Network Solutions, 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 September 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2017 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@vanguardfinancialdirect.com, postmaster@vanguardfinancialdirectla.com, postmaster@vanguardfinancialgroupllc.com, postmaster@vanguardbrokeragellc.com. Also on September 15, 2017, 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 October 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent used the collection of domain names in a sophisticated scam to collect personal information from Internet users who mistook Respondent for Complainant.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the listed entities are jointly controlled by all named Respondents. The Panel here determines all the domain names except one are commonly owned by the Respondents Henry Roberts and Hank Rober. The Panel dismisses the complaint in relation to Respondent Peter Zombori and <vanguardbrokeragellc.com>.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the nation’s leading financial services. Complainant holds multiple versions of the VANGUARD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., VANGUARD— Reg. No. 3,847,010, registered Sep. 14, 2010; VANGUARD BROKERAGE SERVICES—Reg. No. 2,227,967, registered Mar. 14, 2009).Respondent’s <vanguardfinancialdirect.com>,<vanguardfinancialdirectla.com>, <vanguardfinancialgroupllc.com>, are nearly identical to the VANGUARD and VANGUARD BROKERAGE SERVICES marks because they incorporate the marks in their entirety, add the generic terms “direct,” “group,” and “llc,” geographical term “la,” and attach the “.com” generic top-level-domain (“gTLD”).
Respondent has no right or legitimate interest in <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, and <vanguardfinancialgroupllc.com>. Respondent makes no bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s sites are currently inactive and do not reflect any demonstrable preparations for active use.
Respondent’s <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, and <vanguardfinancialgroupllc.com>, were registered and used in bad faith. Respondent intentionally attempted to attract users by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement. Respondent attempted to pass itself off as an employee of Complainant in order to deceive and defraud customers. Respondent attempts to obtain users’ personal information through a phishing scheme further indicates bad faith. Respondent subsequently failed to sufficiently respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Vanguard Group, Inc. of Malvern, PA, USA. Complainant is the owner of domestic registrations for the marks VANGUARD and related marks constituting the family of VANGUARD marks. Complainant has used the marks continuously since at least as early as 2009 in connection with its provision of goods and services in the financial and brokerage services industry.
Respondent is Henry Roberts / hank rober of West Hollywood, CA, USA. Respondents registrar’s address is unlisted. The Panel notes that <vanguardfinancialgroupllc.com> was registered on or about April 21, 2017, <vanguardfinancialdirect.com> and <vanguardfinancialdirectla.com> were registered on or about April 24, 2017.
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 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 (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.”).
Complainant asserts rights in the VANGUARD and VANGUARD BROKERAGE SERVICES marks based upon registration with the USPTO. USPTO registrations are sufficient to show rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant failed to provide certificates of trademark registration but provided registration numbers and dates. The Panel here finds that Complainant has rights in the VANGUARD and VANGUARD BROKERAGE SERVICES marks per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, and <vanguardfinancialgroupllc.com>, are confusingly similar to Complainant’s VANGUARD and VANGUARD BROKERAGE SERVICES marks. Complainant argues the addition of generic terms or abbreviations to a mark and attaching a gTLD are insufficient means to differentiate the mark and disputed domain names. 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.). Here, Respondent added generic terms “financial,” “direct,” and “group,” the geographic term “la” (Los Angeles), and an “llc” (LLC) abbreviation. Since Respondent incorporated the entire VANGUARD and a substantial part of the VANGUARD BROKERAGE SERVICES marks, the disputed domain names are confusingly similar to the marks. The Panel here finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant notes that Respondent's websites are currently inactive, and Respondent’s failure to make demonstrable preparations to use the disputed domain names in connection with a legitimate, active website supports the finding that Respondent lacks rights to and legitimate interests in the domain names. Complainant additionally asserts Respondent makes no bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant claims Respondent’s sites currently resolve into inactive sites. Complainant argues Respondent’s sites were used to deceive consumers trying to find Complainant. Complainant also argues Respondent’s initial use to pass off as Complainant and subsequent failure to use shows lack of rights or legitimate interests in the disputed domain names. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Respondent used disputed domain names to solicit users searching for Complainant’s financial services. Respondent corresponded with users under the name “Henry Roberts,” attempting to pass off as Complainant’s employee. Subsequently, all of Respondent’s disputed domain names now resolve into inactive sites. The Panel here finds that Complainant has satisfied Policy ¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts Respondent registered and used <vanguardfinancialdirect.com>, and <vanguardfinancialdirectla.com>, <vanguardfinancialgroupllc.com>, in bad faith. Complainant argues Respondent intentionally attempted to confuse users as to source, sponsorship, affiliation, or endorsement. Complainant further argues Respondents used the VANGUARD and VANGUARD BROKERAGE SERVICES marks to deceive users thinking it was owned by Complainant. Use of a disputed domain name to intentionally confuse users as to the source of a domain name for commercial gain represents bad faith per Policy ¶ 4(b)(iv). See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Here, Respondent corresponded with users seeking Complainant’s services under the name “Henry Robert.” Respondent held itself out to be an employee of Complainant in order to obtain user information for fraudulent means. The Panel here finds that Complainant has satisfied Policy ¶ 4(b)(iv).
Complainant asserts Respondent use of <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, and <vanguardfinancialgroupllc.com>, was to obtain personal information through a phishing scheme. Complainant argues Respondent’s phishing scheme was done in bad faith. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). In this case, Respondent made itself out to be an employee for Complainant named “Henry Roberts.” Respondent sent letters using Complainant’s letterhead and mark. Respondent attempted to obtain consumer information under the guise of being an employee of Complainant. The California Department of Business Oversight issued Consumer Alerts warning users of Respondent’s phishing scheme. Complainant argues Respondent failed to sufficiently reply to Complainants cease and desist letters, but instead responded with profanity. The Panel here finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardfinancialdirect.com>, <vanguardfinancialdirectla.com>, <vanguardfinancialgroupllc.com>, domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 24, 2017
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