This UDRP Decision Is Worth Reading

It was David vs. Goliath and David didn’t even respond. So why did David win?

Every day, I scan the latest UDRP decisions and look for cases worth writing about. I look for things that jump out at me, such as a valuable dictionary domain. Other cases stand out because the result is not what I’d expect when merely looking at the Complainant and the domain.

That’s the case for The Vanguard Group, Inc.’s dispute against PIETER van Staden / Jobz4Afrika (Pty) Ltd for the domain vanguard-wealth .com.

Vanguard is one of the biggest investment firms in the world, with $8.5 trillion under management and over 30 million investors in 170 countries. Perhaps it took its size and fame for granted when filing the dispute. It lost the case even though the domain owner didn’t respond.

The domain name currently has an unavailable notice on it, but Vanguard provided evidence that the domain was used to promote property investments.

Given no-response and the fame of Vanguard’s mark, I could see many panelists just checking the boxes and ordering a transfer. But National Arbitration Forum panelist Bart Van Besien gave it some thought. It seems that he felt Vanguard phoned in its Complaint. He found that Vanguard didn’t even make a prima facie case supporting its arguments that the Respondent lacks rights and legitimate interests. It’s worth reading his reasoning in full:

First, the fact that Respondent offers services similar to Complainant does not automatically in itself constitute a lack of bona fide offering of goods or services by the Respondent. Also, the fact that Respondent was not authorized to use the VANGUARD mark does not automatically imply a lack of rights or legitimate interests. The same is true for the statement of Complainant that Respondent is not commonly known by the disputed domain name. The Panel would need more factual elements and more detailed argumentation why these are relevant elements in light of the circumstances of the case (especially, the fact that the words ‘vanguard’ and ‘wealth’ are common words in the English language and Respondent seems to use these terms in their dictionary meaning – see below).

Second, the term ‘VANGUARD’ is an existing English word, meaning “advance guard” or “the forefront in any movement, field, activity, or the like” (according to Dictionary.com and other dictionaries). From the screenshots of the website of Respondent (as submitted by Complainant), it seems that Respondent presents itself as “a group of people leading the way in new developments or ideas”. On its website, Respondent further mentions: “Vanguard Wealth is leading the way in building wealth for everyone. We enable everyone to own a share in property asset classes previously reserved for the select few.” In other words, it seems that Respondent is using the term ‘VANGUARD’ in its dictionary meaning, specifically in relation to wealth creation services.
Third, the Complainant did not submit any evidence of trademark rights for the term ‘VANGUARD’ in South-Africa (i.e., the country where the Respondent has his residence). The Complainant did not argue or substantiate that it operates its business in South-Africa. From the website of the Complainant (https://global.vanguard.com/portal/site/home), it seems that the Complainant is active in the Americas, in Asia Pacific, and in Europe, but not in Africa.

Fourth, the Complainant states that its VANGUARD trademarks are famous, but did not submit any evidence of this statement. It might well be that these trademarks have a certain fame or status, but it is up to the Complainant to provide evidence thereof. The Panel finds that the Complainant did not provide sufficient argumentation or evidence that the Respondent had knowledge or should have had knowledge of its trademark rights. In particular, the Complainant did not substantiate that its trademarks are “well-known” or “famous” trademarks, let alone in South-Africa, i.e., the home country of the Respondent.
The burden of proof under Paragraph 4(a)(ii) of the Policy lies ultimately and predominantly with the Complainant and the Panel believes that the Complainant did not meet this burden. The Panel emphasises that it is bound by Article 15 (a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

From a combination of the factors mentioned above, the Panel finds that Complainant did not to make out a prima facie case that Respondent lacks rights or legitimate interests.

He also found that Vanguard didn’t show the domain was registered and used in bad faith.

Perhaps Vanguard’s success with UDRP made it a bit lackadaisical with this filing. I count over 50 cases it has filed, and this is only its second loss.

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Original article: This UDRP decision is worth reading