The Vanguard Group, Inc. v. John Ezzell
Claim Number: FA2202001983128
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by The Vanguard Group, Inc., Pennsylvania, USA. Respondent is John Ezzell (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlasvanguard.com>, registered with Squarespace Domains LLC.
PANEL
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 February 3, 2022. The Forum received payment on February 3, 2022.
On February 4, 2022, Squarespace Domains LLC confirmed by e-mail to the Forum that the <atlasvanguard.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 February 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2022 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@atlasvanguard.com. Also on February 9, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2022, 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 name 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 registrations with the United States Patent and Trademark Office (“USPTO”). Under its VANGUARD mark, Complainant offers various finance-related services, including mutual fund investments, investment brokerage, investment management, financial retirement plan consulting, and the financial administration of retirement plans. The VANGUARD mark has long been internationally famous.
Respondent’s <atlasvanguard.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <atlasvanguard.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its VANGUARD mark in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes himself off as Complainant and offers competing investing services on the domain name’s resolving website.
Respondent registered the <atlasvanguard.com> domain name in bad faith with actual knowledge of Complainant’s rights in the VANGUARD mark and uses it in bad faith to disrupt Complainant’s business for commercial gain by passing himself off as Complainant and offering competing goods and services on the domain name’s resolving website.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but emailed the Forum as follows:
“I don’t understand this complaint. The name of my scorp [sic] is Atlas Vanguard Holdings, Inc that I used to incorporate my personal investment business where I trade equity options. I made sure nothing was trademarked and I am not pretending to be the Vanguard Group. This complaint is not going to hold up anywhere. Please stop harassing me.”
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 formal 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 registrations with the USPTO (e.g. Reg. No. 1,784,435, registered Jul. 27, 1993). The Panel finds Respondent’s <atlasvanguard.com> domain name to be confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the word “atlas”, which does not distinguish the domain name from the mark, along with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(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.
The <atlasvanguard.com> domain name was registered on January 26, 2021, long after Complainant’s VANGUARD mark became internationally famous. It resolves to a website headed “Atlas Vanguard Holdings, Inc.”, which advertises investment services of the kind offered by Complainant under its VANGUARD mark.
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 name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <atlasvanguard.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Although Respondent’s informal communication with the Forum does not constitute a formal Response, the Panel has taken it into account. The Panel is not satisfied that Respondent was unaware of Complainant’s famous VANGUARD mark when registering the <atlasvanguard.com> domain name and is not persuaded that the use of the domain name for a website promoting investment services to Internet users constitutes a personal investment business where Respondent trades equity options. There is no evidence that Respondent has been commonly known by the domain name nor any evidence of the existence of a business called Atlas Vanguard Holdings, Inc. when the domain name was registered.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
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 the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous VANGUARD mark when Respondent registered the <atlasvanguard.com> domain name and did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
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 <atlasvanguard.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 4, 2022
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