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 Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 8, 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 for the disputed domain names.
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 September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2021.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on October 15, 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.
4. Factual BackgroundThe Complainant is a leading global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers.
Equifax Inc. was originally incorporated under the laws of the State of Georgia (United States) in 1913.
The Complainant operates or has investments in 24 countries in North America, Central and South America, Europe and the Asia Pacific region and employs approximately 11,000 people worldwide.
The Complainant is the owner of several trademark registrations which consist of or contain the word EQUIFAX, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain names, which were registered between 2019 and 2021. Amongst others, United States trademark registration no. 1,027,544, EQUIFAX, registered on December 16, 1975.
The Complainant is the registrant of the domain name
The disputed domain names and their registration dates are below indicated:
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The disputed domain names resolve to monetized parking pages with pay-per-click (“PPC”) links.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain names are identical and/or confusingly similar to its EQUIFAX trademark as they incorporate the whole trademark.
The disputed domain names also include one or more additional words or typographical variations thereof (“emy,” “me,” “mey,” “my, “account,” and “accout”).
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. The addition of other terms in the domain name may not affect finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain names to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Complainant requests that the disputed domain names be transferred to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarIn the present case, the disputed domain names incorporate the word “equifax”, which is identical to the Complainant’s registered well-known trademark EQUIFAX.
It is clear that the disputed domain names incorporate EQUIFAX trademark to which the terms “emy,” “me,” “mey,” “my, “account,” and “accout” have been added.
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189; and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011-2121. “The additional word ‘environment’ following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid finding of confusing similarity of the disputed domain names with the Complainants’ trademarks.”; see also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore concludes that the disputed domain
The Panel finds the first element of the Policy has therefore been met.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain names.
The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain names incorporating the Complainant’s EQUIFAX trademark.
The Panel finds that the Respondent has registered the disputed domain names attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant contends that the Respondent’s registration and use of the disputed domain names is in bad faith, which the Respondent did not to rebut.
On the evidence adduced, it is improbable that the registrant of the disputed domain names was unaware of the Complainant’s name, trademark, reputation and goodwill when the disputed domain names were chosen and registered.
The Complainant has demonstrated that the disputed domain names resolve to monetized parking pages that include affiliate PPC links for services related to the Complainant and the EQUIFAX trademark.
By using the disputed domain names in connection with monetized parking pages, the Respondent’s actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. (Aetna Inc. v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2018-0487).
On the basis of the above, noting also the nature of the disputed domain names, the Panel finds that the Respondent registered the disputed domain names to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks and domain names with the intention to use them for some illegitimate purpose.
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain names were registered and have been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last element of the Policy, paragraph 4(a)(iii).
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 names,
Eva Fiammenghi
Sole Panelist
Date: October 29, 2021