DECISION

 

The Vanguard Group, Inc. v. Muzzammil Ehsan / George Kobiashvili

Claim Number: FA2403002087403

 

PARTIES

Complainant is The Vanguard Group, Inc. ("Complainant"), represented by Jacob Bishop of The Vanguard Group, Inc., Pennsylvania, USA. Respondent is Muzzammil Ehsan / George Kobiashvili ("Respondent"), International.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <vanguard-united.com> and <vanguardhedgefund.com>, registered with Domain.com, LLC and GoDaddy.com, 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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 7, 2024; Forum received payment on March 7, 2024.

 

On March 7, 2024, Domain.com, LLC and GoDaddy.com, LLC confirmed by e-mail to Forum that the <vanguard-united.com> and <vanguardhedgefund.com> domain names are registered with Domain.com, LLC and GoDaddy.com, LLC and that Respondents are the current registrant of the names. Domain.com, LLC and GoDaddy.com, LLC have verified that Respondent is bound by the Domain.com, LLC and GoDaddy.com, LLC registration agreements and have 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 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2024, by which Respondents 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@vanguard-united.com and postmaster@vanguardhedgefund.com.

 

Also on March 11, 2024, the Written Notice of the Complaint, notifying Respondents 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 Respondents, Forum transmitted to the Parties a Notification of Respondent Default.

 

On April 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Complainant has filed a single Complaint in respect of the two disputed domain names, arguing that Respondents appear to be associated with the same business enterprise, alleging that disputed domain name <vanguard-united.com>  is held on behalf of an Indian company Vanguard United Investment Consulting, which Complainant alleges is a subsidiary of Vanguard Hedge Fund, a Georgian hedge fund, a Georgian company which is represented by the second Respondent who is the registrant of the disputed domain name <vanguardhedgefund.com>.

 

Complainant alleges that both of the disputed domain names appear to be used in connection with this business enterprise.

 

The disputed domain name <vanguard-united.com> was registered on March 30, 2023, the registrant is the first named Respondent;

the disputed domain name <vanguardhedgefund.com> was registered on March 12, 2023, the registrant is the second named Respondent.

 

Complainant refers to screen captures of the website to which the disputed domain name <vanguard-united.com> resolves and a media article dated May 8 (year unstated), which are exhibited in annexes to the Complaint.

 

The exhibited website to which the disputed domain name <vanguard-united.com> resolves, purports to promote Vanguard United Investment Consulting, an Indian company purporting to offer a wide range of financial services that compete with Complainant.

 

The disputed domain name <vanguardhedgefund.com> does not currently resolve to an active website, but is registered in the name of the second named Respondent who is reported in the media article and in social media posts to be the leader, "CEO AND President Economist" at an entity enticed "Vanguard Hedge Fund."

 

Complainant submits that the exhibited screen captures show that Vanguard Hedge and Vanguard United Investment Consulting are related entities." 

 

Both claim to have exactly $2.6 billion in assets under management. The exhibited copy of the media article states that VHF expanded its operations to India and plans to invest "640 crore in Indian companies in FY 2023-2024." 

 

Each of the disputed domain names, and each of the entities Vanguard Hedge and Vanguard United Investment Consulting hve the word "Vanguard" as their dominant element, and it seems to be more than a coincidence that both Respondents claim to represent companies with exactly $2.6 billion in assets under management.

 

In putting forward its case, Complainant further refers to two screen captures of LinkedIn profiles of Respondents to support its allegation that Respondents represent two corporations in the same group. In his profile, the former purport to provide business consulting services in India with 75 connections. The latter purports to be the CIO and President Economist of the Vanguard Hedge Fund with 222 connections.

 

However, the exhibited media article states that "Vanguard Hedge Fund, (is) a subsidiary of the renowned financial consultants Vanguard United Investment Consulting". This is the opposite relationship to that pleaded by Complainant, but it each case the important point is that they are related entitles.

 

This Panel therefore finds that Complainant has met the threshold to allow this Complaint to proceed in respect of both of the disputed domain names, and this Panel accepts that the Respondents are acting in concert on behalf of a single enterprise in registering and using the disputed domain names.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts that it 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. Headquartered in Malvern, Pennsylvania, it 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.

 

Complainant asserts that as of December 31, 2022, Complainant provides products or services to over 50 million investors domiciled in over 170 countries; and as of October 31, 2023, Complainant held over approximately $7.6 trillion in assets under management (AUM).

 

Complainant alleges that the disputed domain names are each confusingly similar to the VANGUARD mark in which it has rights, as they each pair the word VANGUARD with a generic term, namely "united" and "hedge fund" respectively in combination with the generic Top-Level Domain ("gTLD") extension <.com.>.

