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Generic Top Level Domain Name (gTLD) Decisions |
The Vanguard Group Inc. v. NA The data in
Bulkregister.com's WHOIS database is p (NA)
Claim
Number: FA0410000341266
Complainant is The Vanguard Group Inc. (“Complainant”),
represented by Robyn Y. Ettricks, 100 Vanguard Blvd., V-26, Malvern, PA
19355. Respondent is NA The data in Bulkregister.com's WHOIS
database is p (NA) (“Respondent”), PO Box 97, Moscow 111538, Russia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <vangurad.com>, registered with eNom,
Inc.
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
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
14, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 15, 2004.
On
October 15, 2004, eNom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <vangurad.com> is registered with eNom,
Inc. and that Respondent is the current registrant of the name. eNom, Inc. has
verified that Respondent
is bound by the eNom, 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
October 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 8, 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@vangurad.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 18, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
James A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vangurad.com>
domain name is confusingly similar to Complainant’s VANGUARD mark.
2. Respondent does not have any rights or
legitimate interests in the <vangurad.com> domain name.
3. Respondent registered and used the <vangurad.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Vanguard Group Inc., is in the business of providing financial investments,
financial advisory services and finance
and investment-related products and
services. Complainant has used the
VANGUARD mark since at least 1974 in connection with a variety of financial
products and services. Complainant also
owns trademark rights in the VANGUARD mark through registration with the United
States Patent and Trademark Office
(Reg. No. 1,784,435, issued July 27,
1993).
Respondent
registered the <vangurad.com> domain name on November 18,
2000. Respondent is using the disputed
domain name to redirect Internet users to a website at the <usseek.com>
domain name. The website contains an
Internet search engine and provides links to different webpages that reference
Complainant.
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.
Complainant has
established rights to the VANGUARD mark through registration with the USPTO, in
addition to continuous use of the
mark in connection with Complainant’s
financial services business. 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).
Respondent’s <vangurad.com>
domain name incorporates a common misspelling of the term “vanguard.” Respondent has transposed the placement of
the letters “a” and “r,” thereby marking the only difference between
Complainant’s registered
VANGUARD mark and Respondent’s <vangurad.com>
domain name. This minor change indicates
Respondent deliberately intended to mislead Internet users who accidentally
mistype Complainant’s mark. The Panel
finds that the misspelling of the domain name does not significantly change the
overall impression of the mark or the confusingly
similar nature of the
disputed domain name. See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity,
as the result reflects a very
probable typographical error”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency
to be confusingly similar to the trademark
where the trademark is highly distinctive); 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, a Respondent does not
create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
The fact that
Respondent has not asserted any rights or legitimate interests in the <vangurad.com>
domain name is evidence that Respondent lacks rights and legitimate interests
in the domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names); see
also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond).
Respondent is
not using the <vangurad.com> domain name for a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair
use pursuant to
Policy ¶ 4(c)(iii), because the domain name diverts
unsuspecting Internet users, who are attempting to find Complainant, to a
website
featuring links to third-party websites. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also
Am. Online, Inc. v. Tencent
Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that use of Complainant’s mark “as a portal to suck surfers into a site
sponsored
by Respondent hardly seems legitimate”).
Additionally,
there is no evidence that Respondent is commonly known by the <vangurad.com>
domain name pursuant to Policy ¶ 4(c)(ii) and the WHOIS registration
information fails to imply that Respondent is commonly known
by the domain
name. See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark).
Therefore,
Policy ¶ 4(a)(ii) is established.
Complainant’s
intentional misspelling of the VANGUARD mark by transposing the letters “u” and
“a” is a likely typographical error
Internet users would make. Therefore, the Panel finds that
Complainant’s registration of a mark that is a likely misspelling of the mark,
evidences bad faith
registration and use.
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 Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(holding that “[t] absence of a dot between the ‘www’ and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain
name is] likely to confuse Internet users, encourage them to access
Respondent’s site” and evidenced bad faith registration and use of the domain
name).
Moreover, the
Panel finds that Respondent is profiting from its domain registry service by
receiving click-through fees and therefore
Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website);
see also Kmart v.
Kahn, 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)).
Therefore,
Policy ¶ 4(a)(iii) is established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is ordered that the <vangurad.com> domain name be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
December 2, 2004, 2004
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