ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. Hanna El Hinn, Dot Liban Case No. D2022-3492 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 Hanna El Hinn, Dot Liban, Lebanon. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with eNom, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2022. On September 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 21, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 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 September 26, 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 September 29, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2022. The Respondent sent an informal email to the Center on October 10, 2022 which it said was its defense to the proceeding. The Complainant submitted a supplemental filing on October 11, 2022 which objected to the Respondent's email of October 10, 2022 page 2 (see further below). The Respondent sent to the Center a further email on October 28, 2022 in response to the Complainant's Supplemental Filing. The Center appointed Nick J. Gardner as the sole panelist in this matter on October 27, 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 Background The relevant facts can be summarized as follows. The Complainant is a global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers. 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 trademarks which consist of or include the word EQUIFAX in at least 56 jurisdictions around the world (see for example United States Trademark Registration No. 1,027,544, registered on December 16, 1975, in respect of services in class 36). These trademarks are referred to as the EQUIFAX trademark in this decision. The Complainant's principal website is linked to the domain name which was registered on February 21, 1995. The Disputed Domain Name was registered on March 16, 2002. It resolves to a website which contains what appear to be "pay-per-click" ("PPC") links to third party websites. 5. Parties' Contentions A. Complainant The Complainant has filed a very detailed Complaint citing numerous previous UDRP decisions. The Panel does not consider it necessary to repeat every point made by the Complainant. In summary the Complainant's case is as follows. 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 "a". 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; page 3 - by linking the Disputed Domain Name to a PPC website the Respondent has failed to create a bona fide offering of goods or services under the Policy; - 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 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. The Complainant by its amendment to the Complaint alleges that the Respondent is a "serial cybersquatter" and identifies the following previous UDRP decisions: Hotwire, Inc. v. Hanna El Hinn, Dot Liban, WIPO Case No. D2015-2082; Expedia, Inc. v. Ixpedia.Com (Hanna El Hinn dba Dot Liban dba Ixpedia.Com), WIPO Case No. D2002-0900; and Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433; In its unsolicited further filing of October 11, 2022 the Complainant identifies two further relevant UDRP decisions. The Panel will allow this Supplemental Filing (see below for the Panel's reasoning in this regard). The decisions are as follows: Germanwings GmbH v. Web Registration Service Dot Liban /Elias Skander, WIPO Case No. D2006-1124; and Enterprise Holdings, Inc. v. enterprie.com / Hanna El Hinn, Forum Claim No. 1398859. The Complainant says that notably, all five of these decisions against the Respondent follow the same pattern as the instant proceeding because they each contain a domain name that differs by only a single character from the relevant trademark (either by deleting a character or replacing it with another character). This makes clear that the Respondent's explanation regarding the Disputed Domain Name - that it "refers to fair foreign exchange" - is nothing more than a pretext intended to justify cybersquatting. The Complainant says that the PPC links that appear on the Respondent's website are unrelated to such professed "fair foreign exchange," rendering this explanation entirely unbelievable. B. Respondent The Panel will exercise its discretion to treat the Respondent's email of October 10, 2022 as the Response. It reads as follows: "In reference to the above complaint our defense is the following: This is a clear case of reverse domain name hijacking . The abbreviation "fx" refers to foreign exchange while the abbreviation "equi" refers to things being equitable of [sic] fair. The domain name refers to fair foreign exchange. The complainant after twenty years after our registration of the above domain name is trying to hijack our domain name using UDRP. There are many examples of reverse domain name hijacking RDNH. In fact in June 2022 UDRP celebrated its 500th decision deeming a case as one of RDNH. page 4 Whether the examples that the complainant presents in his amendment were of typo squatting or not this does not change the fact that the complainant is trying to steal our domain name above through RDNH. The complainant even admits that the domain was never used in conjunction with his business or a similar one. After twenty years of indirectly alleging to having diluted his own trademark the complainant is trying to take our domain name using a crooked method. We strongly urge you to decide in our favour and reject the claim of the complainant based on our above