Domain disputes are not always consistent with one other, if the broader perspectives are concerned. Each case has its own merit and should be looked upon objectively. However, often decisions come that are not easy to digest.
Forum witnessed a dispute between two parties over the use of domain name Vanguard-Wealth.com. The Complainant is The Vanguard Group, Inc.
The Complainant is one of the world’s largest Investment companies with total assets in management to be around $8.5 trillion. The Complainant has more than 30 million investors with presence in around 150 countries. The Complainant itself, operates on the domain name Vanguard.com, since 1977. The Complainant has owned the trademarks over VANGUARD since 1975.
The Complainant complained that the domain name consists of its trademark, with a generic term, i.e., ‘Wealth’ added after it. The Respondent also operated a website on the disputed domain name that dealt with services that were directly in competition with the Complainant.
The domain name was registered in 2020. The Respondent hails from South Africa. However, he didn’t submit any response to the dispute.
The panel in an unexpected decision sided with the absent Respondent.The panel did acknowledge the trademarks rights of the Complainant. However, the panel claimed that the term VANGUARD was generic in nature. The panel also said that although the Complainant might be a huge global conglomerate, chances are slim that the Respondent in South Africa was actually aware of it. Finally the panel stated that the similarity between the functioning of both the company’s in no way meant that the services of the Respondent are not bona fide.
You can read the case in detail here.
It is really very surprising that the company which is managing trillions of investments all around the world is unable to protect their domain name still after filing UDRP and holding the trademark of their brand. The most important lesson from this case is that trademark owners should think twice before filing a UDRP complaint against a generic name, because trademark owners often lose these cases.