DECISION

 

The Vanguard Group, Inc. v. Privacy Department / IceNetworks Ltd.

Claim Number: FA2401002080484

PARTIES

Complainant is The Vanguard Group, Inc. ("Complainant"), Pennsylvania, USA. Respondent is Privacy Department / IceNetworks Ltd. ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <vanguardireland.com> and <vanguardireland-newclient.com>, registered with Internet Domain Service BS Corp.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 23, 2024.

 

On January 24, 2024, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <vanguardireland.com> and <vanguardireland-newclient.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 January 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2024 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@vanguardireland.com, postmaster@vanguardireland-newclient.com. Also on January 25, 2024, 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 February 15, 2024, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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 December 31, 2022, Complainant provides products or services to over 50 million investors (domiciled in over 170 countries). As of October 31, 2023, Complainant held over approximately $7.6 trillion in assets under management. As of October 31, 2023, Complainant operates 419 mutual funds and ETFs worldwide—203 U.S. funds, and 216 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 operates a subsidiary called Vanguard Group (Ireland) Limited in Dublin, Ireland. Vanguard Ireland promotes its services to investors through a website located at <ie.vanguard>. Complainant has rights in the VANGUARD mark through numerous trademark registrations, including in the United States in 1993; the mark is also registered in Ireland.

 

Complainant alleges that the disputed domain names are confusingly similar to its VANGUARD mark as they include the entire mark and merely add the geographic term "Ireland", or that term and a hyphen and the generic/descriptive term "new client", together with the "com" generic top-level domain ("gTLD").

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent's use of the mark. Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain names. Rather, Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Specifically, in the fraudulent emails, Respondent uses Complainant's VANGUARD trademark and references to Complainant's Dublin office and <ie.vanguard> website falsely to suggest that Respondent is affiliated with Complainant and Vanguard Ireland. The emails attach a prospectus that promotes a bogus fixed income investment product—a category of product that Vanguard Ireland prominently features on its website. The prospectus also features Complainant's VANGUARD trademarks and Vanguard Ireland contact information and promises a "guaranteed return" on investment. The emails ask prospective customers to complete "applications" to open new accounts. Finally, the emails provide telephone and email contacts for Respondent, and language in the emails suggests that Respondent has (or has offered) telephone or other correspondence with prospective investors beyond these emails.

 

Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a fraudulent email phishing scheme, thereby attempting to pass itself off as Complainant. Respondent had actual knowledge of Complainant's mark and Complainant's rights therein as shown by its use of the mark. Complainant used a privacy service.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 and 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent is using the disputed domain names in furtherance of a fraudulent email phishing scheme; the signature block of the fraudulent emails displays Complainant's mark, logo, and actual physical address.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain names incorporate Complainant's VANGUARD mark in its entirety, and merely adds the geographic term "Ireland", or that term and a hyphen and the generic/descriptive term "new client", together with the "com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or geographic terms and/or hyphens 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 Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information for the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). Here, the WHOIS information shows Respondent is known as "Privacy Department / IceNetworks Ltd.". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Specifically, in the fraudulent emails, Respondent falsely suggests that it is affiliated with Complainant; the emails attach a prospectus that promotes a bogus fixed income investment product; they ask prospective customers to complete "applications" to open new accounts. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) ("The Panel agrees that the respondent's apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). Therefore, the Panel finds that Respondent's use of the disputed domain names constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for his 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 noted above, Respondent uses the disputed domain names to attempt to pass itself off as Complainant in furtherance of a fraudulent email phishing scheme. This behavior is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Yahoo! Inc. v. Kalra, FA 1650447 (Forum Dec. 31, 2015); Qatalyst Partners LP v. Devimore, FA 1393436 (Forum Jul. 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.); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Consequently, the Panel finds that Respondent registered and is using the disputed domain names in bad faith in per Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain names with actual knowledge of Complainant's mark: the signature block of the fraudulent phishing emails displays Complainant's mark, logo, and actual physical address. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vanguardireland.com> and <vanguardireland-newclient.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: February 15, 2024