ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. Jason Crab Case No. D2023-2485 1. The Parties The Complainant is Equifax Inc., United States of America ("USA"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC,USA. The Respondent is Jason Crab, Australia. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2023. On June 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2023, 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 / Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2023 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 19, 2023. 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 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 20, 2023. page 2 The Center appointed Cherise Valles, as the sole panelist in this matter on July 27, 2023. 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 Complainant was originally incorporated under the laws of the State of Georgia, USA, in 1913, and its predecessor company dates to 1899. The Complainant is a global provider information services and human resources outsourcing services. Among its various services, it offers a credit reporting service that provides consumers with a summary of their credit history and certain other information reported to credit bureaus by lenders and creditors. The Complainant notes that it owns at least 221 trademark registrations in at least 56 jurisdictions around the world for marks that consist of or contain the word "Equifax", which was first used in trade and registered in 1975. The Complainant's registrations for the EQUIFAX trademark in the United States include the following: - EQUIFAX: USA Reg. No. 1027544 (first used in commerce March 4, 1975; registered December 16, 1975) for use in connection with "insurance risk information reporting services concerning potential policy holders". - EQUIFAX: USA Reg. No. 1045574 (first used in commerce March 4, 1975; registered August 3, 1976) for use in connection with "conducting investigations and reporting on individuals and firms concerning credit, character and finances.". - EQUIFAX: USA Reg. No. 1644585 (first used in commerce March 4, 1975; registered May 14, 1991) for use in connection with, inter alia, "providing on-line access to computer databases containing information relating to applicants for insurance, credit, mortgage loans, and employment". The Complainant is the registrant of the domain name , which was registered on February 21, 1995. It uses this domain name in connection with its primary website. The disputed domain name was registered on February 14, 2023. According to the Complaint, the Respondent uses the disputed domain name in connection with a pay-perclick ("PPC") or "monetized parking page" that includes links for services related to the EQUIFAX Trademark. The Complaint also states that at least one security vendor has reported that the disputed domain name is being used in connection with phishing activities (Annex 8). 5. Parties' Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant's registered EQUIFAX trademark in the light of the fact that it wholly incorporates the Complainant's mark. page 3 The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent's use of the disputed domain name in connection with a PPC page is clear evidence of bad faith. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In terms of paragraph 4(a) of the Policy, for a Complaint to succeed, the Complainant must prove each of the following elements: (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 has been registered or is being used in bad faith. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have relevant UDRP rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark. The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. Given the Complainant's trademark registrations as detailed above, the Panel finds that the Complainant has established its trade mark rights in the term "Equifax" for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the EQUIFAX trademark in its entirety with the addition of a hyphen and the word "global". As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element". The Complainant asserts that the disputed domain name is confusingly similar to such mark. Previous panels have found that domain names containing the EQUIFAX trademark plus another word are confusingly page 4 similar to the EQUIFAX Trademark (See Equifax Inc. v. Domain Admin, Whois Privacy Corp / Domain Admin, WIPO Case No. D2022-2100). As noted above, the disputed domain name incorporates the EQUIFAX trademark in its entirety with the addition of a hyphen and the word "global". The inclusion of the hyphen is irrelevant for purposes of the Policy because the presence or absence of "punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity". (See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656). The inclusion of the word "global" in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's EQUIFAX trademark. It is standard practice when comparing a disputed domain name to a complainant's trademark not to take the Top-Level Domain ("TLD") into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the "applicable TLD in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test". In the present case, the TLD ".com" is disregarded under the first element of the confusing similarity test. In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark and that the Complainant has met its burden with respect to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent's rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely: "[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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." The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences from this failure, where appropriate, in accordance with paragraph 14(b) of the Rules. It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case under the second element of the Policy that the respondent has no rights or legitimate interests in the domain name concerned (See, for example, Paris Saint-Germain Football v. Daniel Macias Barajas, International Camps Network, WIPO Case No. D2021-0019; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012 and the discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. page 5 On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant's EQUIFAX trademark in any manner, including in, or as part of, the disputed domain name. The Complaint stresses that 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. The Complaint also states that the disputed domain name is being used in connection with phishing activities according to a report from Virus Total, a service that analyses files and URLs for viruses, worms and other kind of malicious content. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and cannot therefore establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. The Complainant asserts that, to the best of its knowledge, the Respondent has never been commonly known under the disputed domain name and therefore has not established any rights under paragraph 4 (c)(ii) of the Policy. As the Respondent is using the disputed domain name in connection with a monetized parking page, it is acting with commercial motivations cannot be said to be acting in accordance with legitimate noncommercial or fair use of the domain name under paragraph 4 (c)(iii) of the Policy. In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith For this element, the Complainant is required to prove that the disputed domain name was registered or that it was used in bad faith. The term "bad faith" is "broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant's mark". See section 3.1 of the WIPO Overview 3.0. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely: (i) circumstances indicating that the respondent registered or 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 the 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 trademark 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 its 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 the respondent's website or location or of a product or service on its website or location. In the present case, the Complainant's submissions relate to paragraph 4(b)(iii) and (iv) of the Policy. page 6 Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typographical errors 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. See section 3.1.4 of the WIPO Overview 3.0. In this case, the disputed domain name was registered 48 years after the Complainant registered its trademark EQUIFAX. It is therefore unlikely that the Respondent would have been unaware of the Complainant's mark when it registered the disputed domain name. Indeed, a previous UDRP panel found bad faith given "the notoriety of the [EQUIFAX] Mark" and "the unlikelihood that there could be any legitimate reason for registering a domain name so similar to the distinctive EQUIFAX mark". Equifax Inc. v. Rakshita Mercantile Private Limited, WIPO Case No. D2022-1947. Furthermore, the Respondent seeks to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademark. The disputed domain name currently resolves to a PPC or monetized parking page (Annex 7 of the Complaint). The Complaint also states that at least one security vendor has reported that the disputed domain name is being used in connection with phishing activities. It further notes that the Respondent has established MX records for the disputed domain name enabling the Respondent to send and receive emails using that disputed domain name. Panels have repeatedly held that using a domain name in connection with a monetized parking page under the circumstances present here constitutes bad faith (See Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951). The Respondent has not participated in the administrative proceeding and has not answered the Complainant's contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration or use of the disputed domain name in the face of the Complainant's contentions can be regarded as an indicator of registration or use in bad faith. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) and (iv) of the Policy. 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. /Cherise Valles/ Cherise Valles Sole Panelist Date: August 10, 2023
Full & Egal Universal Law Academy