WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Vanguard Group, Inc. v. John Zuccarini

Case No: D2002-0834

 

1. The Parties

The Complainant in this administrative proceeding is The Vanguard Group, Inc. ("Vanguard"), a corporation organized and existing under the laws of Pennsylvania having a place of business in Malvern, PA United States of America. The Respondent in this administrative proceeding is John Zuccarini, Nassau, Bahamas.

 

2. The Domain Name and Registrar

The disputed domain name is <vanguad.com>. The Registrar of the domain name is CSL Computer Service Langenbach GmbH d/b/a Joker.com, Germany.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 5, 2002, by email and on September 12, 2002, by hardcopy. On September 18, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On October 8, 2002, the Respondent filed his Response with the Center by email. The Complainant filed a Reply to the Response on October 10, 2002, by email and on October 15, 2002, by hardcopy.

The Administrative Panel consisting of three members was appointed on November 1, 2002, by WIPO.

The Administrative Panel decided to consider all of the material delivered by the parties. An examination of the material confirms that all technical requirements for the prosecution of this proceeding were met.

 

4. Factual Background

Complainantís Factual Assertion

The following information derives from the Complainant.

The Complainant is and has for many years been engaged in providing financial investment and financial advisory services, finance and investment-related products and services ancillary thereto. It has built a large business in connection therewith. The Complainant currently manages a portfolio of over $540 billion in assets. It is one of the leading investment companies in the United States and the largest no-load mutual fund company in the world. The Complainant has approximately 17 million shareholders and participants.

Since at least as early as 1974 the Complainant has used and currently is 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.

The Complainant also is 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".

For many years, the Complainant 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". The Complainantís website provides financial services to its institutional and individual investors in addition to financial information to the non-investor public at large. The 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. With over 17 million shareholders and participants, the "Vanguard.com" website generates a large number of visitors.

The subject domain name was registered on April 1, 2000.

On January 8, 2002, the Complainant discovered that if Internet users typed in the subject domain name as an Internet domain name, they would be diverted to the amatuervideos.nl website. The amatuervideos.nl website contains pornographic content. On August 20, 2002, Vanguard discovered that users intending to visit the website to which the subject domain name resolves would be diverted to the sexunsensored ".com" website which also contains pornographic content.

Upon being diverted to the "sexunsensored.com" website, the visitor is forced to view multiple pop-up windows displaying advertisements for pornographic websites. Such advertising practices are commonly known as "mousetrapping." As of September 5, 2002, visitors continue to be diverted to the "sexunsensored.com" website and must view numerous pop-up advertisements for other pornographic websites.

The Complainant sent a letter to the Respondent via postal mail and electronic mail on January 2, 2002. The communication informed the Respondent that its registration of the subject domain name violated the Complainant's rights in its "VANGUARD" trademark under U.S. law. The Complainant demanded that the Respondent promptly transfer the subject domain name registration to the Complainant. Later that day, the email was returned to the Complainant as undeliverable. On April 2, 2002, the Complainant resent its letter via electronic mail. Shortly thereafter, the email once again was returned undeliverable. As of this date, the Complainant has not received a response to its letters of January 2 and April 2, 2002.

The Respondent is a known cybersquatter. He has engaged in a pattern of conduct by registering numerous domain names that are misspellings of famous marks. Numerous administrative panels and courts have held that the typosquatting engaged in by Respondent constitutes bad faith registration and use.

The registration agreement for the subject domain name requires that it not resolve to pornographic content, in violation of German law.

The Complainant has neither agreed nor consented to the Respondentís registration or use of the subject domain name.

Respondentís Factual Assertions

The Following information derives from the Response.

The Respondent does not use the subject domain name in connection with goods or services similar to those covered by the Complainantís mark.

There is no evidence that the Respondent registered the subject domain name with the Complainant in mind.

"Vanguard" is a common word to which the Complainant does not have exclusive use or rights.

A query run on the "Google.com" search engine for the word "vanguard," without the word "group" (to exclude references to Complainant), showed that the word appears on over 340,000 third party web pages. A few of the third party uses are:

Name URL

Vanguard Recordsvanguardrecords.com
Vanguard Universityvanguard.edu
Vanguard Sailboatsteamvanguard.com
The Village Vanguardvillagevanguard.net
The Vanguardthevanguard.org
Vanguard Venturesvanguardventures.com
Vanguard Communicationsvanguard.net

There are 358 U.S. trademarks, which incorporate the term VANGUARD, only 35 of which are registered to the Complainant. These include:

Reg. No Mark Products/Service Owner

2562597Vanguardtime stamp machinePacific Parking Systems
2504668VanguardspasWatkins Mfg. Corp.
2601524VanguardbootsBelleville Shoe Mfg. Co.
2442228VanguardsailboatsQuarter Moon, Inc.
2383131Vanguardtire inner tubesReliable Tire Co.
2376792Vanguardelectronic signsDaktronics, Inc.
2367036Vanguardtemperature signTime-O-Matic, Inc.
2358650VanguardFreight distributionVanguard Logicstics Serv., Inc.