 

It is submitted that panels established under the Policy have consistently held that domain names comprised of a registered trademark paired with generic terms are confusingly similar to the registered trademark. See Bloomberg Finance L.P. v. Bloobberg United c/o Essam Mahmoud, FA 1203727 (Forum July 22, 2008) (finding <bloombergunited.com> confusingly similar to Complainant's BLOOMBERG mark).

It is next alleged that Respondents have no rights or legitimate interest in the disputed domain names, arguing that Respondents do not use the disputed domain names in connection with any bona fide offering of goods and services, or in connection with a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).

 

Complainant asserts that it has not authorized, licensed, or otherwise permitted Respondents to use its VANGUARD mark, or any variation thereof, and as such, Respondents cannot demonstrate a legitimate interest in either of the disputed domain names under Policy ¶ 4(c)(ii). See, e.g., Vanguard v. Kobiashvili, FA 1868486 (Forum Nov. 30, 2019) (Panel determined respondent had no right or legitimate interest in vanguardge.com domain name when WHOIS record identified them as "George Kobiashvili" and the record contained no evidence that Complainant authorized them to use the VANGUARD mark).

 

Complainant submits that the disputed domain name <vanguardhedgefund.com> does not currently resolve to an active website and refers to a screen capture of the website to which the disputed domain name resolves, a media article dated May 8 (year unstated), posted on the Internet, which are exhibited in the annexes to the Complaint.

 

The exhibited website to which the disputed domain name <vanguard-united.com>, purports to promote Vanguard United Investment Consulting ("VUIC"), an Indian company purporting to offer a wide range of financial services.

 

The exhibited media article names the second named Respondent and states that his Vanguard Hedge Fund is expanding to India.

 

Complainant argues that the exhibited documents illustrate that Respondents are using the disputed domain names to offer products and services that compete with Complainant's products and services.

 

It is submitted that panels established under the Policy have consistently found that use of a domain name at issue for a competing product or service does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See, e.g., Vanguard v. Lotana, FA 2010308 (Forum Sept. 29, 2022) (finding that use of vanguardia-limited.com for a cryptocurrency trading platform that competes with Vanguard's business "does not give rise to rights or legitimate interests under the Policy").

 

Arguing that the Respondents of the disputed domain names are acting in concert to take advantage of the significant goodwill and reputation that Complainant has established in the VANGUARD mark, Complainant alleges that the disputed domain names have each been registered and are being used in bad faith.

 

Complainant further argues that Respondents obviously registered and use the disputed domain names with actual knowledge of Complainant's VANGUARD mark, because Respondent George Kobiashvili was notified of Complainant's rights in the VANGUARD mark in November 2019, when he lost the UDRP action Complainant lodged against his registration of the domain name <vanguardge.com>. See The Vanguard Group, Inc. v. George Kobiashvili, FA 1868486 (Forum Nov. 30, 2019).

 

Complainant submits that panels established under the Policy have generally concluded that a respondent's registration of an infringing domain name with actual knowledge of a complainant's trademark rights constitutes bad faith under Policy ¶ 4(b)(iii). See, e.g., Morgan Stanley v. Krisp, FA 1977197 (Forum Feb. 3, 2022) (ms-fixed-income.com registered in bad faith with actual knowledge of MORGAN STANLEY mark when used by respondent to "pass itself off as complainant for financial gain").

 

Complainant alleges that Respondents selected and registered the domain names to lead Internet users to believe that Respondent's businesses are affiliated with Complainant, adding that panels have typically determined that registration and use of a domain name under these circumstances constitutes bad faith. See, e.g., Vanguard v. Lotana/Bizzletech.net, supra (Panel concluded that vanguardia-limited.com was registered and used in bad faith when used in connection with a "misleading and likely fraudulent website that promotes competing services").

 

Further, Complainant argues that Respondents' registration of the disputed domain names that infringe upon Complainant's trademark following their loss in the <vanguardge.com> proceeding demonstrates a clear disregard for Complainant's trademark rights and, accordingly, bad faith.

 

It is contended that Respondents use of the disputed domain names unfairly disrupt Complainant's business by (a) advertising a competitive financial investment product, (b) unfairly competing with Complainant for Internet traffic, (c) unfairly competing with Complainant for Internet traffic, including diversion of Complainant's customers from Complainant's URL <www.vanguard.com> and (d) interfering with Complainant's ability to control the use of its registered VANGUARD mark, all of which constitutes bad faith under Policy ¶ 4(b)(iii). See, e.g., ChexSystems v. Nekouie, FA 1513536 (Forum Sept. 23, 2013) ("Prior panels have held that a respondent's use of a domain name to provide competing services diverts users away from the complainant's business disrupts the complainant's business in bad faith under Policy ¶ 4(b)(iii).").

