The Vanguard Group, Inc. v. VanguardGroup, Vanguard Group / VanguardGroup, Group Vanguard
Claim Number: FA2204001993055
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Pamela Crocker of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is VanguardGroup, Vanguard Group / VanguardGroup, Group Vanguard (“Respondent”), Dominica.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguardgroup.world> and <vanguardgroup.cc>, registered with NameSilo, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2022; the Forum received payment on April 20, 2022.
On April 20, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <vanguardgroup.world> and <vanguardgroup.cc> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@vanguardgroup.world, postmaster@vanguardgroup.cc. Also on April 22, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control as the websites displayed at the disputed domains names are identical and the addresses of the registrants of both domain names are the same. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on both contested domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it is major international investment company. Founded in 1975, Complainant is one of the world’s largest investment companies, with more than 30,000,000 investors in about 170 countries and total assets under management of approximately $8.0 trillion as of March 22, 2022, with 410 funds worldwide (203 funds in the U.S. and 207 funds in global markets). Complainant’s products and services are offered in numerous locations worldwide, namely, in the U.S. and additional locations in the Americas including Canada, Mexico, and South America; in the Asia-Pacific region including Australia, China, and Japan; and in Europe including the U.K., France, and Germany, among other countries. Complainant has received numerous awards and accolades including spots on Money’s “best of” lists for 20 years in a row, with Vanguard being awarded 20 of the 50 ETF spots and 23 of the 50 mutual fund spots in 2020; Morningstar’s first Exemplary Stewardship Award for being “an asset manager that has shown an unwavering focus on serving the best interest of investors” in May 2019; and Lipper Fund Awards that honor mutual funds and firms for the most suitable risk-adjusted performance for 22 VANGUARD funds in 2021. Complainant has rights in the VANGUARD mark through its registration in the United States in 1993.
Complainant alleges that the disputed domain names are identical or confusingly similar to its VANGUARD mark as they incorporate the mark in its entirety and merely add the generic term “group”, and either the generic top level domain (“gTLD”) “.world”, or the country code top-level domain (“ccTLD”) “.cc”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use it VANGUARD mark. Respondent does not use the disputed domain names for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, the website at <vanguardgroup.world> purports to offer competing services, and the domain name <vanguardgroup.cc> is redirected to <vanguardgroup.world>. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to unfairly disrupt Complainant’s business by misleading Internet users with an impression of association with Complainant. Respondent uses the disputed domain names to offer competing services. Respondent registered the disputed domain names with actual knowledge of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark VANGUARD dating back to 1993 and uses it to provide financial and investment services around the world.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain names to resolve to a web site that purports to offer services that compete with 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”).
The disputed domain names incorporates Complainant’s VANGUARD mark in its entirety, merely adding the generic/descriptive term “group” and either the “.world“ gTLD “.world” or the “.cc” ccTLD. Such changes are not sufficient to differentiate a disputed domain name from the mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in the VANGUARD mark. Respondent is not commonly known by the disputed domain names: WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where the WHOIS is related to the disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name); see also La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). Here, the WHOIS information for the disputed domain names lists the registrant as “VanguardGroup, Vanguard Group / VanguardGroup, Group Vanguard” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests that Respondent is authorized to use the VANGUARD mark. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names to purport to offer services that compete with those of Complainant. Past panels have found that use of disputed domain name to offer competing services does not constitute a bona fide offering of services or a legitimate non-commercial use under Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Therefore the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent use the disputed domain names to purport to offer services in direct competition with Complainant. Past panels have found that using a domain name to offer goods or services that are in competition with complainant demonstrates bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Therefore the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanguardgroup.world> and <vanguardgroup.cc> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 19, 2022
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