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 Super Privacy Service LTD c/o Dynadot, United States / Babacan Gunduz, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2021, 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 November 22, 2021.
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 November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 4, 2022. 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 United States incorporated, NYSE listed company that operates a business with approximately 11,000 employees providing information solutions and human resources business process outsourcing services worldwide. The Complainant holds a portfolio of registrations for the trademark EQUIFAX including United States Trademark Registration No. 1,027,544 registered on December 16, 1975.
The Complainant owns the domain name
The Complainant filed United States Trademark application No. 97052221 for the mark: EQUIFAXPLUS, on September, 29, 2021.
The Disputed Domain Name
The Complainant cites its United States Trademark Registration No. 1,027,544 registered on December 16, 1975 and more than 220 other registrations in at least 56 jurisdictions around the world, for the mark EQUIFAX as prima facie evidence of ownership.
The Complainant submits that the mark EQUIFAX is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the EQUIFAX trademark and that the similarity is not removed by the addition of the word “plus”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent is not a licensee of the Complainant; is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy; and given the redirection of the Disputed Domain Name to a website offering the Disputed Domain Name for sale, has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior trademark application filed by the Complainant for the mark EQUIFAX on September 29, 2021 only three days earlier than the registration of the Disputed Domain Name, and prior use of the Complainant’s trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark EQUIFAX in numerous jurisdictions including the United States and many other jurisdictions. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the EQUIFAX trademark, the Panel observes that the Disputed Domain Name comprises: (a) the Complainant’s trademark EQUIFAX; (b) followed by the word “plus”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,
WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “equifaxplus”.
In the absence of a reply, and in line with previous Panel decisions, the Panel finds that the relevant trademark is recognizable within the Disputed Domain Name, and the addition of the word “plus” does not prevent a finding of confusing similarity under the first element. (see: F. Hoffmann-la Roche AG v. Popo,
WIPO Case No. D2008-0423; WIPO Overview 3.0, section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name EQUIFAX, and has not been commonly known by the name EQUIFAX; and (iii) the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain as by offering to sell the Disputed Domain Name for USD 1.288,00, the Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name.
The redirection of the Disputed Domain Name to a website offering the Disputed Domain Name for sale for an amount that far exceeds the Respondent’s out-of-pocket expenses does not constitute a bona fide offering of goods or services, rather the Respondent is attempting to unfairly capitalize on the reputation and goodwill of the Complainant’s trademark. The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a Response by the Respondent, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Complainant’s trademark EQUIFAX is well-known and that the Respondent knew of the Complainant’s trademark when it registered the Disputed Domain Name (see Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd.,
WIPO Case No. D2015-0880 (“Complainant is an international business with a well-known mark”); Equifax Inc. v. WhoisGuard, Inc. / Dress Rwesss,
WIPO Case No. D2018-2309 (“inconceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s … trademark”).
This Panel regards the Respondent’s registration of the Disputed Domain Name on October 2, 2021, only three days after the Complainant filed United States Trademark application No. 97052221 for the mark: EQUIFAXPLUS on September 29, 2021, as further evidence of bad faith.
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name, some 46 years after the Complainant established trademark rights in the EQUIFAX mark.
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website, but rather a passive website where it is offered for sale for USD 1.288,00. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “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” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these four factors are present in this proceeding. This Panel finds that use of the Disputed Domain Name to resolve to a passive website is also evidence of bad faith.
There is also evidence that the Disputed Domain Name has been offered for sale for a sum in excess of the Respondent’s out of pocket costs. In the absence of a response, there is no evidence justify any additional costs that may have been incurred in operating or developing a business that involves the Disputed Domain name. The Panel finds it likely that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name, which is further evidence of bad faith (see WIPO Overview 3.0 at Section 3.1.1).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark EQUIFAX and added the word “plus” into the Disputed Domain Name, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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,
Nicholas Weston
Sole Panelist
Date: January 14, 2022