WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Vanguard Group, Inc. v. Iskra Service
Case No. D2002-0584
1. The Parties
The Complainant in this administrative proceeding is The Vanguard Group, Inc. based at 100 Vanguard Boulevard, Malvern, PA 19355, United States of America.
The Respondent is Iskra Service , Ulitsa O. Goga 10-11, Kishinev, MD 10012, Republic of Moldova.
2. The Domain Name and Registrar
The domain name at issue is <vanguaard.com> (hereafter "the Domain Name"). The Domain Name is registered with BulkRegister.com, Inc., 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America ("the Registrar").
3. Procedural History
The Complainant filed a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") electronically on June 24, 2002, and in hard copy on June 27, 2002.
On June 25, 2002, the Center transmitted the request for Registrar Verification in connection with this case.
On the same day, the Registrar BulkRegister.com, Inc. responded to the Center's request for Registrar Verification and confirmed that BulkRegister.com, Inc. is the Registrar of the Domain Name <vanguaard.com>. It also confirmed that the Domain Name was registered in the name of Iskra Service, being the administrative and technical contact "Vladimir Snezko", Moscow, Russia.
On July 3, 2002, the Center verified that the Complaint met the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The undersigned has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the Supplemental Rules.
The administrative proceeding commenced on July 3, 2002. The same day, the Center notified the Complaint to Respondent.
As no response was submitted within 20 days of the commencement of the administrative proceeding (sub-section 5 (a) of the Rules), the Center notified Respondent on July 25, 2002, that it was in default.
Upon receipt of the necessary declaration of independence and impartiality, the Center appointed the undersigned on August 5, 2002, to serve as Sole Panelist in this administrative proceeding.
4. Factual Background
The Complainant is a company engaged in providing financial investment and financial advisory services and finance and investment-related products and services ancillary thereto. According to its own declaration, Vanguard currently manages a portfolio of over US$ 550 billion in assets and is one of the leading investment companies in the United States and the largest no-load mutual fund company in the world.
On July 27, 1993, the Complainant registered on the Principal Register in the United States Patent and Trademark Office, the word mark "Vanguard" in the international class 36 for fund investment services (Registration N° 1'784'435). The excerpt from the US Patent and Trade Mark Office indicates the year of 1974 for the first use of the "Vanguard" trademark (Annex D).
The Complainant indicates that for many years Vanguard has been maintaining and operating a website featuring financial investment and financial advisory services with the domain address of "http://www.vanguard.com". The <vanguard.com> website won top honours in Forbes 2000 "Best of the Web" issue and was named a "Forbes Favourite", the highest ranking in the mutual family category for investing websites in its 2001 "Best of the Web" issue (Annex E).
The Domain Name <vanguaard.com> was registered on November 18, 2001, in the name of Iskra Service, Ulitsa O.Goga 10-11, Kishinev, MD 10012, Moldova (Annex A).
Currently, the Domain Name resolves to a website under the address "http://www.vipFares.com" offering travel related services and allowing users to arrange and purchase airline tickets, hotel rooms and rental cars. Pursuant to Complainant's evidence submitted to this Panel (Annex F), the Respondent had already before diverted the Internet traffic from the Domain Name to various travel service sites: first to a site called <priceline.com>. Later, in February 2002, to <gito.com> and in June 2002 to <onetravel.com>.
On February 25, 2002, the Complainant sent a letter to the Respondent via postal and electronic mail informing Respondent that its registration of the Domain Name violated Vanguard's rights in its trademark under United States law. The Complainant demanded that the Respondent promptly transfer the domain name to the Complainant. Having received no response, Vanguard sent follow up e-mails to Respondent on March 8, 2002, and April 2, 2002 (Annex G). Vanguard never received a response to any of its correspondence to the Respondent.
