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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Vanguard Group, Inc. v AD-X Network, Inc.
Case No. D2000–0942
1. The Parties
The Complainant in this administrative proceeding is The Vanguard Group, Inc., a corporation organized and existing under the laws of Pennsylvania having a place of business at 100 Vanguard Boulevard, Malvern, PA 19355, USA, represented by Akin, Gump, Strauss, Hauer & Feld, LLP of One Commerce Square, 2005 Market Street, Suite 2200, Philadelphia, PA 19103-7086, USA. The Respondent is AD-X Network, Inc. of 149-1489 Marine Drive, West Vancouver, British Columbia V7T 1B8, Canada.
2. The Domain Name and Registrar
The domain name in issue is "fundfinder.com" ("the Domain Name"), the Registrar of which is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170, USA ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on August 3, 2000, an electronic version of the Complaint and accompanying documents and on August 7, a hard copy version of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On September 1, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On August 10, 2000, the Center transmitted via e-mail a request for registrar verification in connection with this case. On August 15, 2000, Network Solutions transmitted via e-mail to the Center its Verification Response, confirming that the registrant is AD-X Network, Inc., the Respondent herein, and stating that the administrative, technical and zone contacts are Dickson, P (PD1276) paul@ADX-NET, ADX Financial Network, Inc., 4550 Birch Bay Lynden Road, Blaine, WA 98230
No Response has been filed by the Respondent. However, the Center notified the Respondent of the Complaint by courier, fax and e-mail, and received confirmation of delivery on September 5, 2000, from the courier, TNT, and satisfactory transmission on September 1, 2000, of the fax, and likewise received confirmation from TNT of delivery to P. Dickson on September 5, 2000. Notifications of Default were sent by courier (FedEx) on September 26, 2000, to both the Respondent and to P. Dickson, and by e-mail to the Respondent on September 25, 2000. In view of the fact that the Respondent was aware of the Complainant’s objections to the Respondent’s registration of the Domain Name before these proceedings were instituted, the Panelist concludes that the Respondent has deliberately chosen not to respond to the Complaint, but that it has received adequate notice of the same.
On October 6, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by October 19, 2000.
4. Factual Background
(a) The Complainant is the registered proprietor of a United States Trademark, as follows:-
Number 1,776,764 registered June 15, 1993, in U.S. class 102 (International Class 36) covering the mark FUNDFINDER for fund investment services.
(b) The Domain Name was registered on October 4, 1997.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Complainant 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 and successful business in connection therewith. The Complainant currently manages a portfolio of approximately $550 billion in assets. The Complainant is one of the leading investment companies in the United States and the largest no-loan mutual fund company in the world.
(ii) The Complainant has used continuously since at least as early as July 14, 1991, and is currently using "FUND FINDER" (sic) as a trademark in U.S. commerce for fund investment services. Specifically, the Complainant uses the "FUND FINDER" trademark in connection with a fund research tool offered at its website located at "www.vanguard.com".
(iii) The Complainant discovered that the Respondent had registered the Domain Name and that the Domain Name was being used in connection with a website that featured emerging growth mutual funds and investments.
(iv) The Complainant sent a letter to the Respondent via electronic mail on July 18, 2000. The communication informed the Respondent that its registration of the Domain Name violated the Complainant’s rights in its "FUND FINDER" trademark under United States law and demanded that the Respondent promptly transfer the Domain Name registration to the Complainant and cease offering and promoting any services at the website which would be likely to be incorrectly associated with the Complainant’s well-known "FUND FINDER" services.
(v) On July 18, 2000, the Respondent (through its representative, Paul Dickson) responded by writing only: "You are out of your mind."
(vi) On July 21, 2000, the Complainant renewed its demand to the Respondent, explaining that it was serious about protecting its intellectual property rights, given that it had used the "FUND FINDER" trademark for nearly ten years and owned an incontestable U.S. trademark registration for the mark.
(vii) On July 21, 2000, the Respondent replied "Your United States Patent and Trademark is not valid in Canada."
(viii) On the same date, the Complainant responded in two messages to the Respondent that it understood that the Respondent had been operating as a Delaware corporation from Illinois, and was now operating its business out of Canada, but that the Respondent remained in violation of the Anti-cybersquatting Act.
(ix) On July 21, 2000, the Respondent replied "There [sic] several companies I am considering selling the domain name to. I will expedite the transaction and you can deal with the new owner."
(x) The Respondent has no rights or legitimate interests in the Domain Name. On information and belief, the Respondent owns no trademark application or registration for "FUND FINDER". The Complainant has neither agreed nor consented to the Respondent’s use or registration of a domain name comprising its "FUND FINDER" mark.
(xi) The Respondent inactivated the Domain Name website shortly before the commencement of these proceedings but still refused to transfer the Domain Name to the Complainant.
(xii) The Domain Name does not currently resolve to any website or online presence.
(xiii) The Respondent is not making any legitimate or commercial use of the name.
(xiv) At least the following is evidence of the Respondent’s bad faith: (1) previous use of the Domain Name address for financial services competitive with those of the Complainant; (2) the Respondent’s failure to address the Complainant’s concerns, despite the latter’s attempts to resolve this matter; (3) the Respondent’s inactivation of the website associated with the Domain Name, while maintaining the Domain Name registration; and (4) the Respondent’s threat to sell the Domain Name to a third party and have the Complainant "deal with the new owner".
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the trademark (or more strictly speaking, the service mark) as used by the Complainant consists of the two words FUND FINDER, whereas the Domain Name is "fundfinder", without a break, and the U.S. Registered Trademark is likewise spelt FUNDFINDER. It follows that the Domain Name is identical to the Registered Trademark, and if not identical to the trademark FUND FINDER (by reason of the division into two words) it is clearly confusingly similar to it. In light of the evidence of extensive use of the trademark FUND FINDER, it would seem that, despite the essentially descriptive nature of the words "fund finder", the Complainant has rights in the trademark (however spelt), and that element (i) has been established.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute, use of the Domain Name in connection with a bona fide offering of goods or services, being commonly known by the Domain Name, or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest (see paragraph. 5.A(iii) above) that the Respondent’s interest in the Domain Name was not in good faith, in that it was apparently using the Domain Name to take advantage of the Complainant’s goodwill in the field of mutual funds, but has since closed down its website. In the absence of any justification from the Respondent of its activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned, the Panelist notes that the Domain Name was registered in October, 1997, by which time the Complainant had been using its FUND FINDER mark for at least 6 years. The Complainant discovered that the Respondent was using the Domain Name in connection with a website that "featured emerging growth mutual funds and investments". The Complainant has provided no further details as to when this discovery was made or what was to be seen on the website.
The Respondent’s replies to the Complainant’s attorney’s letters of complaint do nothing to suggest the Respondent has been acting in good faith:-
- "You are out of your mind";
- "Your United States Patent and Trademark is not valid in Canada";
- There (sic) several companies I am considering selling the domain name to. I will expedite the transaction and you can deal with the new owner."
These responses, coupled with the Respondent’s subsequent inactivation of the website associated with the Domain Name lead this Panelist to conclude that, on the balance of probabilities, the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
- the domain name "fundfinder.com" is identical to the registered trademark FUNDFINDER of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name "fundfinder.com" be transferred to the Complainant, The Vanguard Group, Inc.
Dated: October 13, 2000