 

Complainant adds that Respondents use the disputed domain names to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant and its VANGUARD mark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain names and the associated website, which constitutes bad faith under Policy ¶ 4(b)(iv).

 

Complainant adds that panels established under the Policy have also typically found bad faith when a domain name at issue is used to promote products or services that compete with the trademark owner's goods or services. See, e.g., Vanguard v. Kobiashvili, supra (Panel concluded that registration and use of vanguardge.com to divert potential customers to a website that references Complainant's mark and offers competitive products/services was done in bad faith).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a provider of financial services, in relation to which it uses the VANGUARD mark and is the owner of large portfolio of trademark and service mark registrations in jurisdictions across the world, including:

·       United States registered service mark VANGUARD, registration number 1,784,435, registered on the Principal Register on July 27, 1993 for services in international class 36;

·       United States registered trademark and service mark VANGUARD, registration number 3,847,010, registered on the Principal Register on September 14, 2010 for goods and services in international classes 9, 16, 35, 36 and 41;

·       United States registered trademark and service mark VANGUARD, registration number 5,917,626, registered on the Principal Register on November 26, 2019 for services in international classes 42 and 45.

 

The disputed domain name <vanguard-united.com> was registered on March 30, 2023, and resolves to a website that purports to promote an Indian company purporting to offer a wide range of financing services, that compete with those offered by Complainant.

 

The disputed domain name <vanguardhedgefund.com> was registered on March 12, 2023, and is inactive.

 

There is no information available about Respondents except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain names for the proposes of this proceeding.

 

The registrants of the disputed domain names, each availed of a privacy service to conceal their identities on the published WhoIs. The Registrar has confirmed that the first named Respondent is the registrant of the disputed domain name <vanguard-united.com> and the second named Respondent is the registrant of the disputed domain name <vanguardhedgefund.com>.

 

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 Respondents' 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

Complainant has provided uncontested evidence of its rights in the VANGUARD mark established by its ownership of the portfolio of trademark and service mark registrations described above and the extensive goodwill that it has established by use of the mark in its international financial services business providing products or services to over 50 million investors domiciled in over 170 countries and holding approximately $7.6 trillion in assets under management (AUM).

 

The disputed domain name <vanguard-united.com> consists of Complainant's VANGUARD mark, a hyphen, the generic word "united" and the gTLD extension <.com>.

 

The disputed domain name <vanguardhedgefund.com> consists of Complainant's VANGUARD mark, the generic word "hedgefund" and the gTLD extension <.com>.

 

Both of the disputed domain names contain Complainant's VANGUARD mark its entirety.

In neither case does any of the additional elements, either alone or in combination prevent a finding that each of the disputed domain names are confusingly similar to Complainants' mark.

 

Neither does the gTLD extension <.com> prevent a finding of that the disputed domain name is identical to Complainants' mark because in the circumstances of this proceeding, in each case it would be considered by Internet users as a necessary technical requirement for an Internet domain name.

 

This Panel finds therefore that in each case the disputed domain name is confusingly similar to the VANGUARD mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The disputed domain name <vanguard-united.com> was registered on March 30, 2023, and the disputed domain name <vanguardhedgefund.com> was registered on March 12, 2023, long after Complainant established its registered trademark and service mark rights and built a goodwill and reputation for the VANGUARD mark with trillions of dollars under management.

 

It is a matter of record that the second named Respondent was aware of Complainant's name, mark and goodwill when the disputed domain names were registered because he had been the unsuccessful respondent in Vanguard v. Kobiashvili, supra, which was decided on November 30, 2019.

 

On the balance of probabilities, given the similarity of the two disputed domain names, it is clear that the disputed domain names were registered by Respondents in concert, rather than by any third party.

 

On the balance of probabilities therefore each of the disputed domain names was chosen and registered in bad faith to take predatory advantage of Complainants' reputation and goodwill in the VANGUARD mark.

 

The record shows that the disputed domain name <vanguard-united.com> is being used to promote a business that purports to compete with Complainant. This Panel finds that such deceptive use of the VANGUARD mark within each of the disputed domain names must be intended to deceive and confuse consumers and businesses and constitutes use in bad faith for the purposes of the Policy.

 

The disputed domain name <vanguardhedgefund.com> does not resolve to any active website, and such passive holding also constitutes use in bad faith in the circumstances described above.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) in respect of each of them.

 

DECISION

Having established all three elements required under the ICANN Policy, in respect of each of the disputed domain names, the Panel concludes that relief shall be GRANTED.

 

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

 

 

___________________________________________________

 

James Bridgeman SC, Panelist

Dated: April 4, 2024