argument. We have been using this domain in a bona fide offering of goods and Serivices [sic] as the exhibit of the complainant shows and as he rightfully admits". The Panel will also in its discretion allow the Respondent's further email of October 28, 2020 to be taken into account (see below for discussion of this issue). It reads as follows: "The complainant's case has no merit or leg to stand o [sic]. They keep using old cases that are not related to us to show bad faith. They lived with this domain name for twenty years. Suddenly they realized they could reverse hijack this name. The cases they refer to do not have to belong to us. Anyone could use our name to register a domain hence a fake name. It happens all the time. All that they are saying is "give us this domain because domains with the same registrant's name have been lost in UDRP cases". We should keep this domain by your esteemed decision". 6. Discussion and Findings Preliminary Matters - Supplemental Filings The Panel will admit the Complainant's Supplemental Filing as it related to matters which post-dated the Complaint, specifically the Complainant was not able to identify previous cases allegedly involving the Respondent when the Complaint was filed as the Respondent's identity was redacted. It is true that in the amendment to the Complaint, which was filed after the Respondent's identity had been disclosed, the Complainant identified three such cases, but the Panel considers it fair to allow the Complainant further time in which to identify any additional cases in this regard, given the amendment will likely have been prepared on short notice. The remainder of the Complainant's supplemental filing objects to the Respondent's email of October 10, 2022 on various procedural grounds. The Panel will admit these objections for consideration but does not find that these prevent the Panel exercising its discretion to treat the email as a Response, particularly given the Respondent is unrepresented. Having allowed the Complainant's Supplemental Filing the Panel will in fairness also take into account the contents of the Respondent's email of October 28, 2022. Preliminary Matters - Respondent Identity The Panel also notes this is a case where the Complaint as originally filed identified as the Respondent REDACTED FOR PRIVACY / REDACTED FOR PRIVACY. This does not appear to be use of a separate privacy or proxy service but rather a simple redaction by the Registrar of the Respondent's identity as provided when he registered the Disputed Domain Name. After Registrar disclosure of the Respondent identity, the Complainant amended the Complaint to identify Dot Liban / Hanna El Hinn as a Respondent. When it did so, it expressly requested that Dot Liban / Hanna El Hinn be added as a Respondent in addition to the originally named Respondent, "REDACTED FOR PRIVACY / REDACTED FOR PRIVACY." In these circumstances the Panel considers the substantive Respondent to be Dot Liban / Hanna El Hinn. However references to the Respondent are to that person and, if necessary, also to the originally identified Respondent of REDACTED FOR PRIVACY / REDACTED FOR PRIVACY. page 5 Preliminary Matters - Delay The Panel also notes that the Disputed Domain Name has been held by the Respondent since 2002 without the Complainant taking any action. The Respondent appears to rely upon this fact. The Panel has therefore considered whether this issue should prevent the Complaint now proceeding. The Panel in this regard agrees with the generally accepted approach of panels as set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at 4.17 as follows: "Does 'delay' in bringing a complaint bar a complainant from filing a case under the UDRP? Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay." In the present case, there is no evidence of the Respondent carrying out any business activity under the Disputed Domain Name. Although a significant period has elapsed, there is therefore no evidence at all before the Panel of any sort of detriment to the Respondent still less any evidence of detrimental reliance. The Panel therefore finds that the passage of time is not a reason that prevents the Complaint being dealt with on its merits (see below). Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the EQUIFAX trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely: "Is a domain name consisting of a misspelling of the complainant's trademark (i.e., typosquatting) confusingly similar to the complainant's mark? A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant page 6 mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant. Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers." The Panel considers the same principles apply to omission of a single letter when the resulting character string remains manifestly still similar to the trademark in question - as is the case with "equifx" and EQUIFAX. It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the EQUIFAX trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation. It is also a term which as far as the Panel is aware has no meaning save in relation to the Complainant. