national arbitration forum

DECISION

The Vanguard Group Inc. v. Alvaro Collazo

Claim Number:  FA0410000349074

PARTIES

Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Robyn Y. Ettricks, P.O. Box 2600 V-26, Valley Forge, PA 19482-2600.  Respondent is Alvaro Collazo, Manuel Oribe 2028, Tarariras, Colonia 70000, REPUBLIC OF URUGUAY  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vanugard.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2004.

On October 26, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the domain name <vanugard.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 October 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@vanugard.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <vanugard.com> domain name is confusingly similar to Complainant’s VANGUARD mark.

2. Respondent does not have any rights or legitimate interests in the <vanugard.com> domain name.

3. Respondent registered and used the <vanugard.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is in the business of providing financial investment and financial advisory services. 

Complainant owns numerous trademark registrations with the United States Patent and Trademark Office for the VANGUARD mark (Reg. No. 1,784,435 issued July 27, 1993), the VANGUARD.COM mark (Reg. No. 2,573,723 issued May 28, 2002) and other various VANGUARD marks. 

Complainant has used the VANGUARD mark continuously and extensively in commerce since at least as early as 1974.  Complainant manages a portfolio of over $700 billion in assets and has approximately 17 million institutional and individual shareholder accounts.

Additionally, Complainant maintains a website at the <vanugard.com> domain name, which provides financial services to its investors and to the public at large.  Complainant’s website was named a “Forbes Favorite” in the 2001, 2002 and 2004 “Best of the Web” issues of Forbes magazine, which is the highest ranking in the mutual fund family category for investing websites.  The website also won top honors in Forbes’ 2000 “Best of the Web” issue.

Respondent registered the disputed domain name <vanugard.com> on or about September 19, 2003.  Complainant became aware of Respondent’s website in May 2004.  Users mistyping “VANUGARD” instead of “VANGUARD” would be directed to a website containing an Internet search engine with links to third-party financial service websites.  Additionally, Complainant discovered that at least ten pop-up advertisements were generated upon accessing Respondent’s website.  Complainant sent a letter to Respondent on May 18, 2004, demanding immediate transfer of the <vanugard.com> domain name.  Upon Respondent’s failure to respond, Complainant sent another letter on July 6, 2004.  Respondent has failed to respond to either letter.

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the VANGUARD mark through registration and continuous use of the mark in commerce since at least as early as 1974.  See 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.); see also 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”). 

Respondent’s <vanugard.com> domain name is confusingly similar to Complainant’s VANGUARD mark because the domain name merely misspells the mark by transposing the letters “g” and “u” in the word vanguard.  The intentional misspelling of a famous mark in a domain name does not create a distinct mark, but is nevertheless confusingly similar to Complainant’s mark.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Therefore, Complainant’s submission has gone unopposed and the arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence.  Further, because Respondent has failed to submit a Response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 21, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Complainant argues that Respondent’s <vanugard.com> domain name is confusingly similar to Complainant’s mark.  Additionally, Complainant contends that the domain name redirects users to a website containing links to third party financial service providers as well as numerous pop-up advertisements.  Since Respondent has commercially gained through use of a domain name confusingly similar to Complainant’s mark, the Panel concludes 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 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).

Furthermore, where a 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 concludes that Respondent lacks rights and legitimate interests in the domain name.  See Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of a 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.”).

Nothing in the record suggests, and Respondent has proffered no proof, that Respondent is commonly known by the disputed domain name.  Therefore, in light of Respondent’s failure to Respond to the Complainant, it can be established that Respondent has no rights or legitimate interests in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent’s <vanugard.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 is 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 <vanugard.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 word 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 ¶ 4(a)(iii) has been satisfied.

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 <vanugard.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 1, 2004

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