There are 1153 Internet domain names (".com", ".net", ".org", ".edu") which contain the word vanguard.

The Respondent did not register the subject domain name for the purpose of selling it to the Complainant.

The Respondent registered the subject domain name because it is a misspelling of the common word vanguard. The Respondent did not register the subject domain name with the intent to disrupt the Complainantís business, to prevent it from owning a domain name incorporating its trademark, or to confuse consumers seeking to find the Complainantís website.

Additional Information

The following information derives from the Reply.

The Respondent has not produced probative evidence to support its allegation that "Vanguard" is used by others and is a "common generic word." The Respondent merely has printed lists of trademark applications and registrations (both active and expired) and domain names containing "vanguard" Ė in all cases with additional verbiage included - without providing any ownership information.

Many of the trademarks identified by the Respondent are owned by the Complainant. The Respondent has offered no evidence showing use of the marks listed. Trademark registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them. In re Albert Trostel & Sons Company, 29 USPQ2d 1783, 1785-86 (TTAB 1993).

Many of the domain names identified by the Respondent are either owned by the Complainant or are not relevant to the present case because they do not correspond closely to <vanguard.com>. The Google search results have been manipulated (i.e. vanguard --- group), and are accordingly not probative and not material to the Complainantís rights in "VANGUARD".

No word can be deemed "generic", unless it indicates the genus of something. For example, "apple" is generic for apples, but is a strong, arbitrary trademark for computers. Ordinary words such as "limited", "crew", "playboy", "quicktime" and "scholastic" have been granted trademark registrations as inherently distinctive marks and have been protected in domain name dispute cases.

"Vanguad" is not a common word. It is not any kind of word. It is not in any dictionary and is not used by others.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its registration and use of the word "vanguard" and says that the subject domain name is confusingly similar. It differs from the Complainantís mark only by the omission of the letter "r".

The Respondentís lack of a legitimate interest in the subject domain name is said to be established by the fact that the Respondent does not have a trademark interest in the word "vanguad". In addition, the only use made of the subject domain name is to direct users to a pornographic website where they are "mousetrapped". Users who incorrectly spell "vanguard" may conclude that the Complainant is associated with pornography. The use of the subject domain name to link to a pornographic site contravenes German law, adherence to which is a requirement of the registration agreement.

The Complainant relies on a number of facts to support a finding of bad faith. These include: the Respondent had constructive notice of the Complainantís mark; the registration prevents the Complainant from securing a common misspelling of its mark in a corresponding domain name; no consent has been given for the use of the subject domain name; the Respondent has not acceded to the Complainantís request to transfer the subject domain name; the Respondentís use of the subject domain name is an obvious attempt to trade on the Complainantís mark. The Complainant relies on a number of previous domain name dispute decisions to support several contentions, including "Öthe 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. In addition, the Complainant says that the Respondent is a known cybersquatter and refers to a number of cases in which tribunals have made findings against the Respondent.

B. Respondent

The Respondent states that although the subject domain name is similar to the Complainantís mark, it is not confusingly so "Öbecause [the] Respondent does not use the [subject domain name] in connection with goods or services similar to those covered by Complainantís mark".

The Respondent contends that he has a legitimate interest in the subject domain name "Öbecause the [subject domain name] incorporates merely a misspelling of the common dictionary word Ďvanguard.í" He states: "It is well established under the Policy that anyone is entitled to register a common word in the dictionary, and that the first to register such word has a legitimate interest in it. If the registration of a common word domain name establishes a Respondentís legitimate interest, the result should be no different for a domain name incorporating the misspelling of that common word."

The Respondent asserts that he "Ödid not register the [subject domain name] with the intent to disrupt [the] Complainantís business, to prevent it from owning a domain name incorporating its trademark, or to confuse consumers seeking to find [the] Complainantís website".

It is contended by the Respondent "Absent direct proof that a common word domain name was registered or acquired solely for the purpose of profiting from Complainantís trademark rights, there can be no finding of bad faith registration and use." He quotes from Ultrafem, Inc. v. Warren Royal Case No. 97682 (NAF August 2, 2001): "A bad faith showing would require the Complainant to prove that the Respondent registered <instead.com> specifically to sell to the Complainant, or that the value of "instead" as a domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on the Complainantís trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term."(emphasis added by the Respondent)

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís 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.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The parties refer to a number of previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on this Administrative Panel, often reference to them is of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the word "vanguard". The Respondent does not contest this fact, although he asserts that the rights are limited. The Respondent essentially concedes that the Complainantís mark and the subject domain name are similar, but based on the Respondentís use of the subject domain name asserts that it is not confusingly similar. He states: "..because [the] Respondent does not use the [subject domain name] in connection with the financial-related goods and services covered by [the] Complainantís marks, there is no confusing similarity. In other words, there is nothing on [the] Respondentís website that would lead a user to believe the site was operated or associated with [the] Complainant". (emphasis in the original)

The test is objective, not subjective. A Complainant need not establish actual confusion. A Respondentís use has little relevance to the inquiry, although it is material to a consideration of legitimate interest. The question is whether the subject domain name is confusingly similar to the Complainantís mark, not whether the website to which the subject domain name resolves will confuse users.

