WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Vanguard Group v. Dotsan
Case No. D2002-0585
1. The Parties
Complainant, the Vanguard Group, is a Washington corporation with its principal place of business in Malvern, Pennsylvania, United States of America. Complainant is a wholly owned subsidiary of Nintendo Co., Ltd. of Kyoto, Japan.
According to the WHOIS database for BulkRegister.com, Inc., the Respondent in this administrative proceeding is Dotsan, located in Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name is < vaguard.com >, registered with Bulk Register.com, Inc. in Baltimore, Maryland, United States of America.
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") by email on June 24, 2002. The Center received a hardcopy of the Complaint on June 27, 2002. The Center acknowledged receipt of the complaint on June 27, 2002. The Center issued a request for Registrar Verification from the Registrar (Bulk Register.com, Inc.) on June 25, 2002. The Center initiated and completed a Formal Requirements Compliance Checklist on July 3, 2002. It determined at that date that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy"), in effect as of December 1, 1999 ("the WIPO Supplemental Rules").
On July 3, 2002, the Center issued a notification of the Complaint and Commencement of Administrative Proceeding. On July 25, 2002, it notified the Parties of the Respondentís Default. On August 5, 2002, it notified the Parties of the Appointment of the Administrative Panel and on that same date, it transmitted the Case File to the Administrative Panel.
The Panel has independently reviewed the requirements and finds that Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules. The Complainant paid the required fees for a single-member Panel on time and in the required amounts.
Having reviewed the communications records in the case file, the Panel also finds that the Center discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
The Panel finds further, that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Vanguard alleges that it 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. It maintains that it currently manages a portfolio of over $550 billion in assets; and that it is one of the leading investment companies in the United States and the largest no-load mutual fund company in the world.
Vanguard maintains that, since at least as early as 1974, it has used 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. Vanguard provides supporting documentation, including a copy of the Registration.
Vanguard alleges that, for many years, it has maintained and continues to maintain and operate a website featuring financial investment and financial advisory services with the domain address of "www.vanguard.com". Vanguardís website provides financial services to its institutional and individual investors in addition to financial information to the non-investor public at large. Vanguard notes 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 family category for investing websites in its 2001 "Best of the Web" issue. Complainant provides a printout of its website.
Complainant provides documentary evidence that on or about July 12, 2001, Respondent registered the domain name "vaguard.com" with BulkRegister.com. The Panel notes that this registration occurred some years after the first use and registration of the "VANGUARD" mark in the United States and elsewhere.
Complainant alleges that it was unaware of the "vaguard.com" registration until January 22, 2002. On that date, it discovered that if users typed in "vaguard.com", a misspelling of the term "Vanguard," as an Internet domain name, the user would be diverted to the <lowermybills.com> website, which contains content and advertisements relating to financial services, as well as links to the websites of other companies offering various services, including financial services.
On February 25, 2002, Complainant claims that it discovered that the users typing <vaguard.com> would be diverted to the <gotoo.com> website which also contains content and advertisements relating to financial services, as well as links to the websites of other companies offering various services, including financial services. As of June 18, 2002, visitors were diverted to the ownbox.com website which also offers links to the websites of companies offering various services including financial services. Complainant provides documentation in support of these allegations.
Complainant adduces evidence that it obtained the contact information for the owner of the <vaguard.com> domain name registration from the WHOIS database of Betterwhois.com and sent a letter to the owner of the domain name registration (the Respondent in this action) via postal mail and electronic mail on February 25, 2002. In its communication, the Complainant indicated that Respondentís registration of the <vaguard.com> domain name violated Vanguardís rights in its "VANGUARD" trademark under United States law. Complainant demanded that Respondent promptly transfer the <vaguard.com> domain name registration to Complainant. That same day, Complainant received a response from the Respondent via electronic mail, stating: "our client amicably ask $500." Later that day, Complainant replied and inquired as to the correspondentís name and the identity of his "client." It reiterated that it was trying to contact the owner of the <vaguard.com> domain name. Complainant provides documentation verifying these communications.
