The Complainant is Equifax Inc. of Atlanta, Georgia, United States of America (“USA”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Dress Rwesss of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 16, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on November 9, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers. It was originally incorporated under the laws of the State of Georgia (USA) in 1913, and its predecessor company dates back to 1899. The Complainant is headquartered in Atlanta, Georgia and operates or has investments in 24 countries in North America, Central and South America, Europe and the Asia Pacific region. It employs 10,400 people worldwide.
The Complainant is the registrant of the domain name , which was created on February 20, 1995 and is used in connection with its primary website.
The Complainant or its affiliates own 204 trademark applications or registrations in the USA and around the world for marks that consist of or contain the word “Equifax,” which was first used in commerce and registered in 1975. The Complainant owns 14 registrations for the EQUIFAX Trademark in the USA, including Registration No. 1,027,544, (for EQUIFAX), first used in commerce on March 4, 1975 and registered on December 16, 1975.
The Domain Name was created on August 23, 2018, some 43 years after the Complainant first used the EQUIFAX trademark and 23 years after the Complainant registered the domain name .
The Domain Name was previously used in connection with a website that simply copied the Complainant’s own website. After the Complainant sent a demand letter regarding the Domain Name, the Respondent took down the copy website and it is not currently being used in connection with an active website.
The Respondent has registered other domain names containing well-known trademarks of unrelated third parties, including , and . 5. Parties’ Contentions A. Complainant
The following is a brief summary of the main contentions of the Complainant.
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))
Several previous panels under the Policy have found that the Complainant has rights in the EQUIFAX trademark.
The Domain Name contains only the EQUIFAX Trademark. The generic Top-Level Domain (“gTLD”) “.fun” is to be viewed as a standard registration requirement and as such disregarded for the purposes of analysis.
The Domain Name is identical or confusingly similar to the EQUIFAX trademark for the purposes of the Policy.
The respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trademark in any manner.
By failing to use the Domain Name in connection with an active website, the Respondent clearly has not used it “in connection with a bona fide offering of goods or services” and therefore cannot establish rights or legitimate interests for the purposes of paragraph 4(c)(i) of the Policy.
Passive holding of a domain name does not constitute a bona fide offering of goods or services.
By previously using the Domain Name in connection with a website that simply copied the Complainant’s own website, the Respondent is not engaged in a bona fide offering of goods or services under the Policy.
The Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name. The Respondent cannot therefore establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
The registrant of the Domain Name is not “Equifax” or anything similar and thus the Respondent is not commonly known by the Domain Name or any variation thereof. Moreover, given the Complainant’s use of the EQUIFAX trademark for 43 years and its numerous trademark registrations it is practically impossible that the Respondent is commonly known by the EQUIFAX trademark.
The Domain Name was previously used in connection with a website that simply copied the Complainant’s website and is not being used in connection with an active website, and thus the Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”(paragraph 4(c)(iii) of the Policy).
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Given the global reach and popularity of the Complainant’s services under the EQUIFAX trademark, as well as the Domain Name’s similarity to the Complainant’s own domain name , it is inconceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business.
The Respondent’s motive appears to be to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain.
Bad faith also exists under the doctrine of “passive holding” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3) in that: the EQUIFAX Trademark is very distinctive and has a strong reputation given that it has been used for 43 years, is protected by 204 trademark applications or registrations, is used by a public company that employs 10,400 people worldwide and has been recognized by numerous previous domain name dispute decisions; the Respondent has not replied to the Complainant’s previous communications and is unable to provide any evidence of actual or contemplated good-faith use; the Respondent concealed its identity; and it is impossible to identify any good faith use to which the Domain Name may be put given that it is identical to the Complainant’s EQUIFAX trademark and further, that it was previously used in connection with a website that copied the Complainant’s own website.
By previously using the Domain Name in connection with a website that falsely appeared to be a website for, or otherwise associated with the Complainant, the Respondent intentionally used the Domain Name to profit from the Complainant’s trademark. The confusion created by the Domain Name makes potential customers choose other services than those of the Complainant, disrupting the Complainant’s business.
Given that the Complainant’s first trademark registrations in the USA for the EQUIFAX trademark were issued in 1975, the Respondent had constructive notice of the EQUIFAX trademark and, accordingly, has acted in bad faith.
