ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equifax Inc. v. Domain Privacy, Domain Name Privacy Inc. Case No. D2024-4099 1. The Parties The Complainant is Equifax Inc., United States of America (“United States” or “U.S.”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States. The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 (“Contact Privacy Inc. Customer 0171884828”) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 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 on October 8, 2024. 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 October 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2024.
page 2 The Center appointed Enrique Ochoa as the sole panelist in this matter on November 14, 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, Equifax Inc., is a major consumer credit reporting agency based in the United States. Along with Experian and TransUnion, it is one of the three largest consumer credit reporting agencies. The Complainant compiles and aggregates data on over 800 million individual consumers and more than 88 million businesses worldwide. Beyond credit and demographic data and business services, the Complainant also offers credit monitoring and fraud prevention services directly to consumers. Headquartered in Atlanta, Georgia, United States, the Complainant operates or has investments in 24 countries across the Americas, Europe, and Asia-Pacific. With over 10,000 employees globally, the Complainant generates annual revenue of USD 3.1 billion and is publicly traded on the New York Stock Exchange (NYSE) under the ticker symbol EFX. The Complainant is the holder, among others, of trademark registrations: - EQUIFAX: U.S. Reg. No. 1,027,544 (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: U.S. Reg. No. 1,045,574 (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: U.S. Reg. No. 1,644,585 (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.” Said trademark registrations that were reviewed by the Panel at the USPTO database. For easy reference, trademark registration of the Complainant in the United States or elsewhere will be referred to as the “EQUIFAX trademarks”. Complaint uses the domain name as of 1995. The disputed domain name was registered on July 25, 2024, and, as evidenced in the Complaint, redirected Internet users to a competitor of the Complainant. MX records have been configured for the disputed domain name. 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.
page 3 Notably, the Complainant contends that: - Previous panels under the Policy have found that Complainant has rights in and to the EQUIFAX Trademark. Indeed, in one case, a panel said that “Complainant’s trademark EQUIFAX is well-known.” Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814. - In another case, a panel said that the EQUIFAX Trademark “enjoy[s] a wide reputation and can be considered as a well-known trademark in the industry.” Equifax Inc. v. Balticsea LLC, Balcsea LLC, WIPO Case No. D2022-2497. See also, e.g., Equifax Inc. v. WhoisGuard, Inc. / Dress Rwesss, WIPO Case No. D2018-2309 (Complainant “clearly has rights in the EQUIFAX Trademark for the purposes of the Policy”); Equifax Inc. v. Daiyu Shao, WIPO Case No. D2022-0913 (referring to “the notoriety of the Complainant and of its [EQUIFAX] Trade Mark in respect of the wide range of services provided by the Complainant under the [EQUIFAX] Trade Mark”); Equifax Inc. v. Rakshita Mercantile Private Limited, WIPO Case No. D2022-1947 (referring to “the notoriety of the [EQUIFAX] Mark”); and Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880 (“Complainant’s [EQUIFAX] mark is well-known”). - The Disputed Domain Name is confusingly similar to Complainant’s EQUIFAX Trademark. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “equifqx”), as it is well-established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11: “The applicable Top Level Domain (‘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 confusing similarity test.” - The Disputed Domain Name contains the EQUIFAX Trademark in its entirety, simply replacing the letter “a” with the letter “q”. - The Respondent has no rights or legitimate interests in the Disputed Domain Name. 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. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272. See also Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”); Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 (transferring domain name where “[n]o evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner”); Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144 (“Complainant asserts that it has not authorized Respondent to use the mark”); and Western Union Holdings, Inc. v. Domain Drop S.A., Forum Claim No. 0971146 (“Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s WESTERN UNION mark”). - By using the Disputed Domain Name to redirect visitors to a website for Experian, one of Complainant’s primary competitors, Respondent has failed to create a bona fide offering of goods or services under the Policy, and, therefore, Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy. See, e.g., Equifax Inc. v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2022-2343 (transfer of): “It appears from the evidence provided by the Complainant that the disputed domain name redirects visitors to a website for TransUnion, a direct competitor of the Complainant. Therefore, this use of the disputed domain name by the Respondent points to their lack of rights or legitimate interests.” And, Equifax Inc. v. Name Domain Administrator, WDAPL, WIPO Case No. D2022-4653 (finding no rights or legitimate interests where disputed domain name was used “to redirect Internet users to a website for TransUnion”).
