The Complainant is Equifax Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on September 17, 2021. 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.
On September 17, 2021, the Complainant made an unsolicited supplemental filing. On September 28, 2021, the Panel issued Procedural Order No.1, whereby the Respondent was invited to comment on the Complainant’s supplemental filing and to submit such comments to the Center no later than October 4, 2021. The Respondent did not file any comments.
Taking into account that the supplemental filing of the Complainant referred to a decision under the Policy that was issued on September 8, 2021 and involved the same complainant and the same trademark, and that the Respondent was given an opportunity but did not express any position in respect of it, the Panel decided to accept the supplemental filing and take into account in the present proceeding the decision referred to by the Complainant.
4. Factual BackgroundThe Complainant was incorporated in 1913. It is a global provider of information solutions and human resources business process outsourcing services. The Complainant operates or has investments in 24 countries in North, Central and South America, Europe, and the Asia Pacific region, and employs approximately 11,000 people worldwide. The Complainant’s common stock is traded on the New York Stock Exchange, and it is included in Standard & Poor’s 500 Index. One of the services offered by the Complainant is a credit reporting service that provides consumers with a summary of their credit history and other information, reported to credit bureaus by lenders and creditors.
On March 24, 2021, the Complainant announced its acquisition of i2Verify, an employment verification provider offering access to employment and wage data to verifiers who meet requirements for access under the Fair Credit Reporting Act, with a concentration in the healthcare and education sectors. Through T1 Ventures, Inc. (an alternate business name for i2Verify), i2Verify registered the domain name
The Complainant submits that it has acquired common law trademark rights in the I2VERIFY trademark, which have arisen after January 25, 2013 in connection with services in International Classes 35 and 42.
The disputed domain name was registered on June 25, 2021. It resolves to a parking webpage containing links to third party websites.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it has acquired common law trademark rights in the I2VERIFY trademark, which have arisen as a result of widespread continuous use of this trademark in interstate commerce since January 25, 2013, in connection with services in International Classes 35 and 42, including providing a service for use by employees to confirm employment eligibility status, access employment and wage data, block third parties from accessing employment and wage data, and receive notifications when data has been viewed or requested by third parties; providing a service for use by employers in responding to employment and wage verification requests; providing a service for use by banks, lenders, and government agencies for wage and employment verification for loan applicants and employees.
As evidence of its common law rights in the I2VERIFY trademark, the Complainant notes that at the time of its acquisition of i2Verify on March 24, 2021, i2Verify generated USD 5.2 million in annual revenue and employed 15 people, serving 75 clients that conduct business in most states of the United States, and submits evidence in this regard, as well as copies of news articles and webpages. The Complainant also notes that its i2Verify business operates social media accounts in YouTube, Facebook, and Twitter.
The Complainant further notes that a Google search for “i2verify” returns results that are prominently and exclusively for the Complainant, and the Respondent has been targeting the I2VERIFY trademark by using the disputed domain name in connection with a monetized parking webpage that at times has contained links with labels such as “FREE EMPLOYMENT VERIFICATION”, “NEW HIRE EMPLOYMENT FORMS”, and “Find Someones Birth Date” that are all related to the I2VERIFY trademark.
The Complainant states that the disputed domain name is confusingly similar to the I2VERIFY trademark, because it contains the I2VERIFY trademark in its entirety, merely substituting the letter “z” for the similar-looking number “2”. According to the Complainant, this substitution is an obvious form of typo-squatting that does not eliminate the confusing similarity with the trademark, and the overall impression made by the disputed domain name is that it is connected to the I2VERIFY trademark of Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent is not commonly known by the disputed domain name and has never acquired any trademark or service mark rights in it, and the Complainant has not authorized the Respondent to register or use the I2VERIFY trademark in any manner. The Complainant submits that the Respondent has used the disputed domain name, which consists of an obvious misspelling of the I2VERIFY trademark in connection with a monetized parking page containing commercial links to third-party websites that are related to the services offered by the Complainant under the I2VERIFY trademark, and thus the Respondent has failed to make a bona fide offering of goods or services under the Policy.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant points out that the Respondent registered the disputed domain name on June 25, 2021 shortly after the Complainant announced its acquisition of the i2Verify business. According to the Complainant, it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business. Rather, the Respondent’s motive in registering and using the disputed domain name was to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. The Complainant notes in this regard the similarity between the disputed domain name and the Complainant’s own domain name
As to the use of the disputed domain name, the Complainant submits that the use of the disputed domain name in connection with a monetized parking page containing commercial links to third-party offerings related to the services offered by the Complainant under the I2VERIFY trademark constitutes bad faith.
Finally, the Complainant submits that it sent a demand letter to Respondent on July 13, 2021, but the Respondent did not reply.
