WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Vanguard Group, Inc v. Venta

Case No. D2001-1335

The Complainant is The Vanguard Group, Inc, a corporation organized and existing under the laws of the State of Pennsylvania, United States of America, having its place of business at 100 Vanguard Boulevard, Malvern, PA 19355, United States of America. It is represented by Karol A. Kepchar and Chad T. O’Hara of Akin, Gump, Strauss, Hauer & Feld, LLP, Virginia, United States of America.

The Respondent is Venta, Leonard Bogucki, al. Focha 1, Krakow, Poland 30-111.

The disputed domain name is <vanguardfunds.com>. The Registrar of the disputed domain name is eNom, Inc, 16771 NE 80^th Street, Suite 100, Redmond, Washington 98052, United States of America.

On November 7, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On November 16, 2001, the Center sent a request for Registrar Verification to eNom, Inc. On November 19, 2001 the Registrar responded to the Center’s request verifying:

- That the Complaint had been sent to the Registrar

- That the disputed domain name was registered with eNom, Inc

- That the Respondent was the current registrant of the disputed domain name

- The Respondent’s contact details

- That the Policy applied to the disputed domain name

- That the current status of the disputed domain name was "lock".

On December 3, 2001, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.

No Response was filed, and on December 28, 2001, the Center sent the Respondent a Notification of Respondent Default.

On January 25, 2002, the WIPO Center notified the parties that an Administrative Panel had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainant is a mutual fund company that provides financial investment and financial advisory services. It also provides finance and investment-related products and services.

The Complainant claims that it currently manages a portfolio of over US$550 billion in assets and is one of the leading investment companies in the United States of America. It also claims to be "the largest no-load mutual fund company in the world".

The Complainant states that it has used the trademark VANGUARD since at least 1974 in relation to a variety of financial products and services. The trademark VANGUARD was registered in the United States of America in July 1993. In addition, the Complainant is the registered owner in the United States of America of the following trademarks in respect of fund investment services:

- VANGUARD FUND EXPRESS

- VANGUARD TAX-MANAGED FUNDS

- VANGUARD HORIZON FUNDS

- VANGUARD ADMIRAL FUNDS

The Complainant also operates a website featuring financial investment and financial advisory services under the domain name <vanguard.com>. The Complainant’s website provides access to financial services to its investors, and financial and business information to the general public. The Complainant states that its website contains a section called "Vanguard Funds", which provides investment information on over 100 of the Complainant’s mutual funds. The Complainant also states that its website <vanguard.com> won top honors in Forbes’ 2000 "Best of the Web" issue. It claims that the website generates considerable visitor traffic.

The Complainant states that it recently discovered that internet users typing in the disputed domain name <vanguardfunds.com> were being diverted to the website <lowermybills.com>. The website <lowermybills.com> offered services such as debt relief, credit cards and vehicle insurance.

The Complainant obtained the contact information for the owner of the disputed domain name from the eNom, Inc Whois database. On October 5, 2001 it sent a letter to the Respondent, putting it on notice of the Complainant’s rights and demanding that the Respondent transfer the disputed domain name to the Complainant. On October 22, 2001 the Complainant sent a further letter to the Respondent. The Respondent did not respond to either letter.

The Complainant claims that the disputed domain name incorporates the Complainant’s registered trademark VANGUARD. It claims that the generic term "funds" does not operate to indicate source, and therefore the disputed domain name is confusingly similar to the Complainant’s registered trademarks.

The Complainant asserts that the Respondent has no legitimate interest in or business purpose for the disputed domain name, nor does it have any trademark rights in the trademark VANGUARD. The Complainant claims that the Respondent’s only use of the disputed domain name is to misdirect internet users to the <lowermybills.com> website. The Complainant asserts that the <lowermybills.com> website has no affiliation or association with the Complainant or the Complainant’s mutual funds.

