It was David versus Goliath and David didn’t even answer. So why did David win?
Every day, I scan the latest UDRP rulings and look for cases worth writing about. I search for things that jump out at me, like a valuable dictionary domain. Other cases stand out because the result is not what I would expect just looking at the complainant and the domain.
This is the case of the litigation of The Vanguard Group, Inc. against PIETER van Staden / Jobz4Afrika (Pty) Ltd for the domain vanguard-wealth .com.
Vanguard is one of the world’s largest investment firms, with $8.5 trillion under management and more than 30 million investors in 170 countries. Perhaps he took his size and fame for granted when filing the lawsuit. This lost the case even if the domain owner has not responded.
The domain name currently has an unavailability notice, but Vanguard has provided evidence that the domain has been used to promote real estate investments.
Given the lack of response and the fame of the Vanguard brand, I could see many panelists simply ticking the boxes and ordering a transfer. But National Arbitration Forum panelist Bart Van Besien gave it some thought. It seems he felt Vanguard phoned in his complaint. He found out that Vanguard hadn’t even made a At first glance case supporting his arguments that the defendant lacks legitimate rights and interests. It is worth reading his reasoning in full:
First, the fact that the Respondent offers similar services to the Complainant does not automatically constitute in itself a lack of a good faith offer of goods or services by the Respondent. Moreover, the fact that the Respondent was not authorized to use the VANGUARD mark does not automatically imply a lack of rights or legitimate interests. The same goes for Complainant’s statement that Respondent is not commonly known as the disputed domain. The Panel would need more factual elements and a more detailed argument as to why they are relevant elements in the light of the circumstances of the case (in particular, the fact that the words “avant-garde and “wealth” are common words in English and the Respondent appears to be using these terms in their dictionary sense – see below).
Secondly, the term “VAN-GARDE” is an existing English word, which means “vanguard” or “the vanguard of any movement, field, activity or the like” (according to Dictionary.com and other dictionaries) . From the screenshots of the Respondent’s website (as submitted by the Complainant), it appears that the Respondent presents itself as “a group of people paving the way for new developments or ideas”. On its website, the respondent further mentions: “Vanguard Wealth is paving the way for wealth creation for all. We enable everyone to own a stake in real estate asset classes previously reserved for a select few. other terms, it appears that Respondent is using the term “VANGUARD” in its dictionary sense, specifically in relation to wealth creation services.
Third, the Complainant has provided no evidence of trademark rights for the term “VANGUARD” in South Africa (ie the country where the Respondent resides). The Complainant has not claimed or substantiated that it operates in South Africa. According to the Complainant’s website (https://global.vanguard.com/portal/site/home), it appears that the Complainant is active in the Americas, Asia-Pacific and Europe, but not in Africa.
Fourth, the Complainant states that its VANGUARD marks are famous, but has provided no evidence for this assertion. It may well be that these marks have a certain reputation or a certain status, but it is up to the Complainant to provide proof of this. The Committee finds that the Complainant has not provided sufficient arguments or evidence to demonstrate that the Respondent knew or should have known of its trademark rights. In particular, the Complainant did not prove that its marks were “well-known” or “famous” marks, let alone in South Africa, ie the country of origin of the Respondent.
The burden of proof under paragraph 4(a)(ii) of the Policy is ultimately and primarily on the Complainant and the Panel finds that the Complainant has failed to meet this burden. The Panel emphasizes that it is bound by Section 15(a) of the Rules: “A Panel shall decide a complaint based on the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law which he deems applicable.
Based on a combination of the factors mentioned above, the Panel concludes that the Complainant has failed to establish a prima facie case that the Respondent has no legitimate rights or interests.
He also found that Vanguard failed to show that the domain was registered and used in bad faith.
Perhaps Vanguard’s success with UDRP has made it a little nonchalant with this repository. I count over 50 cases he filed, and this is only his second loss.