DECISION

 

The Vanguard Group, Inc. v. cha feng liang / Urraco Male

Claim Number: FA2502002141041

 

PARTIES

Complainant is The Vanguard Group, Inc. ("Complainant"), represented by Jacob Bishop of The Vanguard Group, Inc., Pennsylviania, USA. Respondent is cha feng liang / Urraco Male ("Respondent"), Cambodia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <vanguardnow.vip> and <itavanguard.com>, registered with Gname.com Pte. Ltd. and Amazon Registrar, Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 20, 2025; Forum received payment on February 20, 2025.

 

On Feb 20, 2025; Feb 24, 2025, Gname.com Pte. Ltd.; Amazon Registrar, Inc. confirmed by e-mail to Forum that the <vanguardnow.vip> and <itavanguard.com> domain names are registered with Gname.com Pte. Ltd. and Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. and Amazon Registrar, Inc. have verified that Respondent is bound by the Gname.com Pte. Ltd. and Amazon Registrar, Inc. registration agreements 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 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2025 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@vanguardnow.vip and postmaster@itavanguard.com. Also on February 25, 2025, 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 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS        

Paragraph 3(c) of 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."  A preliminary procedural issue arises because the Registrar disclosed the names of more than one domain name holder.

 

In spite of Rule 3(c) the Panel has a residual discretion to allow one action against the disputed domain names if it can reasonably be inferred that the names are effectively controlled by one person or entity, which is operating under two aliases.

 

Complainant provides evidence that the disputed domain names are "used in connection with an investment scam in which Respondents are falsely claiming to be a legitimate Italian subsidiary of Complainant … .

Specifically, they use VANGUARDNOW.VIP to host the scam's main website, and they use ITAVANGUARD.COM to send correspondence to investors." 

 

The Panel notes this evidence but cautions that the enquiry is not one of whether the named respondents might be working in unison but whether they are aliases for the one person or entity.  In that regard the Panel observes that the domain names were registered at different times in January 2025, with different Registrars and different contact information. However, the evidence - taken as a whole – is of a relatively sophisticated scheme to defraud potential investors involving not just a website and email, but also a bogus social media presence. In these circumstances the Panel finds just enough evidence to infer that the disputed domain names are controlled and used by a single person or entity having no connection with the persons named as the holders.

 

Accordingly, the Panel determines under Rule 3 that these proceedings can continue in respect of both disputed domain names (see, for example, MP Mine Operations LLC v. Jonathan Pstein / Henry Brunson / Derrick Akins, FA 2112689 (Forum Sept. 23, 2024)) and the domain name holders are referred to together herein as "Respondent".

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in VANGUARD. Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain names are confusingly similar to the trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and has used the disputed domain names in bad faith.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant provides financial services under the trademark, VANGUARD;

2.       Complainant owns United States Patent & Trademark Office ("USPTO") Reg. No. 1,784,435 issued July 27, 1993, for VANGUARD;

3.       the disputed domain names were registered in January 2025 using a privacy service to shield the name of Respondent;

4.       the domain names have been used to impersonate Complainant; and

5.       there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark VANGUARD with the USPTO, a national trademark authority.

 

The Panel finds that the disputed domain names are confusingly similar to the trademark. In particular, they pair VANGUARD with non-distinctive additional matter in the form of gTLDs and the country name abbreviation "ita" (Italy) or the generic word, "now" (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) holding that: "A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."; Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) holding: "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.").

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use 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)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The names of the domain name owners do not carry any suggestion that Respondent might be commonly known by either of the domain names. There is no evidence that Respondent has any trademark rights of its own.  Complainant provides evidence that the disputed domain names have been used as part of an elaborate fraud in which Respondent poses as the Italian subsidiary of Complainant promising high returns to investors in what is a hoax scheme.

 

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names (see, for example, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).").

 

Accordingly, the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.

 

The Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the 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 respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.

 

The Panel finds that the scenarios set out above are less obviously appropriate than the simple findings of registration in bad faith and use in bad faith. The Panel finds registration in bad faith since there is no evidence of any bona fide reason Respondent need use the trademark. Moreover, the use to which the domain names has been put is clearly in bad faith.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

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 <vanguardnow.vip> and <itavanguard.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G Lyons, Panelist

Dated: March 21, 2025