The subject domain name differs from the Complainantís mark only by the omission of the letter "r". It is confusingly similar to the Complainantís mark.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i)

B. Respondentís Legitimate Interest

The Complainant relies on the Respondentís lack of a trademark interest in the word "vanguad" as supporting a lack of legitimate interest in the subject domain name. The Respondent is not obliged to have such a trademark. Although the registration of a mark would support a legitimate interest, the Respondentís failure to do so does not lead to an inference that he does not have a legitimate interest in the subject domain name.

The Respondentís contention that he has a legitimate interest in the subject domain name is founded on the proposition that anyone is entitled to register a common word and that the first to do so has a legitimate interest in it. He says that this must lead to the conclusion that registration of a misspelling of a common word also supports a legitimate interest.

The Respondent states that he: "Öregistered [the subject domain name] because it is a misspelling of a common word in the dictionary. The registrant of a domain name incorporating a mere misspelled generic common word has a legitimate interest in the Disputed Domain. Knight-Ridder, Inc. v. Cupcake Patrol a/k/a John Zuccarini, No. 96551 (NAF March 6, 2001).

The Respondent also refers to decisions in which Administrative Panels have required proof of intent to mislead or to capitalize on a Complainantís mark or reputation. These decisions relate to the facts and circumstances before the tribunals in question. Of necessity property rights in common words are construed narrowly, but the subject domain name is not a common word. It is a misspelling of a common word.

Insofar as a common word also is a trademark, registration may not support a legitimate interest. The authorities show that Administrative Panels examine the reasons for the registration and the relationship between the use of the subject domain name and the Complainantís mark.

The leap to legitimizing a misspelling is a considerable distance. It is appropriate to ask why the so-called common word is misspelled, particularly where the common word is a registered mark of another.

The Respondent points to many uses of the word "vanguard", but provides no explanation why he chose to use a misspelling of the word for the subject domain name. An obvious answer is that many users who seek to connect to a significant number of different websites will misspell "vanguard" and hit the site to which the subject domain name resolves.

The subject domain name links to pornographic websites. It cannot be said that a Respondent does not have a legitimate interest in a domain name merely because it resolves to a pornographic website, but in this case the resolution appears to violate the Respondentís registration agreement. In any event, it capitalizes on the marks and registrations of others including the Complainant without qualifying letters or words.

While it is clear that the Respondent has an interest in the subject domain name, placed in context, the interest is not legitimate.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

A registration that deprives a Complainant of the opportunity to register its mark as a domain name has been held to be an indicia of bad faith. It is sometimes characterized as a blocking maneuver, but the concept should be considered carefully and used sparingly. It is difficult to see how the registration of a misspelling should be considered in the same light, although taken with other information it may have relevance to the bad faith issue.

The Respondent contends that "Öthe Complainant must proffer evidence that demonstrates that [the [R]espondent has specifically intended to confuse consumers seeking out [the] Complainant."

Consideration of bad faith engages intent, but intent can be inferred from the context and surrounding circumstances.

The subject domain name is confusingly similar to the Complainantís mark and to the marks of others who use the word "vanguard". Using a misspelling of the word creates the confusion. The Respondent offers no explanation why he chose the confusing misspelling. It is a fair inference that he did so to attract users who were otherwise seeking the Complainant or others who use the word "vanguard". Insofar as they have intellectual property interests in the word, the Respondentís registration and use of the misspelling is bad faith.

The Complainant is very well known in the United States, the place of the registration of its mark and of the majority of its business. The Respondent does not deny that he had the Complainant in mind when he registered the subject domain name, but states simply that there is no evidence that he did so.

A number of domain name dispute decisions have pronounced against the Respondent. The Complainant asserts that he is a known cybersquatter. Administrative Panels are not bound by the decisions of others, but they may consider those decisions and take from them whatever assistance is appropriate. Findings against a Respondent in other proceedings must be considered with caution and placed into the context of those proceedings, but insofar as they reflect a course of conduct or are based on similar facts, it is appropriate to take them into account.

The Respondent does not deny the Complainantís characterization of his conduct. While certainly not determinative, the Administrative panel takes it into account.

The majority of the Administrative Panel finds bad faith based on the context and surrounding circumstances and on the basis that a Complainant need not and, in fact, may not be able to prove a specific intent directed to it. On the facts of this case, it is a fair inference that the Respondent's target either was or included the Complainant, insofar as any holder of rights to the word "vanguard" is affected adversely by the Respondent's conduct.

The minority dissents on the basis that it is not satisfied on the balance of probabilities that the Respondent had the Complainant in mind when registering the Domain Name.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the majority of the Administrative panel concludes that the Complainant has established its case. The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.

 


 

Edward C. Chiasson, Q.C.
Presiding Panelist

Dennis A. Foster
Panelist

Tony Willoughby
Panelist

Dated: November 18, 2002