Vanguarde.com

The timeline behind vanguarde.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Vanguard Group Inc. v. Addressor.com c/o Domain Registration Claim Number: FA0705000982733 PARTIES Complainant is The Vanguard Group, Inc. (“Complainant”), represented by Robyn Y. Ettricks, of The Vanguard Group, Inc., 100 Vanguard Blvd., V-26, Malvern, PA 19355. Respondent is Addressor.com c/o Domain Registration (“Respondent”), represented by Benjamin Azevedo, CP 10870, Copacabana, Rio De Janeiro, RJ 22022-970, BR. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <vanguarde.com>, registered with Enom, Inc. PANEL 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2007. On May 14, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vanguarde.com> domain name 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 May 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 2007 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@vanguarde.com by e-mail. A timely Response was received on June 6, 2007. The Response was deficient under ICANN Rule 5 as the hard copy was incomplete. Therefore the Panel has sole discretion as to the amount of weight given to the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). The Panel may decide to accept the Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”). In this instance, the Panel shall consider the Response as complete as the deficiency caused Complainant no prejudice. An Additional Submission was received from Complainant on June 11, 2007. The Additional Submission was timely and in full compliance with Supplemental Rule 7. An Additional Submission was received from Respondent on June 16, 2007. The Additional Submission was timely and in full compliance with Supplemental Rule 7. On June 12, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant 1. The subject domain name <vanguarde.com> is identical or confusingly similar to Complainant’s VANGUARD mark. 2. Respondent has no rights or legitimate interests with respect to the disputed domain name. 3. Respondent has registered and used the <vanguarde.com> domain name in bad faith. B. Respondent 1. The subject domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights. 2. Respondent should be considered as having rights or legitimate interests in respect of the subject domain name. 3. The subject domain name should not be considered as having been registered and used in bad faith. 4. Respondent asks for a finding of “reverse domain name hijack.” C. Additional Submissions 1. Complainant (a) It is visually evident that the term “vanguarde” is confusingly similar to and a logical typographical error of Complainant’s VANGUARD mark. (b) Other third parties’ legitimate use of “vanguarde” has no bearing on Respondent’s lack of legitimate rights therein. No evidence has been offered to support a use for legitimate business interests. (c) There is no effort by Complainant to “reverse hijack” the subject domain name. 2. Respondent (a) Complainant has no presence in Respondent’s country (Brazil). (b) Other variations of VANGUARD are registered to third parties. (c) “Vanguarde” conforms to the linguistic appearance of a Portugese word. (d) Another company owned the subject domain name earlier without protest until abandoning the same following bankruptcy. FINDINGS The Panel finds in favor of Complainant and determines that the subject domain name shall be transferred from Respondent to Complainant. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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; (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 asserts rights in the VANGUARD mark by virtue of trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,784,435 issued July 27, 1993). The Panel finds that Complainant has accordingly established rights in the VANGUARD mark for purposes of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the <vanguarde.com> domain name is confusingly similar to Complainant’s VANGUARD mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety and adds the letter “e” to the end of the mark, as well as a generic top-level domain (“gTLD”). In its Additional Submission, Complainant asserts that the addition of the letter “e” is in fact a possible typing error, and accordingly maintains its assertion that the disputed domain name is confusingly similar to its mark. The Panel holds that the addition of the letter “e” and a gTLD do not sufficiently render the disputed domain name distinct from the mark under Policy ¶ 4(a)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). While Respondent contends that the <vanguarde.com> domain name is comprised of a common, descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. Rights or Legitimate Interests Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Respondent is not commonly known by the <vanguarde.com> domain name, as the WHOIS information does not indicate that Respondent is known by the disputed domain name, and Complainant asserts Respondent is not authorized to use its mark. The Panel finds there is no evidence in the record to support the contention that Respondent is commonly known by the <vanguarde.com> domain name, and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Complainant provided uncontested proofs that Respondent previously used the disputed domain name to host a website that displayed hyperlinks to various third-party websites, some of which were in direct competition with Complainant. Such previous use is found to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Moreover, the Panel finds that the <vanguarde.com> domain name currently resolves to a website without an active use. In its Additonal Submission, Complainant concedes that while a legitimate use of the term VANGUARD which is unassociated with Complainant’s business may be allowed, in the instant matter Respondent has not demonstrated any evidence to this effect. The Panel finds that Respondent has failed to make an active use of the website, and that there are no demonstrable preparations to use the website that resolves from the disputed domain name in a legitimate manner; accordingly, Respondent lacks a bona fide offering of goods and services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s passive holding of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name). Registration and Use in Bad Faith The Panel finds that Respondent has registered the <vanguarde.com> domain name for its own commercial gain, either through the past use of the disputed domain name to display hyperlinks to various third-party websites, or for some future use. The Panel also finds that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s affiliation with the <vanguarde.com> domain name and website, due to the alleged confusing similarity between Complainant’s mark and Respondent’s disputed domain name. The Panel finds that Respondent registered the disputed domain name for commercial benefit, and that a likelihood of confusion is possible, and finds bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Additionally, Respondent has failed to make an active use of the <vanguarde.com> domain name for a significant period of time. The Panel finds that such failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). Reverse Domain Name Hijacking Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends Complainant knew or should have known it could not satisfy either or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii). The Panel finds that such an assertion is without merit in this case, and that Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <vanguarde.com> domain name through its registration with the USPTO of the VANGUARD mark, and as such, Complainant’s filing is not an abuse of the Policy. 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 <vanguarde.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: June 25, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.