The Vanguard Group, Inc. v. damien green
Claim Number: FA1905001845398
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is damien green (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguardwealthadvisory.com>, registered with Google 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On May 29, 2019, Google LLC confirmed by e-mail to the Forum that the <vanguardwealthadvisory.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@vanguardwealthadvisory.com. Also on June 3, 2019, 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 June 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is an investment advisor with about $5.2 trillion in assets under management and is the world largest provider of mutual funds and second-largest provider of exchange-traded funds (“ETFs”). Complainant has rights in the VANGUARD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,784,435, registered July 27, 1993). See Compl. Ex. E. Respondent’s <vanguardwealthadvisory.com> domain name is confusingly similar to Complainant’s VANGUARD mark as Respondent adds the addition of generic terms “Wealth” and “Advisory” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services. Instead, the disputed domain is used to impersonate Complainant’s own website where it offers wealth advisory and other financial services.
iii) Respondent registered and used the disputed domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name by impersonating Complainant and gather personal information. Respondent also had actual knowledge in Complainant’s rights in the VANGUARD mark due to the extensive, global use and fame of Complainant’s mark which long predates disputed domain name.
B. Respondent
Respondent did not submit a response to this proceeding.
1. Respondent registered the <vanguardwealthadvisory.com> domain name on November 1, 2018.
2. Complainant has established rights in the VANGUARD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,784,435 registered July 27, 1993).
3. The disputed domain name’s resolving website shows Complainant’s VANGUARD mark and offers financial products similar to those of Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the VANGUARD mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). 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). Here, Complainant provides the Panel with a copy of its USPTO registration (e.g. Reg. No. 1,784,435, registered July 27, 1993). Therefore, the Panel finds that Complainant has rights in the VANGUARD mark per Policy ¶ 4(a)(i).
Complainant further argues that the disputed domain name is confusingly similar to Complainant’s VANGUARD mark as Respondent adds the addition of generic terms “Wealth” and “Advisory” along with the “.com” generic top-level domain (gTLD). Adding generic terms and a gTLD to a fully formed mark does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s VANGUARD mark per Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name. A respondent may lack rights or legitimate interests in a disputed domain name if said respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may also show that a respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies Respondent as “Damien Green,” and there is no evidence to suggest that Respondent was authorized to use the VANGUARD mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use. Instead, the disputed domain name is used in an attempt to impersonate Complainant’s own website in hopes that Internet users may believe that they are accessing Complainant’s legitimate website. Use of a domain name to impersonate Complainant while offering competing goods or services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). Here, Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving website that shows Complainant’s VANGUARD mark and offers for similar financial products. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and used the disputed domain name in bad faith by trying to impersonate Complainant and gather personal information. Use of a domain name to impersonate a complainant and procure sensitive information may demonstrate bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Additionally, Complainant argues Respondent attempts to obtain users’ personal information through the website. Id. The Panel recalls that Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving website that shows Complainant’s VANGUARD mark and offers for similar financial products. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual knowledge in Complainant’s mark due to the extensive, global use and fame of Complainant’s mark which long predates Respondent’s domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Complainant further argues that Respondent’s use of the disputed domain name to offer similar and competing services demonstrates actual knowledge of the VANGUARD mark. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s mark and engaged in bad faith when registered the disputed domain name per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardwealthadvisory.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 4, 2019
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