The Vanguard Group, Inc. v. Larry Bird
Claim Number: FA2005001895014
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Larry Bird (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguard-mail.com> and <vanguardinbox.com>, registered with Enom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2020; the Forum received payment on May 5, 2020.
On May 6, 2020, Enom, Inc. confirmed by e-mail to the Forum that the <vanguard-mail.com> and <vanguardinbox.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2020 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@vanguard-mail.com, postmaster@vanguardinbox.com. Also on May 12, 2020, 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 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, The Vanguard Group, Inc., is an investment company with investors in almost 170 countries.
Complainant asserts rights in the VANGUARD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <vanguard-mail.com> and <vanguardinbox.com> domain names are confusingly similar to Complainant’s VANGUARD mark as they each contain Complainant’s mark in its entirety and merely add the terms “mail” or “inbox” along with a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <vanguard-mail.com> and <vanguardinbox.com> domain names. Respondent is not commonly known by the at-issue domain names and is not authorized or permitted to use Complainant’s VANGUARD mark. Additionally, Respondent fails to use the domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the at-issue domain names for websites and uses the domain names only to pass off as Complainant through email in furtherance of a phishing scheme.
Respondent registered and uses the <vanguard-mail.com> and <vanguardinbox.com> domain names in bad faith. Respondent’s registration of multiple confusingly similar domain names establishes a pattern of bad faith registration. Additionally, Respondent uses the disputed domain names to disrupt Complainant’s business by using the disputed domain names to pass off as Complainant in a fraudulent scheme for financial gain. Further, Respondent’s non-use of the domain names evidences bad faith. Finally, Respondent had knowledge of Complainant’s rights in the VANGUARD mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the VANGUARD mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in VANGUARD.
Respondent uses the at-issue domain names to pass itself off as Complainant through email in furtherance of a phishing scheme and financial fraud.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its VANGUARD mark establishes Complainant’s rights in such mark for the purposes of 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)).
The at-issue domain names contain Complainant’s VANGUARD trademark followed by either a hyphen and the term “mail,” or by the term “inbox.” Each domain name is concluded with the top level domain name “.com.” The differences between Respondent’s <vanguard-mail.com> and <vanguardinbox.com> domain names and Complainant’s trademark are insufficient to distinguish either domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <vanguard-mail.com> and <vanguardinbox.com> domain names are each confusingly similar to Complainant’s VANGUARD trademark. 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.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. 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 either <vanguard-mail.com> or <vanguardinbox.com>.
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Larry Bird” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the either of the domain names. The Panel therefore concludes that Respondent is not commonly known by either of the <vanguard-mail.com> or <vanguardinbox.com> domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <vanguard-mail.com> domain name to further a phishing scheme where Respondent impersonates Complainant in email originating from the domain name in an effort to fraudulently attempt to extract funds from Complainant’s customers. In particular, Respondent, pretending to be one of Complainant’s employees, falsely claims to handle stock trades and attempts to divert customer payment(s) for such fake stock purchases to its own bank account. Moreover, Respondent’s “trade confirmation” statement prominently displays Complainant’s VANGUARD mark and name and Vanguard’s Tall Ship Logo. Although it is inactive, it is reasonable to assume that Respondent registered <vanguardinbox.com> with similar intent as to what it had planned for <vanguard-mail.com>. Respondent’s use of the domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the at-issue domain names to send fraudulent emails purportedly from agents of complainant to be 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)); see also, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the at-issue domain names to send fraudulent emails purportedly from agents of complainant to be 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));
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <vanguard-mail.com> and <vanguardinbox.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent registered multiple domain names confusingly similar to Complainant’s VANGUARD trademark thereby suggesting a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii) and bad faith in the instant case. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Second, Respondent uses the at-issue confusingly similar domain names to confound internet users and/or with the intent to confound users in the future into believing the domain names are affiliated with, or sponsored by, Complainant ‑when they are not. Respondent’s use of the confusingly similar domain names to create the false impression of affiliation with Complainant is disruptive to Complainant’s business and shows Respondent’s bad faith registration and use of <vanguard-mail.com> and <vanguardinbox.com> per Policy ¶¶ 4(b)(iii) and (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Next, Respondent’s use of the <vanguard-mail.com> domain name in an email based phishing scheme as discussed elsewhere herein also indicates Respondent’s bad faith regarding the registration and use of said domain name. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”).
Further, Respondent holds the <vanguardinbox.com> passively. The domain name addresses a parking page. Failure to actively use the <vanguardinbox.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Finally, Respondent registered <vanguard-mail.com> and <vanguardinbox.com> knowing that Complainant had trademark rights in the VANGUARD mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s registration of multiple domain names containing Complainant’s trademark, as well as from Respondent’s use of the <vanguard-mail.com> and <vanguardinbox.com> domain names to impersonate Complainant now and in the future as discussed above. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark rights further indicates that Respondent registered and used the <vanguard-mail.com> and <vanguardinbox.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguard-mail.com> and <vanguardinbox.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 4, 2020
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