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Generic Top Level Domain Name (gTLD) Decisions |
The Vanguard Group, Inc. v. IQ Management
Corporation
Claim Number: FA0409000328127
PARTIES
Complainant
is The Vanguard Group, Inc. (“Complainant”),
represented by Robyn Y. Ettricks, 100 Vanguard Blvd., V-26, Malvern, PA 19355. Respondent is IQ Management Corporation (“Respondent”), Marage Plaza, Marage
Road, P.O. Box 1879, Belize City, na 1, Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <vangard.com>,
registered with Tucows 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.
Louis
E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 15, 2004; the Forum
received a hard copy of the
Complaint on September 16, 2004.
On
September 15, 2004, Tucows Inc. confirmed by e-mail to the Forum that the
domain name <vangard.com> is
registered with Tucows Inc. and that the Respondent is the current registrant
of the name. Tucows Inc. has verified
that Respondent is bound by the Tucows Inc. registration agreement and has
thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
September 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 12, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing
contacts, and to postmaster@vangard.com by e-mail.
An
untimely Response was received and determined to be incomplete on October 14,
2004. In answer thereto, Complainant timely filed
additional materials which
were received by the Forum on October 15, 2004.
On October 18, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Louis E. Condon
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes the following
assertions:
1. Respondent’s <vangard.com> domain name is confusingly
similar to
Complainant’s VANGUARD mark.
2. Respondent does not have any rights or
legitimate interests in the
<vangard.com> domain name.
3.
Respondent
registered and used the <vangard.com>
domain
name in bad faith.
B. Respondent
Respondent
failed to submit a timely Response in this proceeding. Since Respondent did not offer any justification or
excuse, nor obtain an extension to submit his Response, the Panel shall issue
its decision as in
a default case.
C. Additional Submissions
On
October 15, 2004, Complainant filed a reply to Respondent’s Response asking
that the untimely filing be rejected and Respondent
deemed to have defaulted.
Additionally, this document further expanded on Complainant’s position that
Respondent had acted in bad
faith. These arguments were considered by the Panel
and influenced the Panel’s decision.
FINDINGS
Complainant is and has for many years been engaged
in providing financial investment and financial advisory services, and finance
and investment‑related products and services ancillary thereto, and has
built a large business in connection therewith. Complainant currently manages more than $700 billion in
assets. Complainant is one of the
leading investment companies in the United States and is the largest no‑load
mutual fund company in
the world. In
fact, Complainant has approximately 17 million institutional and individual
shareholder accounts.
Complainant has used since at least as early as
1974 and is currently using VANGUARD as a mark and as a component of marks for
a variety
of financial products and services.
The VANGUARD mark is registered on the
Principal Register in the United States Patent and Trademark Office for “fund
investment services”
as Registration No. 1,784,435 issued July 27, 1993. Complainant
is also the owner of U.S. Registration No. 2,573,723 for the VANGUARD.COM mark
for “financial
services, namely, for the provision of financial and investment information by
means of a global computer network.” In addition to its United States trademark
registrations, Complainant also owns international trademark registrations for
the mark
VANGUARD in connection with funds management and investment services
in Australia, Benelux, Canada, the European Community, Hong
Kong, Ireland,
Japan, New Zealand, Singapore, Switzerland, and the United Kingdom.
For many years, Complainant has maintained and
continues to maintain and operate a website featuring financial investment and
financial
advisory services at the domain address of <vanguard.com>. Complainant’s website provides financial
services to its institutional and individual investors, in addition to
financial information
to the non-investor public at large. The <vanguard.com> website won top
honors in Forbes’ 2000 “Best of the Web” issue and was named a “Forbes
Favorite,” the highest
ranking in the mutual fund family category for investing
websites in its 2001, 2002 and 2004 “Best of the Web” issues. Accordingly, with over 17 million
institutional and individual shareholder accounts, the <vanguard.com>
website generates a
tremendous amount of visitor traffic.