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, 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 has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the EQUIFAX trademark. The Complainant has prior rights in the EQUIFAX trademark which precede the Respondent's acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. In the 20 years that the Respondent has owned the Disputed Domain Name there is no evidence that it has been used by the Respondent save in relation to what appears to be an automatically generated PPC website. That is not in the Panel's opinion sufficient to establish a legitimate interest. Insofar as the Respondent says that the Disputed Domain Name was chosen because it was a reference to "fair foreign exchange" there is no evidence of it ever having been used in any page 7 way in connection with that claimed meaning. In any event the Panel doubts the veracity of the Respondent's explanation in this regard, for reasons discussed below in relation to bad faith. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (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 web site 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 your web site or location or of a product or service on your web site or location. The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant's mark, and the Respondent derives commercial gain as a result. The website linked to the Disputed Domain Name comprises a series of PPC links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and "click through" to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns "click through" linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. See also WIPO Overview 3.0 section 3.5: "Can third-party generated material "automatically" appearing on the website associated with a domain name form a basis for finding bad faith? Particularly with respect to "automatically" generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith". In reaching this conclusion, the Panel has considered carefully the Complainant's allegation that the Respondent is a "serial cybersquatter" and the Respondent's denial of that allegation. The Complainant page 8 identifies five cases in this regard. The Respondent denies these cases are anything to do with him, saying "The cases they refer to do not have to belong to us. Anyone could use our name to register a domain hence a fake name. It happens all the time". Looking at the cases cited by the Complainant: In Hotwire, Inc. v. Hanna El Hinn, Dot Liban, WIPO Case No. D2015-2082 the named respondent is identical to the Respondent in the present case (i.e. Hanna El Hinn, Dot Liban). The domain name at issue was and the trademark relied upon was "hotwire". In Expedia, Inc. v. Ixpedia.Com (Hanna El Hinn dba Dot Liban dba Ixpedia.Com), WIPO Case No. D2002-0900 the named respondent is almost identical to the Respondent in the present case (i.e. Hanna El Hinn dba Dot Liban dba Ixpedia.Com as opposed to Hanna El Hinn, Dot Liban). The domain name at issue was and the trademark relied upon was "expedia". Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433 the named respondent is partially identical to the Respondent in the present case (i.e. Hanna El Hinn as opposed to Hanna El Hinn, Dot Liban). The domain names at issue were , , , and and and the trademark relied upon was "germanwings". In Enterprise Holdings, Inc. v. enterprie.com / Hanna El Hinn, Forum Claim No. 1398859 the named respondent is partially identical to the Respondent in the present case (i.e. Hanna El Hinn as opposed to Hanna El Hinn, Dot Liban). The domain name at issue was and the trademark relied upon was "enterprise". In all of the above cases save for Forum claim No. 1398859, the respondents' address is given as being in Montreal, Canada. In Forum claim No. 1398859 the respondent's address is given as simply Canada. In the present case the Respondent's address is in the Lebanon. The Panel does not have access to the evidential record in relation to the previous cases so is unable to identify whether any other similarities in relation to respondent data (such as email addresses or telephone numbers) are present. The name Hanna El Hinn, Dot Liban does not strike the Panel as particularly common or as obviously likely to be fictitious (contrast for example John Smith or John Doe) and the Panel thinks that the Respondent's explanation that someone else was using the same name seems unlikely, at least without further explanation as to how that may have come about. There is however the disparity in address to be taken into account. The Panel agrees with the Complainant that the pattern of domain names involved in all of these cases is significant. They all involve the taking of a trademark and then altering it by changing or omitting a single letter. Taking all of the available evidence into account the Panel's concludes that it is more likely than not that all of these cases (with the possible exception of WIPO Case No. D2006-1124 where the respondent's name follows a somewhat different pattern) involve the present Respondent. That being so the Panel concludes that the Respondent has been engaged in a pattern of deliberately registering domain names which are confusingly similar to third party trademarks by changing or omitting a single letter in the trademark in question to form a domain name. The Panel concludes that it is more likely than not that the same is true in the present case, and that the Respondent's purported explanation is untrue. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. page 9 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. /Nick J. Gardner/ Nick J. Gardner Sole Panelist Date: November 10, 2022
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