The Complainant states that the disputed domain name was registered and used in bad faith for the following reasons:

(a) The Respondent had constructive notice that the trademark VANGUARD and the other trademarks relied on by the Complainant were registered trademarks;

(b) By registering the disputed domain name, the Respondent precluded the Complainant from using its trade mark in the corresponding domain name;

(c) The Complainant has not agreed or consented to the Respondent’s use or registration of a domain name containing its trademark VANGUARD. The Respondent does not have an authority or licence to use the trademark VANGUARD;

(d) The Respondent is not using the disputed domain name in a non-commercial "fair-use" manner;

(e) The Respondent has failed to respond to the Complainant’s attempts to resolve the dispute, and at the date of Complaint, continued to use the disputed domain name. The Respondent failed to respond to the Complainant’s correspondence;

(f) The Respondent’s use of the domain name weighs in favour of finding bad faith, as does the Respondent’s refusal to transfer or cancel the domain name in the face of the Complainant’s clear objection to its registration and use;

(g) Internet users who access the disputed domain name in an attempt to reach the Complainant’s website may incorrectly believe that the Respondent’s website is affiliated, sponsored or somehow connected with the Complainant;

(h) The only conceivable purpose of the Respondent’s use of the disputed domain name is to divert traffic intended for the Complainant.

No Response was received from the Respondent.

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

The Complainant has provided evidence of registrations of its trademarks VANGUARD, VANGUARD FUND EXPRESS, VANGUARD TAX-MANAGED FUNDS, VANGUARD HORIZON FUNDS and VANGUARD ADMIRAL FUNDS.

While all of the Complainant’s marks are registered solely in the United States of America, the Panel considers that, in light of its business activities, the Complainant is likely to be well-known in many countries. Additionally, the Panel considers that due to the unusual nature of the mark, it is improbable that the Respondent would have conceived of the disputed domain name independently without knowledge of the Complainant and the Complainant’s activities.

The Panel accepts the Complainant’s contentions that the addition of the generic term "funds" does not operate as a distinguishing feature. The dominant and memorable part of the disputed domain name is the Complainant’s trademark VANGUARD. If anything, the likelihood of confusion is increased by the fact that the disputed domain name contains both the Complainant’s trademark VANGUARD and the word "funds", being the industry in which the Complainant operates.

Additionally, a number of the Complainant’s trademarks contain the word "fund" or "funds". In these circumstances, the Panel considers that the addition of the word "funds" serves only to increase the likelihood of confusion.

Accordingly, the Panel finds that the domain name <vanguardfunds.com> is confusingly similar to the Complainant’s said registered trademarks.

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents’ rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Panel finds that none of the conditions outlined in (i) to (iii) above have been made out by the Respondent. The Respondent has not provided any evidence on which the Panel could base such a finding. Nor does any evidence from the Complainant give rise to a suggestion that such a finding should be made. The Panel finds it appropriate to draw an adverse inference from the Respondent’s failure to respond to the Complaint. (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848.)

Overall, the Panel can find no evidence to demonstrate that the Respondent has a legitimate right or interest in the disputed domain name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site 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 your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent’s actions demonstrate that it registered and used the disputed domain name in bad faith in terms of paragraph 4(b)(iv) of the Policy.

At the time of the decision, the website corresponding to the disputed domain name was not active. However, it is clear from the Complainant’s evidence, including a print-out of the website’s homepage, that the disputed domain name was used in the manner alleged by the Complainant. The website homepage indicates that the Respondent was in fact offering the financial services described by the Complainant on the website <lowermybills.com>.

In the absence of any Response from the Respondent, the Panel considers that the clear inference to be drawn is that the Respondent registered the domain name for the purpose of attracting internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Certainly, on the face of the print-out of the website there appears to be no reason for the Respondent to have selected the domain name <vanguardfunds.com>, other than to trade off the Complainant’s reputation.

The Panel therefore finds the domain name has been registered and is being used in bad faith.

For the forgoing reasons, the Panel decides that:

(a) the disputed domain name is confusingly similar to the trademarks VANGUARD, VANGUARD FUND EXPRESS, VANGUARD TAX-MANAGED FUNDS, VANGUARD HORIZON FUNDS and VANGUARD ADMIRAL FUNDS, in which the Complainant has rights; and

(b) the Respondent has no right or legitimate interest in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <vanguardfunds.com> be transferred to the Complainant.