Respondent registered the disputed domain name <vangard.com> on August 1,
2002. As the result of a typographical error, Complainant learned of
Respondent’s registration of the domain name in
October, 2002. An exchange of
correspondence ensued in which Complainant asked Respondent to transfer the
domain name to Complainant.
Respondent refused. Complainant periodically
monitored the website and determined that the domain name eventually resolved
to an
inactive webpage. On January 19, 2004, Complainant learned from a
concerned shareholder that users who typed in <vangard.com> were directed
to Respondent’s general Internet search engine. When users closed the website a
pop-up window appeared containing highly
offensive and extremely graphic images
decrying the war in Iraq. A week later the anti-war pop-up was replaced by
other pop-up advertisements. Complainant
complained to Respondent once more. In mid March 2004, Respondent altered its
website at <vangard.com> so that it no
longer resolved to Respondent’s general Internet search engine but to a page
titled “Auctions@Vangard,” which it currently
does.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Procedural issues
Respondent
failed to submit its Response by the deadline set forth in accordance with
ICANN Rule 5(a). Moreover, Respondent did not
submit a hard copy version of the
Response. Under ICANN Rules the Panel may either choose to accept or decline to
accept Respondent’s
Response in deciding the case. Ignoring or missing a
deadline without an excuse or justification is not a minor or insignificant
infraction to be overlooked in the procedural process. To rule otherwise would
make reasonable time limits meaningless.
In view of Respondent’s being in default due to its
failure to timely submit a Response, the Panel shall decide this administrative
proceeding on the basis of Complainant’s undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant
asserts that it established rights in the VANGUARD mark through registration
with the U.S. Patent and Trademark Office
(“USPTO”) on July 27, 1993 (Reg. No.
1,784,435). See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Furthermore,
Complainant contends that Respondent’s <vangard.com> domain name
is confusingly similar to Complainant’s VANGUARD mark because the domain name
merely misspells the mark by deleting the
letter “u” from the mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark); see
also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain
name does not significantly change the overall impression of the mark).
In
addition, the mere addition of the generic top-level domain “.com” is
insufficient to distinguish the domain name from Complainant’s
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds that Policy paragraph 4(a)(i) has been
satisfied.
Complainant
argues that Respondent’s <vangard.com> domain name is confusingly
similar to Complainant’s mark and in the past resolved to a website that
exposed Internet users to commercial
pop-up advertisements. Furthermore, Complainant asserts that the
domain name currently resolves to a website that provides links to a commercial
auction
website. Since Respondent has
commercially gained through use of the domain name the Panel may conclude that
Respondent has not used the domain name
to make a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant
to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that
Respondent’s use of the disputed domain name to redirect Internet users
to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral
fee, did not evidence rights
or legitimate interests in the domain name); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website).
Moreover,
Complainant contends that Respondent is not commonly known by the <vangard.com>
domain name and therefore Respondent lacks rights and legitimate interests
in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Furthermore,
Respondent has engaged in typosquatting by registering a domain name that takes
advantage of inadvertent errors made
by Internet users who attempt to access
Complainant online, the Panel may conclude that Respondent lacks rights and
legitimate interests
in the domain name.
See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding
that fair use does not apply where the domain names are misspellings of
Complainant's mark);
see also Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of
redirecting consumers against their will to another site, does not
qualify as a
bona fide offering of goods or services, whatever may be the goods or services
offered at that site.”).
The Panel finds that Policy paragraph 4(a)(ii) has been
satisfied.
Complainant
asserts that Respondent’s <vangard.com> domain name is confusingly
similar to Complainant’s mark and is used for commercial gain. Respondent’s
commercial use of a domain
name confusingly similar to Complainant’s mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits from its
diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain).
By
engaging in typosquatting, Respondent has registered and used the <vangard.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Oct. 15, 2003) (finding that Respondent registered and used the
<zonelarm.com> domain name in bad
faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting,
itself
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii).")
The Panel finds
that Policy paragraph 4(a)(iii) has been satisfied.
DECISION
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED..
Accordingly, it is Ordered that the <vangard.com>
domain name be transferred from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 28, 2004
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