ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. Host Master, Transure Enterprise Ltd Case No. D2022-4252 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 Host Master, Transure Enterprise Ltd, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Above.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2022. On November 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 16, 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 amended Complaint on November 16, 2022. References to the Complaint in this Decision are to the Complaint as amended. The Center verified that the Complaint together with the amended 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 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2022. page 2 The Center appointed Richard G. Lyon as the sole panelist in this matter on December 29, 2022. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Panel finds the following facts from evidence submitted with the Complaint. The Complainant is a corporation headquartered in the United States with operations around the world. In 2021 the Complainant had turnover of USD 4.9 billion and employed over 11,000 persons. Among other services the Complainant offers credit reporting and corporate human resource services. One of the latter it markets as Equifax Workforce Solutions. This business helps customers manage employee-related tax and reporting obligations. Its turnover in 2021 exceeded USD 2 billion. The Complainant holds numerous trademarks in the United States and abroad for EQUIFAX, among them EQUIFAX: United States Reg. No. 1,027,544, registered December 16, 1975). Many UDRP panels have recognized the Complainant's EQUIFAX trademarks as well established and well recognized. The Respondent registered the disputed domain name on February 26, 2015. According to the Complaint, and as verified by the Panel, the disputed domain name reverts to a page with hyperlinks to (among other things) credit cards, credit reports, employment tax services, and business listings. The credit reporting link takes an Internet user to a page offering the services of one of the Complainant's competitors. 5. Parties' Contentions A. Complainant The Complainant asks for transfer of the disputed domain name, asserting that the disputed domain name is confusingly similar to its EQUIFAX trademarks; that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. Certain specific contentions and the Complainant's supporting evidence are noted in Section 6 below. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires the Complainant to prove the following to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. The Complainant bears the burden of proof under each element. The Respondent's default does not automatically result in an order of transfer or constitute an admission of any factual matter pleaded in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3; Qind LTD c/o Victor Naate Nartey Jnr. v. Lawrence Johnson, WIPO Case No. D2018-2909. page 3 A. Identical or Confusingly Similar This Policy requirement has two elements: ownership of a mark, and confusing similarity of the disputed domain name to that mark. The Complainant has furnished copies of numerous marks containing the designation EQUIFAX registered on the principal register of the United States Patent and Trademark Office, including the 1976 mark identified above. That is conclusive proof of the first element, see WIPO Overview 3.0, section 1.2.1. The disputed domain name's most prominent feature is the word "equifax", which suffices to establish confusing similarity with the Complainant's many EQUIFAX marks, see id., section 1.7 ("[W]here a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.") Addition of words identifying one of the services provided by the Complainant does not prevent the Panel's finding of confusing similarity, see id. section 1.8. The Complainant has established this Policy requirement. B. Rights or Legitimate Interests Section 2.1 of the WIPO Overview 3.0 addresses the standard method of proof of a respondent's lack of rights or a legitimate interest in a domain name: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element". The Complainant here has asserted that it has not authorized the Respondent to use the EQUIFAX marks, and nothing in the record indicates or suggests that the Respondent has been commonly known by that name. The Complainant has therefore made its prima facie case. The Respondent has produced nothing to contest that case, and the Panel's check through the Wayback Machine indicates no use of the disputed domain name other than for monetarized pay-per-click links. For the reasons set out in subsection C., such use is not legitimate and does not confer a right to use the disputed domain name. The Complainant has established this Policy requirement. C. Registered and Used in Bad Faith The bad faith Policy requirement is conjunctive; bad faith in registration and use must each be proven separately. Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413. In this case bad faith use is obvious, as the Respondent's use of the disputed domain name fits the example of bad faith given in paragraph 4(b)(iv): "by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location". The Respondent registered the disputed domain name more than seven years ago. May bad faith use in 2018 (first use disclosed by the Wayback Machine) or 2022 (as shown by the Complainant's evidence) allow an inference that registration several years earlier was to exploit the Complainant's marks? The Complainant argues that "'[T]he mere registration of a domain name that is identical or confusingly similar. to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." WIPO Overview 3.0, section 3.1.4. 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 page 4 oldest of which was used and registered 47 years ago; and, as noted, many UDRP panels have found that mark to be well known. To be sure, the strength of the Complainant's mark is a factor, often the most important factor, in evaluating the existence of bad faith, WIPO Overview 3.0, section 3.2.2. But copying a strong mark does not by itself equate to bad faith. This Panel prefers to make the inference of bad faith in registration on slightly different grounds. EQUIFAX is a distinctive mark with no meaning in everyday English. It is a retail mark that, as the Complainant has demonstrated, is well known. The Respondent not only used the mark's prominent feature, it copied exactly the trade name of one of the Complainant's services. That fact reveals knowledge of the Complainant when the Respondent registered the disputed domain name and intentional targeting. Furthermore, the Complainant has supplied evidence that supports a finding of bad faith in registration on separate grounds: a list of more than 250 UDRP cases in which the current Respondent was respondent and in all of which the panel ordered transfer. Many of these involved domain names that incorporated wellknown, even famous, trademarks. This brings the Respondent's conduct squarely within the example of bad faith set out in paragraph 4(b)(ii) of the Policy: "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". The Complainant has proven bad faith in registration and use. 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. /Richard G. Lyon/ Richard G. Lyon Sole Panelist Date: January 5, 2023
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