The Complainant has a very strong, well-established, worldwide reputation, and the EQUIFAX trademark is strong and distinctive. This, combined with the Respondent’s previous use of the Domain Name (i.e., the copy website), makes clear that the Respondent was aware of the EQUIFAX trademark.
As the Domain Name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith in violation of the Policy.
Finally, the Respondent is a serial cybersquatter who has registered multiple domain names containing well‑known trademarks of unrelated third parties, including , and . The Complainant contends that the Panel should find bad faith because the Respondent has “engaged in a pattern of such conduct” pursuant to paragraph 4(b)(ii) of the Policy, by registering not only the Domain Name but also others.
Accordingly, the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
Following the Center’s communication to the Complainant on October 15, 2018 providing the registrant and contact information disclosed by the Registrar, the Complainant added Dress Rwesss of Delhi, India as a further Respondent together with the original Respondent, WhoisGuard, Inc. of Panama. A. Identical or Confusingly Similar
The Complainant clearly has rights in the EQUIFAX Trademark for the purposes of the Policy.
Ignoring the gTLD “.fun”, the Domain Name consists only of the Complainant’s EQUIFAX trademark.
The Panel finds that the Domain Name is identical to the Complainant’s EQUIFAX Trademark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would, in any way, be inappropriate.
A respondent can show it has rights to, or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue.
Here, however, the Respondent is not known by the Domain Name. Further, no positive use is currently being made of the Domain Name, let alone legitimate noncommercial or fair use. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely in fact that a false impression of association with the Complainant not only arose on the setting up of the copy website but would arise again with any other active use due to the nature of the Domain Name.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services (and was doing so before any notice of the dispute). However, there is no evidence of any present active use, let alone an offering of goods or services, bona fide or otherwise. In any event, it is difficult to conceive of an offering of goods or services (using the Domain Name) without creating the wrongful impression of association with the Complainant due to the nature of the Domain Name. It almost goes without saying that the past use, namely the copy website, given the inherent misrepresentation, could not constitute a bona fide offering of goods or services.
Given that the Domain Name is identical to the Complainant’s EQUIFAX trademark, it seems inconceivable that any legitimate use could be made of the Domain Name without permission of the Complainant. Any use is likely to result in the impression of association with the Complainant. No explanation for registration has been provided by the Respondent and it seems very unlikely that it would have chosen the Domain Name unless intending to seek some advantage by creating an impression of association with the Complainant.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Policy sets out a number of grounds upon which a finding of bad faith registration and use may be based. It is a non-exhaustive list, but a very useful guide as to what might constitute bad faith registration and use.
One of the grounds described is the presence of evidence of the respondent registering the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Complainant has provided three examples of the Respondent Dress Rwesss’s other domain name registrations containing well-known trademarks of unrelated third parties, namely , and . The Panel is satisfied that this provides a pattern of registrations for the purposes of the Policy. Given the Respondent Dress Rwesss’s undoubted appreciation of the importance of trademarks, it is inevitable that it would have been actually (as opposed to constructively) aware of the Complainant’s EQUIFAX trademark and equally aware that registration of the Domain Name would make it impossible for the Complainant to reflect its EQUIFAX trademark in its own “.fun” domain name.
The fact that the Respondent is (presently) passively holding the Domain Name does not prevent a finding of bad faith registration and use. UDRP Panels must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. WIPO Overview 3.0, section 3.3 states:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
The Domain Name is identical to the EQUIFAX trademark and thus most if not all of the (non-exhaustive) factors identified in WIPO Overview 3.0, section 3.3 are satisfied. Accordingly, the passive holding or non-use of the Domain Name in the circumstances of this Complaint supports a finding of bad faith.
Given the Respondent’s undoubted awareness of the EQUIFAX trademark (particularly in the light of the copy website it set up, albeit later abandoned), there can be little doubt that the Respondent has sought to interfere with the Complainant’s relationship with its customers or potential customers, and has attempted to attract Internet users by misleading them as to the true nature of its copy website, thereby disrupting the Complainant’s business presumably for some potential gain.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: November 19, 2018
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