The Vanguard Group, Inc. v. George Kobiashvili
Claim Number: FA1910001868486
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is George Kobiashvili (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanguardge.com>, registered with Automattic Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2019; the Forum received payment on October 25, 2019.
On October 28, 2019, Automattic Inc. confirmed by e-mail to the Forum that the <vanguardge.com> domain name is registered with Automattic Inc. and that Respondent is the current registrant of the name. Automattic Inc. has verified that Respondent is bound by the Automattic Inc. 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 November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@vanguardge.com. Also on November 1, 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 November 25,2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, The Vanguard Group, Inc., is an investment advisor with about US$5.2 trillion in assets under management. Complainant has rights in the VANGUARD mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 1,784,435, registered Jul. 27, 1993).
2. Respondent’s <vanguardge.com>[i] is confusingly similar to Complainant’s mark as Respondent incorporates the entire VANGUARD mark, merely adding the letters “g” and “e” and appends the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <vanguardge.com> domain name. Respondent is not licensed or authorized to use Complainant’s VANGUARD mark and is not commonly known by the domain name.
4. Respondent is not using the <vanguardge.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to Respondent’s website that directly competes with Complainant’s business.
5. Respondent has registered and uses the <vanguardge.com> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain.
6. Additionally, Respondent used a privacy service to conceal its identity. Also, Respondent failed to respond to a cease-and-desist letter from Complainant.
7. Finally, Respondent had actual knowledge or constructive notice of Complainant’s VANGUARD mark prior to registering the <vanguardge.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VANGUARD mark. Respondent’s domain name is confusingly similar to Complainant’s VANGUARD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vanguardge.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the VANGUARD mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant has provided copies of the USPTO registrations for the VANGUARD mark (e.g., Reg. No. 1,784,435, registered Jul. 27, 1993). Therefore, Complainant has rights in the VANGUARD mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <vanguardge.com> domain name is confusingly similar to the VANGUARD mark as it contains the mark in its entirety, and merely adds the letters “g” and “e” along with the “.com” gTLD. Misspelling of a mark, either by adding or removing letters, and adding a gTLD does not sufficiently mitigate any confusing similarity between a domain name incorporating that mark and mark itself under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees that the <vanguardge.com> domain name is confusingly similar to Complainant’s VANGUARD mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vanguardge.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <vanguardge.com> domain name as Respondent is not authorized to use Complainant’s VANGUARD mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name, especially where a privacy service has been engaged. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). A privacy service was used by Respondent, but was lifted as a result of this proceeding. The WHOIS information of record identifies Respondent as “George Kobiashvili”. Furthermore, there is no evidence in the record to suggest Respondent was authorized to use Complainant’s VANGUARD mark. The Panel therefore holds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <vanguardge.com> domain name.
In addition, Complainant argues that Respondent uses the <vanguardge.com> domain name to redirect users to Respondent’s competing website. Use of a domain name incorporating the mark of another to offer competing products and services does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant has provided evidence that Respondent references Complainant’s mark at the top of the resolving webpage and appears to be offering investment and financial services which are in direct competition with Complainant and its business. Respondent’s use of the <vanguardge.com> domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <vanguardge.com> domain name in bad faith. Specifically, Complainant contends Respondent is disrupting Complainant’s business and diverting users to the disputed domain name to offer competing goods and services. Using a domain name incorporating the mark of another to mislead users and redirect them to a competing website indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from complainant’s website to respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant contends that Respondent uses the <vanguardge.com> domain name to divert potential customers of Complainant’s business to a webpage that references Complainant’s mark at the top of the webpage and appears to be offering investment and financial services which are in direct competition with Complainant and its business. The Panel agrees. Therefore, the Panel may find that Respondent registered and uses the <vanguardge.com> domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s VANGUARD mark. Actual knowledge may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant argues that due to the fame of the VANGUARD mark and Respondent’s use of the <vanguardge.com> domain name to offer the exact services as to which Complainant offers, Respondent must have had actual knowledge. The Panel agrees.
The Panel finds Complainant has satisfied 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 <vanguardge.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 30, 2019
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