Complainant claims that it received no response to its email from the Respondent. On March 8, 2002, it sent a follow up email to Respondent requesting a response to its previous email. Later that day, Complainant received a response stating: "Iím admin of those domains now. So you can deal with me." On March 11, 2002, Complainant replied, requesting the author of the emails to identify himself. On April 2, 2002, Complainant sent a follow up email to Respondentís email address requesting a response to its previous email of March 2, 2002. Complainant alleges that it received no response to both emails, of March 11 and April 2, 2002.
Finally, Complainant alleges that, to date, Respondent has refused to surrender the <vaguard.com> domain name to it, the Complainant, or to cancel the domain name registration.
5. Partiesí Contentions
Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names in issue, and that Respondent has registered and is using the domain name <vaguard.com> in bad faith.
Respondent has not contested the allegations of the Complainant.
6. Discussion and Findings
The Panel will evaluate each of Complainantís contentions in order.
The Domain Name is confusingly Similar to the "VANGUARD" Trademark
Complainant alleges that Respondentís use of the <vaguard.com> domain name is confusingly similar to the "VANGUARD" trademark. In particular, it incorporates a common misspelling of the term "Vanguard." The omission of the letter "n" is the only difference between Respondentís <vaguard.com> domain name and Vanguardís registered mark. Accordingly, the domain name is confusingly similar to Vanguardís registered mark. See, The Vanguard Group, Inc. v. RealTimeInternet.com, Inc., WIPO Case No. D2001-0873.
The Panel agrees with Complainant. Omitting or adding a letter, or misspelling a trademark, falls within both the letter and spirit of the confusing similarity prohibited by the Policy. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001). There, for example, it was held that <nicholekidman.com> is " 'virtually identical and confusingly similar' to Nicole Kidmanís common law mark; the only difference is the purposeful misspelling, created by the addition of an 'h,' and it is well established . . . that such misspellings are actionable under the Policy". See too Infospace v. Dominion Hill, Inc., WIPO Case Nos. D2000-1475 and D2000-1477 (January 22, 2001) in which it was held that <infosspace.com>, <ynfospace.com>, <inffospace.com>, <infospaace.com>, <infosppace.com>, <innfospace.com> and <infospacce.com> are confusingly similar to the trademark "INFOSPACE" because "the seven domain names at issue all fall within one letter of the registered trademarks and registered domain name belonging to Infospace". Similarly, in Nintendo of America Inc. v. Daniel Lopez, WIPO Case No. D2000-1166 (December 8, 2000), it was stated that: "Respondent's addition of the non-distinctive 'i-' to its domain name does nothing to reduce its confusing similarity with Complainant's NINTENDO marks." Similarly, in Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588 (August 1, 2000), the Panel found that the <gameb0y.com> domain name, spelled with a zero, confusingly similar to the GAME BOY® trademark. See too, Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2000-0449, decided by this Panelist in which it was held in an analogous case, <pokemonl.com> is a likely misspelling by a typist who inadvertently strikes an extra key while typing <pokemon.com>, which is the domain name of Nintendo's primary POKÉMON® Web site".
Respondent Has No Legitimate Interest in <vaguard.com>
Complainant alleges that Respondent has no legitimate interest in or business purpose for the domain name <vaguard.com>. Respondent has no trademark rights in "VAGUARD". Respondentís only use of the domain name is to direct visitors to the "lowermybills.com" "gotoo.com" and "ownbox.com" websites. People who may access <vaguard.com> in an attempt to reach Vanguardís website may incorrectly believe that Vanguardís website is affiliated with, sponsored by or some how connected with the <lowermybills.com>, <gotoo.com> or <ownbox.com> websites.
The Panel agrees that Respondent lacks a legitimate interest in the domain name <vaguard.com>. Evidencing such illegitimacy is the fact that Respondent has sought registration of the domain name after Complainant had established VANGUARD as a widely recognized trade mark and some time after Complainant had begun to use its widely recognized and publicized Web site.
