ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. 石磊 (Lei Shi) Case No. D2024-3282 1. The Parties The Complainant is Equifax Inc., United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America. The Respondent is 石磊 (Lei Shi), China. 2. The Domain Name and Registrar The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2024. On August 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2024, 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 August 14, 2024, 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 in English on August 16, 2024. On August 14, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On August 16, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on August 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2024. The Center appointed Linda Chang as the sole panelist in this matter on September 18, 2024. 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, founded in 1913, is a leading global provider of information solutions and human resources business process outsourcing services for business, government and consumers. One of the key services offered by the Complainant is credit reporting. The Complainant operates in 24 countries and regions, employing approximately 11,000 people worldwide. The Complainant is the owner of a number of EQUIFAX trademarks, including: - The United States of America trademark No. 1027544, registered on December 16, 1975, in Class 36; - The United States of America trademark No. 1045574, registered on August 3, 1976, in Class 35; - The United States of America trademark No. 1644585, registered on May 14, 1991, in Classes 35, 36, and 42. The Complainant is the owner of the domain name , registered on February 21, 1995, which has been resolving as the Complainant’s official website. The disputed domain name was registered on July 3, 2024. Presently, it resolves to a website containing links related to financial services. At the time of filing of the Complaint, it resolved to a website displaying links related to the Complainant and its EQUIFAX trademark. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: i) the disputed domain name contains the EQUIFAX trademark in its entirety and is confusingly similar to the EQUIFAX trademark; ii) the Complainant has not authorized the Respondent to use the EQUIFAX trademark for any reason or in any manner; iii) the Respondent has not been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name; iv) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate, noncommercial or fair use;
page 3 v) the Respondent had the Complainant and its EQUIFAX trademark in mind at the time of registration of the disputed domain name; vi) the Respondent’s use of the disputed domain name intends to mislead Internet users to visit the website associated with the disputed domain name to capitalize on the likelihood of confusion with the Complainant and its EQUIFAX trademark for commercial gain; and vii) the Respondent has been involved in other domain name disputes where the relevant panel ordered the transfer of the involved domain names to the corresponding complainants. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that 1) the disputed domain name contains the English words “my”, “credit”, and “reports”; 2) the website associated with the disputed domain name contains text in English; 3) English was used as the administrative language in previous domain name disputes where the Respondent has been involved in; 4) using Chinese as language of the proceeding would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter. The Respondent did not make any specific submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available records, the Complainant has shown rights in respect of the EQUIFAX trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The generic Top-Level Domain (“gTLD”) suffix “.com” as a standard registration requirement should be disregarded in the assessment of confusing similarity under the Policy.
page 4 The entirety of the EQUIFAX trademark is reproduced within the disputed domain name. Although the disputed domain name includes other words such as “my”, “credit” and “reports”, the EQUIFAX trademark remains clearly recognizable in the domain name. The Panel finds that these extra terms do not prevent a finding of confusing similarity between the disputed domain name and the EQUIFAX trademark. Accordingly, the disputed domain name is confusingly similar to the EQUIFAX trademark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to put forward such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The information in the file shows that: - before any notice of the dispute, the Respondent was not using the name “equifax” or “myequifaxcreditreports” in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use; - the Respondent has not been commonly known by the disputed domain name; and - no other factors demonstrate the rights or legitimate interests of the Respondent in the disputed domain name. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but 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. In the present case, the Panel notes that the Complainant has been using the EQUIFAX trademark and obtained trademark registration in the United States of America as early as in 1975, which significantly predates the registration date of the disputed domain name (July 3, 2024). The Respondent registered the disputed domain name that fully incorporates the Complainant’s EQUIFAX trademark, and the extra terms such as “credit” and “reports” are both descriptive of the Complainant’s services. Bearing in mind that the trademark is a coined word, the Panel determines that the Respondent was aware of the Complainant’s rights to EQUIFAX trademark at the time of registration of the disputed domain name, and bad faith is found.
page 5 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. At the time of filing of the Complaint, the disputed domain name resolved to a website displaying links related to the Complainant and its EQUIFAX trademark. Currently, the disputed domain name resolves to a website containing links related to financial services. The Panel holds that by selecting a domain name confusingly similar to the Complainant’s EQUIFAX trademark, and using it in the manner as described above, the Respondent obviously tends to attract, for commercial gain, Internet users to the disputed domain name and the associated website 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. Additionally, the Respondent has been involved in numerous other domain name disputes in which the relevant panel found bad faith in the domain name registration and use and ordered transfer of the involved domain names to the corresponding complainants. See Sanofi v. 石磊 (Lei Shi), WIPO Case No. D2024-2133; TravelPerk S.L. v. 石磊 (Lei Shi), WIPO Case No. D2024-1954; LEGO Juris A/S v. 石磊 (Lei Shi), WIPO Case No. D2024-1663; Verizon Trademark Services LLC v. 石磊 (Shi Lei / Lei Shi), WIPO Case No. D2024-1150; ZipRecruiter, Inc. v. 石磊 (Lei Shi), WIPO Case No. D2024-0728; LEGO Juris A/S v. 石磊 (Lei Shi or Shi Lei), WIPO Case No. D2024-0576. These cases reinforced that the Respondent had engaged in a pattern of conduct of registering other parties’ trademarks as domain names primarily for the purpose of commercial gains or preventing trademark owners from reflecting the trademarks in corresponding domain names. The Panel finds that the Complainant has established the third element 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. /Linda Chang/ Linda Chang Sole Panelist Date: October 2, 2024
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