page 4 - “[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 oldest of which was used and registered 49 years ago. In addition, as set forth above, previous panels have referred to the EQUIFAX Trademark as “well-known” (Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814; and Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880); one panel said that the EQUIFAX Trademark “enjoy[s] a wide reputation” (Equifax Inc. v. Balticsea LLC, Balcsea LLC, WIPO Case No. D2022-2497); and another panel said that the EQUIFAX Trademark “is by any reasonable standard famous to the point that the Respondent may be assumed to have been aware of it or at least ought to have made itself aware of it” (Equifax Inc. v. Moe Khanm, Auto Finance Now, WIPO Case No. D2022-4433). - Indeed, “[i]t is implausible that [Respondent] was unaware of the Complainant when [it] registered the Domain Name given the fame of the Trademark.” Six Continents Hotels v. Lin hongyu, Cheng Qi Lin, WIPO Case No. D2017-2033. A previous 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. Accordingly, “[t]he only explanation of what has happened is that the Respondent’s motive in registering and using the [domain name] seems to be […] simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.” Pancil, LLC v. Jucco Holdings, WIPO Case No. D2006-0676. Similarly, given the global reach and popularity of Complainant’s services under the EQUIFAX Trademark as well as the Disputed Domain Name’s similarity to Complainant’s own domain name (created February 21, 1995), “it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business.” Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035. - Another indication of bad faith under the Policy is the fact that the oldest existing registrations for the EQUIFAX Trademark, U.S. Reg. Nos. 1,027,544; 1,045,574; and 1,644,585 were first used and registered 49 years before Respondent’s registration of the Disputed Domain Name. As stated in section 3.2.2 of WIPO Overview 3.0: Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark…. - Accordingly, the Disputed Domain Name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
page 5 The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the EQUIFAX trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The disputed domain name incorporates the trademark of the Complainant, replacing letter “a” with letter “q”. The misspelling does not eliminate confusing similarity but on the contrary is an act of typosquatting. For easy reference see: Confederation Nationale Du Credit Mutuel - CNCM v. Jder Isow, WIPO Case No. D2022-3817. 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 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. 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. Furthermore, redirecting Internet users to competing commercial websites does not support a claim to rights or legitimate interests. WIPO Overview 3.0, section 2.5.3. The Panel cannot consider such use of the disputed domain name as bona fide offering goods or services, or a legitimate noncommercial or fair use. 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. The Respondent must have been aware of the EQUIFAX trademarks at the time of registering the disputed domain name, given the distinctiveness and reputation of the EQUIFAX trademarks and the fact that the disputed domain name was registered after the registration of the aforementioned trademarks. This is further inferred from the practice of “typosquatting” which consists, in this case, of switching one letter. The foregoing demonstrates bad faith in the registration of the disputed domain name.
page 6 As for the use of the disputed domain name, it is a consensus in this matter that the redirecting of a confusingly similar disputed domain name to a competitor’s website (as was evidenced in the Complaint) supports a finding of bad faith. See WIPO Overview 3.0, section 3.1.4. 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. Furthermore, the configuration of MX records creates an ongoing threat to the Complainant that the disputed domain name may be used for illegitimate activities, such as the sending of fraudulent or phishing email communications, especially noting the typosquatting addressed above. From all of the above, it can be inferred that the disputed domain name was registered and is being used in bad faith, thus fulfilling the third requirement 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. /Enrique Ochoa/ Enrique Ochoa Sole Panelist Date: December 3, 2024
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