The Respondent's use of the domain name <vaguard.com> in a manner that misleads consumers and harms Complainantís business interests is also illegitimate. Such illegitimacy arises out of three related factors. Firstly, consumers are likely to associate Respondent's domain name with Complainantís financial services. Secondly, consumers interested in the Complainantís financial services are likely to be diverted to the financial services being offered by Respondent at the disputed VAGUARD site. Thirdly, some consumers are likely to assume that the Complainant, VANGUARD, identifies itself with the financial services being advertised on the disputed VAGUARD website. These factors, viewed cumulatively, are illegitimate in violating the Policy. See Policy, paragraph 4(c)(iii).
<vaguard.com> Has Been Registered and Used in Bad Faith
Complainant alleges that the <vaguard.com> domain name should be considered as having been registered and used in bad faith for the following reasons. Respondent had constructive notice under 15 U.S.C. ß 1072 that the "VANGUARD" mark was a registered mark. Complainant neither agreed nor consented to Respondentís use or registration of <vaguard.com>. By registering <vaguard.com> Respondent precluded Complainant from securing a common misspelling of its mark in a corresponding domain name. Respondentís registration and use of <vaguard.com> constituted an obvious attempt to trade on the value of Complainantís mark, taking advantage in bad faith of typographical errors by Internet users. Complainant alleges further, that Respondentís bad faith is evident in the refusal to transfer or cancel the domain name in the face of Complainantís clear objection.
Complainant refers to prior Administrative panels that have indicated that there is no conceivable good faith use to which such the practice, commonly known as "typosquatting", can be put. The Vanguard Group, Inc. v. RealTimeInternet.com, Inc., WIPO Case No. D2001-0873; General Electric Company v. Fisher Zvieli a/k/a Zvieli Fisher, WIPO Case No. D2000-0377. See Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594; Microsoft Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; and News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623.
Complainant argues that the Respondent was in bad faith, in its initial email response to Complainantís cease and desist letter. In particular, Respondent offered to sell the Infringing Domain Name to Vanguard at a price that well exceeded the cost incurred in the registration of the Infringing Domain Name. Following U.S. case law and UDRP precedents, Complainant alleges that Respondentís offer to sell the domain name constitutes use of the domain name in commerce and meets the use requirement of the UDRP. See Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.3d 1316 (9th Cir. 1998); World Wrestling Federation Entertainment, Inc. v. Michael Bosman (WIPO Case No. D1999-0001); Educational Testing Serv. v. TOEFL, (WIPO Case No. D2000-0044); Jordan Grand Prix Ltd. v. Gerry Sweeney, (WIPO Case No. D2000-0233); Capcom Co. Ltd. and Capcom U.S.A. Inc. v. Dan Walker, (WIPO Case No. D2000-0200). In addition, people who may access <vaguard.com> in an attempt to reach Vanguardís website may incorrectly believe that Vanguardís website is affiliated with, sponsored by or some how connected with the <lowermybills.com>, <gotoo.com> and <ownbox.com> websites.
Complainant alleges as well that administrative panels have previously indicated that the Policy does not permit registration of a domain name that contains the trademark of another in an attempt to gain credibility for the services offered by misleading users into believing there is an association with the trademark owner. See Reed Elsevier Inc. v. Carlos M. Alvarez d/b/a IT Lexis, ICANN Case No. FA0107000098249; Identigene, Inc. v. Genetest Lab., WIPO Case No. D2000-1100; eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2000-0068.
The Panel holds that Respondent is in bad faith. It is evident that Respondent registered the disputed domain name to take advantage of a likely misspelling by typists, here the omission of an "n", in typing the word VANGUARD.COM. In particular, the Respondent intended to attract to its disputed site typists who inadvertently failed to strike the "n" key in typing the word VANGUARD.COM. Such actions constitute bad faith. For comparable determinations of bad faith, see NextCard v. Baltic Consultants Limited, NAF Claim No. FA 97073 (<nextcardl.com>); and Bloomberg L.P. v. Baltic Consultants Limited, NAF Claim No. FA 95834 (<bloombergl.com>); Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2000-0449.
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the following domain name be transferred to Complainant:
Leon E. Trakman
Dated: August 13, 2002