In its supplemental submission, the Complainant referred to the decision in Equifax Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-2375, where the Panel found that the Complainant had acquired common law or trade mark rights in the I2VERIFY trademark prior to May 2021.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
The Respondent has however not submitted a Response and has not disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly SimilarThe Complainant submits that it has acquired common law trademark rights in the I2VERIFY trademark, which have arisen as a result of widespread continuous use of this trademark in interstate commerce in the United States since January 25, 2013, in connection with services in International Classes 35 and 42. The Complainant notes in this regard that at the time of its acquisition of i2Verify on March 24, 2021, i2Verify generated USD 5.2 million in annual revenue and employed 15 people, serving 75 clients that conduct business in most states of the United States, and submits evidence, including copies of news articles and webpages. The Complainant also notes that its i2Verify business operates social media accounts in YouTube, Facebook and Twitter. The Complainant further notes that a Google search for the term “i2verify” returns results exclusively for the Complainant, and that the Respondent has been targeting the I2VERIFY trademark by using the disputed domain name in connection with a monetized parking webpage that at times has contained links with labels such as “FREE EMPLOYMENT VERIFICATION”, “NEW HIRE EMPLOYMENT FORMS”, and “Find Someones Birth Date” that are all related to the I2VERIFY trademark.
As discussed in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier. As noted in section 1.1.2 of WIPO Overview 3.0, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
The Complainant has referred to relevant evidence in this regard, which shows that the entity i2Verify has consistently used the I2VERIFY trademark in relation to the services offered by it since 2013, that it has achieved annual sales worth millions of US Dollars under this trademark, and that it has been featured in a number of media articles and industry-related websites. In addition, the evidence in the case shows that the website associated to the disputed domain name has indeed featured links to subjects that are related to the services offered under the I2VERIFY trademark. The Complainant has also provided evidence that it has acquired the business of i2Verify in March 2021, thus also acquiring the rights of i2Verify arising out of its use of the I2VERIFY trademark. The statements and the evidence submitted by the Complainant has not been challenged by the Respondent.
Therefore, the Panel is satisfied that the I2VERIFY trademark has become a source identifier on the market within which i2Verify operated, and that with the acquisition of i2Verify in March 2021 the Complainant had acquired rights in the I2VERIFY trademark prior to the date of registration of the disputed domain name. This conclusion is supported by the decision in Equifax Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-2375, which contains similar findings about the same complainant and the same trademark. Therefore, the Complainant has established its rights in the I2VERIFY trademark for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” TLD section of the disputed domain name.
The only difference between the relevant part of the disputed domain name is the letter “z” which stands in the place of the similar-looking number “2” in the I2VERIFY trademark. In the lack of any plausible explanation by the Respondent of its choice of domain name, the substitution of the number “2” by the letter “z” in the disputed domain name appears as a form of typo-squatting that does not eliminate the confusing similarity of the disputed domain name to the I2VERIFY trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the I2VERIFY trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it is not commonly known by the disputed domain name and has never acquired any trademark or service mark rights in it, and the Complainant has not authorized the Respondent to register or use the I2VERIFY trademark. The Complainant submits that the disputed domain name is an obvious misspelling of the I2VERIFY trademark and the Respondent has used it in connection with a monetized parking page containing commercial links to third-party websites, which are related to the services offered by the Complainant under the I2VERIFY trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. The Respondent has not provided any plausible explanation why it has chosen to register the disputed domain name. As discussed above, the disputed domain name appears as a typo-squatted version of the I2VERIFY trademark, and the evidence in the case shows that it has resolved to a website containing commercial links to third party websites with keywords related to the services offered under the I2VERIFY trademark.
In view of the above, and taking into account that the disputed domain name was registered soon after the Complainant announced its acquisition of the i2Verify business, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the I2VERIFY trademark, has registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the I2VERIFY trademark as to the affiliation or endorsement of the services offered through the links featured on the website at the disputed domain name. To the Panel, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name appears as a typo-squatted version of the I2VERIFY trademark, which creates the risk that Internet users may be led to wrongly believe that it is related to or endorsed by i2Verify, respectively by the Complainant. The associated parking webpage contains commercial links to third-party websites, which are related to the services offered under the I2VERIFY trademark. The Respondent has not submitted a Response and has not disputed the Complainants’ allegations in this proceeding or provided any plausible explanation why it has chosen to register the disputed domain name.
In view of the above, and in the lack of any contrary evidence, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the I2VERIFY trademark, has registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website and to the third party websites to which it contains links, by creating a likelihood of confusion with the I2VERIFY trademark as to the affiliation or endorsement of the Respondent’s website and of the services offered through it. This supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Assen Alexiev
Sole Panelist
Date: October 10, 2021