ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. Domains By Proxy, LLC / Aditya Roshni, Web Services Pty Case No. D2022-1877 1. The Parties 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 Domains By Proxy, LLC, United States / Aditya Roshni, Web Services Pty, India. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2022. On May 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 2022, 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 May 31, 2022 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 June 1, 2022. 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 June 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 5, 2022. The Center appointed Mariya Koval as the sole panelist in this matter on July 27, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of page 2 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. The Complainant is one of the three largest consumer credit reporting agencies, along with Experian and TransUnion (together known as the "Big Three"). Headquartered in Atlanta, Georgia, United States, the Complainant operates or has investments in 24 countries in North America, Central and South America, Europe and the Asia Pacific region. The Complainant is a member of Standard & Poor's 500 Index, and its common stock is traded on the New York Stock Exchange under the symbol EFX. The Complainant employs approximately 11,000 people worldwide. The Complainant owns at least 221 EQUIFAX trademark (the "EQUIFAX Trademark") registrations in at least 56 jurisdictions around the world, among which are: - United States Trademark Registration No. 1,027,544, registered on December 16, 1975, in respect of services in class 36; - United States Trademark Registration No. 1,045,574, registered on August 3, 1976, in respect of services in class 35; - United States Trademark Registration No. 1,644,585, registered on May 14, 1991, in respect of services in classes 35, 36, and 42. The Complainant operates the domain name (registered on February 21, 1995) reflecting its EQUIFAX Trademark in order to promote its services. The Disputed Domain Name was registered on January 1, 2004. As at the date of this decision, the Disputed Domain Name does not resolve to an active website. However, in accordance with evidence presented by the Complainant (Annex 7 to the Complaint) the Respondent used the Disputed Domain Name by redirecting it to a variety of rotating websites, including websites that state the Disputed Domain Name is for sale, an unrelated e-commerce website, and a blank page. 5. Parties' Contentions A. Complainant The Complainant asserts that it has prevailed in numerous proceedings under various domain name dispute policies for domain names that are identical or confusingly similar to the EQUIFAX Trademark, including the UDRP. The Complainant contends that the Disputed Domain Name is identical or confusingly similar to its EQUIFAX Trademark in view of the Disputed Domain Name contains the EQUIFAX Trademark in its entirety, simply omitting the letter "i". The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name in view of the following: - 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 redirecting the Disputed Domain Name to a variety of rotating websites, including websites that state the Disputed Domain Name is for sale, an unrelated e-commerce website, and a blank page, the Respondent has failed to create a bona fide offering of goods or services under the Policy; page 3 - to the Complainant's knowledge, the Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. The Complainant also claims that the Disputed Domain Name was registered and is being used in bad faith. The EQUIFAX Trademark is clearly famous and/or widely known, given that it is protected by at least 221 Trademark registrations in at least 56 jurisdictions worldwide, the oldest of which was used and registered 47 years ago. The Complainant further asserts that because of the Disputed Domain Name is "so obviously connected with" the Complainant, the Respondent's actions suggest "opportunistic bad faith" in violation of the Policy. The Respondent at times is not using the Disputed Domain Name in connection with an active website. The Respondent used the Disputed Domain Name by redirecting it to a variety of rotating websites, including websites that state the Disputed Domain Name is for sale, an unrelated e-commerce website, and a blank page. The EQUIFAX Trademark is very distinctive and has a strong reputation, given that it has been registered for 47 years, is protected by at least 221 trademark registrations in at least 56 jurisdictions worldwide, and is used by a public company that employs approximately 11,000 people worldwide. The Respondent has concealed its identity by using a privacy service and it is impossible to identify any good faith use to which the Disputed Domain Name may be put. Moreover, by offering to sell the Disputed Domain Name, the Respondent has clearly registered it primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant who is the owner of the EQUIFAX Trademark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name, further establishing bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant to succeed must satisfy the panel that: (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. A. Identical or Confusingly Similar The Complainant has properly asserted its rights in the EQUIFAX Trademark due to the long use and number of registrations globally. The Disputed Domain Name reproduces the EQUIFAX Trademark in its entirety with omission of the letter "i", and the generic Top-Level Domain ("gTLD") ".net". The Disputed Domain Name is a plain example of "typosquatting" when the spelling of a trademark has been minimally changed by the omission of one letter. In fact, it seems as if the Respondent intentionally chose to omit the letter "i" for confusing similarity with the Complainant's EQUIFAX Trademark and consequently - for deception of Internet users. According to the section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition page 4 ("WIPO Overview 3.0"), a domain name which consists of a common, obvious, or intentional misspelling of a trademark is normally considered by panels to be confusingly similar to the relevant mark for purposes of the first element. It is also well established that the gTLD, in this case ".net", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's EQUIFAX Trademark and that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Complainant has used its EQUIFAX Trademark for more than 45 years and its domain name ˂equifax.com˃ - since 1995, which is long before the Respondent registered the Disputed Domain Name in 2004. Taking into consideration the long use of the Complainant's Trademark, it is impossible to assume that the Respondent was unaware of the Complainant's Trademark at the time of registration of the Disputed Domain Name. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has never authorized in any way, licensed, or permitted the Respondent to use its EQUIFAX Trademark. In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. Taking into account the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than 25 years after the EQUIFAX Trademark had been registered. There is no evidence that the Respondent owns any EQUIFAX Trademarks, nor that it is commonly known by the Disputed Domain Name. Therefore, the Respondent has failed to come forward with any evidence to rebut such prima facie case. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name previously resolved to a page with redirection to a variety of rotating websites, including websites that state the Disputed Domain Name is for sale, an unrelated e-commerce website, and a blank page. The Panel cannot consider such commercial use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel finds that the second element of the UDRP has been met by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you [respondent] 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 page 5 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. Taking into consideration that the EQUIFAX Trademark has been in use more than 45 years and that the Complainant has spent huge amounts and efforts for promotion of its EQUIFAX Trademark, which is undoubtedly globally known, the Panel considers it is clear that the Respondent was well aware of the Complainant and its EQUIFAX Trademark at the time of registration of the Disputed Domain Name. Moreover, the Disputed Domain Name, incorporating the Complainant's EQUIFAX Trademark in its entirety but for omission of one letter "i", is clearly deceptive for the Internet users with respect to the person rendering the services. The Disputed Domain Name incorporates the Complainant's EQUIFAX Trademark almost in its entirety which creates a likelihood of confusion with the Complainant's EQUIFAX Trademark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. Furthermore, the Disputed Domain Name, reproducing the Complainant's EQUIFAX Trademark almost in its entirety is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant's EQUIFAX Trademark, for the only purpose of attracting Internet users to the competing websites by creating a likelihood of confusion with the Complainant's EQUIFAX Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and of the products sold on it. In addition, according to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is of the opinion that it is clear that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the Complainant's well-known EQUIFAX Trademark, intended to disrupt the Complainant's business. In view of the absence of any evidence to the contrary and that the Respondent did not file any response to claim otherwise, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant. page 6 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 Disputed Domain Name be transferred to the Complainant. /Mariya Koval/ Mariya Koval Sole Panelist Date: August 10, 2022
Full & Egal Universal Law Academy