The Vanguard Group, Inc. v. Thomas Green
Claim Number: FA2105001943776
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Laura A. Alos of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is Thomas Green (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> (“the Domain Names”), registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2021. The Forum received payment on May 3, 2021.
On May 5, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names are registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2021 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@vanguardinvestoruk.com, postmaster@vanguardinvestor-uk.com. Also on May 6, 2021, 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 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Founded in 1975, Complainant is one of the world’s largest investment companies. Complainant has rights in the VANGUARD mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names are confusingly similar to Complainant’s VANGUARD mark.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the VANGUARD mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has used them to pursue competing use.
Respondent registered the Domain Names in bad faith with knowledge of Complainant’s rights in the VANGUARD mark and uses them in bad faith to attract internet traffic for commercial gain and to disrupt Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the VANGUARD mark through its registration with the USPTO (e.g. Reg. No. 1,784,435, registered July 27, 1993). The Panel finds Respondent’s <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names to be confusingly similar to Complainant’s VANGUARD mark since they wholly incorporate that mark and add the descriptive word “investor” and the geographic term “uk”, in one case without a hyphen and in the other with a hyphen. These additions do nothing to distinguish the Domain Names from Complainant’s mark. The inconsequential gTLD “.com” may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant has shown that its VANGUARD mark had become internationally famous many years before the Domain Names were registered. Respondent registered both the <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names on March 2, 2021. They resolve to websites that copy the appearance and content of Complainant’s website at “www.vanguardinvestor.co.uk”, which Complainant says infringe upon Complainant’s trademark and copyrights.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel accepts that use of a domain name to impersonate and create a false connection with a trademark owner is not a legitimate use of a domain name nor a bona fide offering of goods and services. In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances set out in relation to the second element satisfy the Panel that Respondent registered the <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names primarily for the purpose of disrupting the business of Complainant while fully aware of Complainant’s famous VANGUARD mark. Further, Respondent is using the Domain Names intentionally to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the services on his websites.
Accordingly, the Panel finds that Respondent registered and is using the Domain Names in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardinvestoruk.com> and <vanguardinvestor-uk.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 3, 2021
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