The Vanguard Group, Inc. v. Insight Partners
Claim Number: FA2302002033898
Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Jacob Bishop of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is Insight Partners (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vanguardesp.top>, <vanguardeok.top>, <vanguardekc.top>, <vanguardex.top>, <vanguardeap.xyz>, <vanguardeds.top>, <vanguardert.top>, <vanguardeii.top>, <vanguardetp.top>, <vanguardeab.top>, <vanguardecz.top>, <vanguardeup.top>, <vanguardeqp.top>, and <vanguardeoo.top>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 Forum electronically on February 28, 2023; Forum received payment on February 28, 2023.
On March 2, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <vanguardesp.top>, <vanguardeok.top>, <vanguardekc.top>, <vanguardex.top>, <vanguardeap.xyz>, <vanguardeds.top>, <vanguardert.top>, <vanguardeii.top>, <vanguardetp.top>, <vanguardeab.top>, <vanguardecz.top>, <vanguardeup.top>, <vanguardeqp.top>, and <vanguardeoo.top> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 March 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2023 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@vanguardesp.top, postmaster@vanguardeok.top, postmaster@vanguardekc.top, postmaster@vanguardex.top, postmaster@vanguardeap.xyz, postmaster@vanguardeds.top, postmaster@vanguardert.top, postmaster@vanguardeii.top, postmaster@vanguardetp.top, postmaster@vanguardeab.top, postmaster@vanguardecz.top, postmaster@vanguardeup.top, postmaster@vanguardeqp.top, postmaster@vanguardeoo.top. Also on March 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it is one of the world’s largest financial services firms. Since 1975, Complainant has used the VANGUARD trademark in connection with a wide range of financial products and services, including mutual fund and exchange traded fund (ETF) products, retail investment brokerage services, 401(k) and retirement plan products and services, and investment advisory services and software platforms. Complainant is headquartered in Malvern, Pennsylvania, and operates four other U.S. offices. Complainant operates additional offices in the United Kingdom, the Americas (Canada, Mexico), Europe (Ireland, Germany, Italy, France, Switzerland, and the Netherlands), Australia, and China. It previously operated offices in Hong Kong, Japan, and Singapore. As of April 30, 2022, Complainant provides products or services to over 30 million investors (domiciled in over 170 countries) and has approximately $7.5 trillion in assets under management. As of June 30, 2022, Complainant operates 411 mutual funds and ETFs worldwide—204 U.S. funds, and 207 funds focused on global markets. Complainant is the largest provider of mutual funds in the world, and the second largest provider of mutual funds in the world. It uses the VANGUARD trademark in connection with four of the five largest domestic mutual funds (measured by assets under management). Complainant also operates five of the ten largest domestic ETFs under the VANGUARD trademark (measured by market capitalization). Complainant has rights in the VANGUARD mark through numerous trademark registrations, including in the United States in 1993.
Complainant alleges that the disputed domain names are confusingly similar to its VANGUARD mark as they include the entire mark and merely add random letters and a generic top-level domain (“gTLD”). 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 licensed or authorized to use Complainant’s VANGUARD mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the resolving websites purports to offer services that compete with those of Complainant, but in reality are a scam intended to trick unsuspecting visitors into sending cryptocurrencies and traditional currencies to Respondent. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith by offering competing services. Respondent attracts Internet users by causing confusion as to the source or affiliation of the disputed domain names. Respondent had actual knowledge of Complainant’s rights in the VANGUARD mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark VANGUARD and uses it to provide a variety of financial services around the world.
Complainant’s rights in its mark date back to at least 1993.
The disputed domain names were registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving websites purport 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 each incorporate Complainant’s mark in its entirety, merely adding random letters and a generic top-level domain (“gTLDs”). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its VANGUARD mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (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). Here, the WHOIS information for the disputed domain names list the registrant as “Insight Partners”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant alleges that the disputed domain names are used in furtherance of a scam, but it provides no evidence to support that allegation. Thus the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and will not further discuss it.
The resolving websites purport to offer services that compete with those of Complainant. Previous Panels have found that use of a disputed domain name to offer goods or services in competition with those of a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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.”). Thus the Panel finds that Respondent fails to use the disputed domain names to make 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, the resolving websites purport to offer services that compete with those of Complainant. Panels have held that registration and use of a disputed domain name to divert Internet traffic to a competing website offering the same or similar goods or services demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum December 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, FA 1409001579141 (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.”). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii) and/or 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 <vanguardesp.top>, <vanguardeok.top>, <vanguardekc.top>, <vanguardex.top>, <vanguardeap.xyz>, <vanguardeds.top>, <vanguardert.top>, <vanguardeii.top>, <vanguardetp.top>, <vanguardeab.top>, <vanguardecz.top>, <vanguardeup.top>, <vanguardeqp.top>, and <vanguardeoo.top> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 30, 2023
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