5. Parties' Contentions
The Complainant alleges that the domain name is confusingly similar to Vanguard's registered mark since the domain name incorporates a common misspelling of the term "vanguard". According to the Complainant, the existence of an additional letter "a" is the only difference between Respondent's domain name and Vanguard's registered trademark. Furthermore, the Respondent has no legitimate interest in or business purpose for the domain name. Respondent has no trademark rights in "Vanguaard". Respondent's only use of the domain name is to direct visitors to its travel website that has nothing to do with Complainant.. Finally the Complainant has found various reasons showing that the Respondent registered and used the domain name in bad faith. Among other issues, the Complainant asserts that it has not agreed or consented to Respondent's use or registration of the domain name and that the Respondent has failed to cancel or transfer the domain name to Vanguard despite the Complainant's clear objection. Moreover, the Respondent tries to take advantage of typographical error users in an obvious attempt to trade on the value of Vanguard's mark. Also people who may access "vanguaard.com" in an attempt to reach Complainant's website, may incorrectly believe that Vanguard's website is affiliated, sponsored or somehow connected with the travel service website. The Complainant therefore concludes that the Respondent registered the domain name in bad faith and requests that the Administrative Panel transfer the domain name to the Complainant.
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4 (a) of the Policy is satisfied, namely that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the Domain Name, and
(iii) the Domain Name has been registered and used in bad faith.
These three elements will be considered below:
(i) Identity or Confusing Similarity
The Complainant submitted enough evidence to satisfy the Administrative Panel regarding the fact that the former is the holder of the trademark "Vanguard" for the international class 36 (Fund Investment Services in the United States).
Further more, the Administrative Panel has no doubt that the Domain Name <vanguaard.com> is confusingly similar to the aforementioned trademark "Vanguard" in the sense of Article (a) (i) of the Policy.
(ii) Rights or Legitimate Interests
The Panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark.
As the Respondent has not submitted a response, the Panel can find no indicia that Respondent has any rights (for instance, in the trademark "Vanguaard" or "Vanguard") or legitimate interests in the Domain Name pursuant to Article 4 (c) of the Policy. The Panel is thus of the opinion that Complainant has satisfied the second element of the Policy.
(iii) Domain Name Registered and Used in Bad Faith
The third element, Complainant has to prove to succeed in its Complaint is registration and use of the Domain Name in bad faith.
Vanguard seems to be one of the leading investment companies in the United States. The Complainant further operates a famous website, which became known to the public also outside of the United States by its nomination as one of the best websites in Forbes 2000. It is therefore probable that the Respondent must have been aware of the Complainant's name when it registered the Domain Name.
It can be deduced from the evidence submitted by the Complainant and by the Administrative Panel's visit of the present website that the Respondent's activity is in the field of giving access to websites offering travel-related services like travel arrangements, purchase of airline tickets, reservation of hotel rooms and rental cars. When typing <vanguaard.com> the internet user is diverted to a website called <vipFares.com>. Additionally previous screen-shots taken by the Complainant show that the Respondent always tried to divert internet users to sites offering travel services. Consequently, the Respondent wants to profit from internet users' typo errors by diverting them to its (or its clients') websites. Various WIPO Panels have disapproved such acts (see Playboy Enterprises International Inc. v. Sand Webnames-For Sale, WIPO Case N° D2001-0094 with further references).
The Respondent is further in violation of para. 4 (b)(iv) of the ICANN Policy, which states that the following circumstances shall be the evidence of the registration and use of a domain name in bad faith: using the domain name to intentionally attempt to attract for a commercial gain internet users to a website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.
The Panel has indeed come to the conclusion that this is the case here, since the Respondent is using the Domain Name for commercial gain hoping that persons surfing the Internet and seeking information on the Complainant's services will be diverted into the Respondent's offerings. The connection of the Respondent's website with these offerings furthermore dilutes the Complainant's trademark.
Accordingly, the Panel finds that the Domain Name <vanguaard.com> has been registered and is being used by the Respondent in bad faith.
In the light of the foregoing, the Panel concludes and decides that the Domain Name <vanguaard.com> shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: August 19, 2002