The Complainant is Equifax Inc., United States of America (“U.S.”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, U.S.
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 November 16, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 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 November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2021.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on December 27, 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 BackgroundGiven that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is a global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers, headquartered in the U.S.
The Complainant is the owner of numerous trade marks for EQUIFAX including the following:
- U.S. trade mark EQUIFAX n°1027544 registered on December 16, 1975, for services in class 36.
The Complainant is also the owner of several domain names reflecting its trade mark, including the domain name
The Domain Name was registered on September 24, 2004. According to the evidence included in the case file, the Domain Name used to redirect to the website of a direct competitor of the Complainant, and at the time of the Decision, the Domain Name triggered an error message when the Panel tried to access the associated website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to the EQUIFAX trade mark in which the Complainant has rights. According to the Complainant, the Domain Name is a deliberate misspelling of the Complainant’s EQUIFAX trade mark as it only differs from the EQUIFAX trade mark by one additional character, the letter “i”. The Complainant also highlights that the addition of the generic Top-Level Domain (“gTLD”) “.com” is merely a registration requirement and that it should be disregarded for the purpose of assessing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trade mark in any manner. The Complainant also points to the use of the Domain Name to redirect Internet users to the website of a direct competitor of the Complainant to conclude that such use is neither a bona fide offering of goods or services under the Policy nor a legitimate noncommercial or fair use of the Domain Name. Finally, the Complainant submits that to the Complainant’s knowledge, the Respondent has never been commonly known by the Domain Name and has never acquired any trade mark or service mark rights in the Domain Name.
The Complainant contends that it is implausible that the Respondent would have been unaware of the Complainant when registering the Domain Name given the fame of the trade mark EQUIFAX of the Complainant. The Complainant adds that the Domain Name is so obviously connected with the Complainant, that the Respondent’s actions suggest opportunistic bad faith in violation of the Policy. The Complainant also submits that by using the Domain Name to redirect visitors to a website for a direct competitor of the Complainant, the Respondent is clearly creating a likelihood of confusion with the EQUIFAX trade mark constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy. Finally, the Complainant highlights the fact that its EQUIFAX trade mark significantly predates the registration of the Domain Name. The Complainant thus considers that the Domain Name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.
A. Identical or Confusingly SimilarIn light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in EQUIFAX.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark EQUIFAX in which the Complainant has rights.
At the second level, the Domain Name consists of the term “eqiuifax”. The Panel finds that upon carrying out a side-by-side comparison of the Domain Name and the textual components of the trade mark EQUIFAX, the Domain Name is confusingly similar to the Complainant’s trade mark. The only difference is the addition of one letter “i” between the second and third letter of the EQUIFAX trade mark. The Panel finds that this one character difference between the trade mark EQUIFAX and the Domain Name does not prevent the confusing similarity between the Complainant’s trade mark and the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. Furthermore, recognizability of the Complainant’s trade mark in the Domain Name is also confirmed by technological means as, when searching for the term “eqiuifax” via Google, all results triggered relate to the trade mark EQUIFAX.
Then there is the addition of the gTLD “.com”. As is widely accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or
(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by demonstrating its rights or legitimate interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.
The Complainant has stated that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trade mark in any manner. There is no evidence that the Respondent is commonly known by the Domain Name especially given that the Respondent chose not to respond.
The Domain Name was used to redirect to the website of a direct competitor of the Complainant. This use of the Domain Name cannot be seen as a legitimate noncommercial or fair use of the Domain Name nor can it be seen as a bona fide offering of goods or services. See section 2.5.3 of the WIPO Overview 3.0. The Panel is satisfied that the Respondent is using the Domain Name to exploit the goodwill of the Complainant’s trade mark, with an intent for commercial gain and to misleadingly divert consumers.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.
The Domain Name is confusingly similar to the trade mark EQUIFAX of the Complainant and this cannot be a coincidence.
The trade mark EQUIFAX of the Complainant is not a descriptive or common term and the Complainant has substantiated that it has registered many EQUIFAX trade marks, in many jurisdictions, many of them predating the registration of the Domain Name. In light of this, the Panel finds it inconceivable that the Respondent would not have been aware of the Complainant and its trade mark at the time of registration of the Domain Name. The Panel finds that when registering the Domain Name, the Respondent had the Complainant’s trade mark in mind and targeted it specifically by registering the Domain Name which is a deliberate misspelling of the Complainant’s EQUIFAX trade mark (the letters “i” and “u” are next to each other on AZERTY and QWERTY keyboards).
Thus, the Panel finds that the Domain Name was registered in bad faith.
As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.
The Domain Name was used to redirect to the website of a direct competitor of the Complainant. The Panel thus considers that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website.
As for the current use of the Domain Name, the Panel tried to access the website associated with the Domain Name but the Internet browser used by the Panel triggered an error message. In any event, passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the renown of the Complainant’s EQUIFAX trade mark.
The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is being used in bad faith.
Finally, this is further supported by the fact that the Respondent chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
Thus, the Panel finds that the Domain Name is being 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 Domain Name,
Vincent Denoyelle
Sole Panelist
Date: January 10, 2022